Associate Judge Crinson in Adeia Guides Inc v BCE Inc, 2024 FC 1842 granted the Defendants’ motion to amend their Amended Statement of Defence and Counterclaim in a patent proceeding, prior to the exchange of expert evidence. In the process, Associate Judge Crinson provided guidance on evidence that may be helpful in future motions to amend.

In this patent infringement proceeding, Adeia alleges that Bell’s Crave, satellite and Fibe TV systems infringe over 100 claims of four patents. Adeia makes related infringement allegations against Bell’s suppliers, MediaKind and Ericsson. The Defendants counterclaimed alleging that the asserted claims of Adeia’s patents are invalid, including on the basis of anticipation and obviousness.

The Defendants brought a motion to amend their Amended Statement of Defence and Counterclaim to include additional prior art references. The timing of the motion was after follow-up discovery but before the exchange of in-chief expert reports. The trial is scheduled to start on April 28, 2025.

Adeia opposed the motion on several grounds, including because the amendments originally sought were open-ended. For example (emphasis added):

  1. “Devices capable of playing video programming and displaying associated metadata, including but not limited to set-top boxes, digital video recorders, PCs, pocket PCs, portable media centers, handheld devices, and mobile phones, as illustrated by but not limited to the following examples”; (Item 45 of Schedule B to the Amended Statement of Defence and Counterclaim).
  2. “TiVo DVR, as it existed before December 29, 2005, including as illustrated by items 45i-45l, 50-51” (Item 49 of Schedule B to the Amended Statement of Defence and Counterclaim).

Adeia first notified the Defendants’ of that complaint in their responding materials, and the Defendants addressed Adeia’s stated concerns by agreeing to: 

  1. Delete open-ended language (e.g., “including” above in Item 49).
  2. Put forward a witness for additional discovery on the amendments.

Associate Judge Crinson agreed with the Defendants that they did not require evidence to explain the timing of their motion in order to obtain the amendment sought. However, Associate Judge Crinson left open the possibility that such evidence may be useful in future motions to amend—depending on the facts.

Associate Judge Crinson held that the revised proposed amendments will facilitate the Court’s consideration of the true substance of the obviousness and anticipation issues on the merits. He also held that Adeia had failed to produce any evidence of prejudice. Accordingly, Associate Judge Crinson granted the Defendant’s motion and permitted the amendments sought.