Johnson & Johnson Inc. et al. v. Boston Scientific Ltd., 2004 FC 1672

• Judge: Martineau, J.
• Court: Federal Court (Canada)
• Case Date: June 24, 2003
• Jurisdiction: Canada (Federal)
• Citations: 2004 FC 1672;(2004), 263 F.T.R. 242 (FC)

Johnson & Johnson v. Boston Scientific (2004), 263 F.T.R. 242 (FC)

MLB headnote and full text

Temp. Cite: [2004] F.T.R. TBEd. DE.039

Johnson & Johnson Inc., Expandable Grafts Partnership and Cordis Corporation (plaintiffs) v. Boston Scientific Ltd./Boston Scientifique lteé (defendant)

(T-1822-97; 2004 FC 1672)

Indexed As: Johnson & Johnson Inc. et al. v. Boston Scientific Ltd.

Federal Court

Martineau, J.

November 30, 2004.

Summary:

The plaintiffs sued the defendant for patent infringement. The defendant moved for summary judgment dismissing all claims in the infringement action and declaring that the patents in suit were invalid, void and of no force and effect. The defendant alleged that the applicants for the patents in suit (the applicants) did not pay the required filing and completion fees within the prescribed period of time. The defendant submitted that neither the Patent Act, nor the Patent Rules, gave the Commissioner of Patents any discretion to give an application a filing date where the prescribed fee had not been paid nor to waive any portion of the prescribed fee. Therefore, the defendant claimed that the applications for the patents in suit were either never validly filed with the Commissioner, or deemed to be permanently abandoned since the applicants failed to take corrective action within the statutory time limits for doing so after the date of filing.

The Federal Court granted the motion for summary judgment, dismissed the plaintiffs' claims and declared that the patents in suit were invalid, void or of no force and effect. By failing to comply with the proper sequence of required actions relating to filing fees, the applicants permanently abandoned each of the applications for the patents in suit, and, as such, each of the patents were invalid at the time of filing.

Patents of Invention - Topic 15

General - Commissioner of patents - Discretionary powers - The Federal Court discussed the legal framework and the role and powers of the Commissioner of Patents relating to the receiving and processing of patent applications including fees - See paragraphs 1 to 14 - The court stated, inter alia, that the Commissioner had no authority to waive any portion of the fee payable upon filing of a patent application, or to waive the payment of the completion and reinstatement fees in their entirety - See paragraph 94.

Patents of Invention - Topic 441

Registration - Statutory duties of commissioner - General - [See Patents of Invention - Topic 15 ].

Patents of Invention - Topic 700

Application for grant - General - [See Patents of Invention - Topic 15 ].

Patents of Invention - Topic 708

Application for grant - General - Fees - [See Patents of Invention - Topic 15 ].

Patents of Invention - Topic 708

Application for grant - General - Fees - The Federal Court stated that a patent application was not complete until the fee for filing the application was paid in full - The court stated that "if the application fee is not paid in full at the time of filing the application, a completion fee must be paid. If the application fee and the completion fee are not paid in full before the end of the twelve month period set forth in subsection 30(1) of the Patent Act, the patent application is deemed abandoned. Furthermore, incomplete patent applications become permanently abandoned pursuant to subsection 30(2) of the Patent Act if the applicants fail to petition the Commissioner to reinstate the applications within twelve months after the date on which it was deemed to have been abandoned. At this point, applicants must pay the full fee for filing an application, a completion fee and a reinstatement fee..." - See paragraph 105.

Patents of Invention - Topic 708

Application for grant - General - Fees - The plaintiffs sued the defendant for patent infringement - The defendant moved for summary judgment dismissing all claims in the infringement action and declaring that the patents in suit were invalid, void and of no force and effect - The defendant alleged that the applicants for the patents in suit (applicants) did not pay the required filing and completion fees within the prescribed period of time thereby rendering the patents invalid - The exact fee that had to be paid to file and complete an application was specified in the Patent Rules and depended upon whether the applicant was a "small entity" on filing (i.e., an "independent inventor" or a "small business concern") - The Federal Court held that in this case the applicants never qualified for small entity status - The court opined, however, that the proper date for determining small entity status was the date on which the Canadian patent regime was engaged, i.e., the date on which the Canadian patent application was filed - The court rejected the suggestion that entity status should be determined when the patent was filed in some other country (i.e., the priority date) - See paragraphs 70 to 85.

Patents of Invention - Topic 708

Application for grant - General - Fees - The plaintiffs sued the defendant for patent infringement - The defendant moved for summary judgment dismissing all claims in the infringement action and declaring that the patents in suit were invalid because the applicants for the patents in suit (applicants) did not pay the required filing and completion fees within the prescribed period of time - The exact fee for filing and completing an application was specified in the Patent Rules and depended upon whether the applicant was a "small entity" on filing (i.e., an "independent inventor" or a "small business concern") - In this case, the applicants initially paid the small entity fee, but later when they realized that they might not qualify for small entity status, paid the difference between the small entity fee and the large entity fee - The Federal Court held that the applicants incorrectly paid the filing fee for a small entity and, therefore, the patent applications were not validly filed with the Patent Commissioner - This meant that the patent applications were incomplete and were deemed abandoned 12 months after the filing of the application (Patent Act, s. 30(1)) and became permanently abandoned under s. 30(2) when the applicants failed to petition the Commissioner to reinstate the applications within 12 months after the date on which they were deemed to have been abandoned - The court stated also that the Commissioner had no discretion to waive any portion of the filing fees - See paragraphs 70 to 94.

Patents of Invention - Topic 708

Application for grant - General - Fees - The plaintiffs sued the defendant for patent infringement - The defendant moved for summary judgment dismissing all claims in the infringement action and declaring that the patents in suit were invalid, void and of no force and effect because the applicants for the patents in suit (the applicants) did not pay the appropriate filing fees and completion fees within the prescribed period of time - The plaintiffs sought to rely on s. 3.1 of the Patent Rules which came into force on January 1, 2004, to avoid the legal consequences of the applicants having paid the wrong fees - The Federal Court interpreted s. 3.1 and held that it did not assist the plaintiffs - The court held that s. 3.1 allowed a patent applicant to correct an inadvertent error in connection with the payment of the fee but did not allow the patent applicant to correct an error related to the fee itself, especially when the error was due to a bad assumption or a deliberate improper claim to small entity status - See paragraphs 98 to 104.

Patents of Invention - Topic 1503

Grounds of invalidity - General - Presumption of validity - The plaintiffs sued the defendant for patent infringement - The defendant challenged the validity of the patent - The plaintiffs argued that s. 77 of the Patent Act created a rebuttable presumption that upon issuance, a patent was validly and properly issued - The Federal Court interpreted s. 77 and concluded that s. 77 did not cure defects in a patent application - Rather s. 77 was a transitional provision intended to ensure that changes in statutory requirements for obtaining a patent did not affect a previously issued patent - The plaintiffs could not rely on s. 77 - See paragraphs 95 to 97.

Patents of Invention - Topic 8006

Practice - General - Summary judgments - The plaintiffs sued the defendant for patent infringement - The defendant moved for summary judgment dismissing all claims in the infringement action and declaring that the patents in suit were invalid, void and of no force and effect - The defendant alleged that the applicants for the patents in suit did not pay the required filing and completion fees within the prescribed period of time thereby rendering the patents invalid - The Federal Court reviewed the principles applicable to motions for summary judgment, and in particular motions for summary judgment in patent cases - The court held that this was an appropriate case for summary judgment under Federal Court Rule 216 - See paragraphs 59 to 66.

Patents of Invention - Topic 8081

Practice - Pleadings - General - The plaintiffs sued the defendant for patent infringement - The defendant moved for summary judgment dismissing all claims in the infringement action and declaring that the patents in suit were invalid, void and of no force and effect, relying on ss. 59 and 60 of the Patent Act - The defendant alleged that the applicants for the patents in suit did not pay the prescribed filing and completion fees - The plaintiffs alleged that the defendant's failure to make specific reference to ss. 59 and 60 in the statement of defence and counterclaim was sufficient grounds for dismissal of the motion for summary judgment - The Federal Court held that the fact that the defendant neglected to cite the relevant section numbers of the Patent Act was not a fatal error - The court stated that the essence of the pleadings filed by the defendant indicated the specific remedies sought by the defendant as well as the specific facts and provisions of the Patent Act upon which the defendant relied to plead that the patents in suit were void and invalid - See paragraphs 47 to 58.

Patents of Invention - Topic 8143

Practice - Judicial review - When available - [See Practice - Topic 73 ].

Practice - Topic 73

Actions - Commencement of - Choice of method of commencement of proceedings - Action v. judicial review application - The plaintiffs commenced an action against the defendant for patent infringement - The defendant moved for summary judgment dismissing all claims in the infringement action and declaring that the patents in suit were invalid, void and of no force and effect because the appropriate fees were not paid on time - The plaintiffs argued that the defendant was attacking the authority of the Patent Commissioner's exercise of his statutory duties and, therefore, should have proceeded by way of judicial review - The Federal Court rejected the plaintiffs' argument, holding that judicial review was not appropriate in this case - See paragraphs 39 to 46.

Practice - Topic 1310

Pleadings - Questions of law - Pleading a statute - [See Patents of Invention - Topic 8081 ].

Practice - Topic 5702

Judgments and orders - Summary judgments - Jurisdiction or when available or when appropriate - [See Patents of Invention - Topic 8006 ].

Cases Noticed:

Dutch Industries Ltd. v. Commissioner of Patents et al., [2002] 1 F.C. 325; 301 N.R. 152; 2003 FCA 121, refd to. [para. 10].

Monsanto Co. et al. v. Commissioner of Patents et al. (1999), 172 F.T.R. 210 (T.D.), refd to. [para. 40].

Canada (Attorney General) v. Cylien, [1973] F.C. 1166 (F.C.A.), refd to. [para. 40].

Singh v. Canada (Secrétaire d'Etat) (1994), 82 F.T.R. 68 (T.D.), refd to. [para. 9].

Cynamid Agricultural de Puerto Rico Inc. v. Commissioner of Patents (1983), 74 C.P.R.(2d) 133 (F.C.T.D.), refd to. [para. 40].

Cangene Corp. v. Eli Lilly & Co. (1995), 101 F.T.R. 238; 63 C.P.R.(3d) 377 (T.D.), refd to. [para. 41].

Glaxo Canada Inc. v. Canada (Minister of National Health and Welfare) and Apotex Inc. et al. (1990), 107 N.R. 195; 31 C.P.R.(3d) 29 (F.C.A.), affing. (1987), 16 F.T.R. 81; 18 C.P.R.(3d) 206 (T.D.), refd to. [para. 44].

Pfizer Canada Inc. v. Canada (Minister of National Health & Welfare) et al. (1986), 12 C.P.R.(3d) 438 (F.C.A.), refd to. [para. 44].

Apotex Inc. v. Canada (Attorney General) and Canada (Minister of National Health and Welfare) (No. 1) (1986), 1 F.T.R 310; 9 C.P.R.(3d) 193 (T.D.), refd to. [para. 44].

Apotex Inc. v. Canada (Attorney General) et al. (1993), 63 F.T.R. 197; 48 C.P.R.(3d) 296 (T.D.), refd to. [para. 44].

Pharmascience Inc. v. Canada (Commissioner of Patents) et al. (1998), 161 F.T.R. 76 (T.D.), refd to. [para. 45].

Sno Jet Ltd. v. Bombardier Ltée (1975), 22 C.P.R.(2d) 224 (F.C.T.D.), refd to. [para. 49].

Inline Fiberglass Ltd. v. Omniglass Ltd. (1993), 48 C.P.R.(3d) 214 (F.C.T.D.), refd to. [para. 49].

Maple Creek Manufacturing & Marketing Inc. v. Hanson Marketing Inc., [1997] O.J. No. 1870, refd to. [para. 49].

Dableh v. Ontario Hydro (1993), 67 F.T.R. 241 (T.D.), refd to. [para. 49].

Dupont Canada Inc. v. Glopak Inc. (1998), 146 F.T.R. 301; 81 C.P.R.(3d) 44 (T.D.), refd to. [para. 51].

Gant v. Hobbs, [1912] 1 Ch. 717 (C.A.), refd to. [para. 52].

Esso Petroleum Co. Ltd. v. Southport Corporation, [1956] A.C. 218 (H.L.), refd to. [para. 52].

Glisic v. Canada, [1988] 1 F.C. 731; 80 N.R. 39 (F.C.A.), refd to. [para. 52].

TRW Inc. v. Walbar of Canada Inc. (1991), 132 N.R. 161 (F.C.A.), refd to. [para. 52].

Prêt-à-Porter Orly Ltd. v. Canada (1994), 176 N.R. 149 (F.C.A.), refd to. [para. 52].

DuPont Canada Inc. v. Glopak Inc. (1998), 81 C.P.R.(3d) 44 (F.C.T.D.), refd to. [para. 52].

Kirin-Amgen Inc. et al. v. Hoffmann-LaRoche Ltd. (2000), 267 N.R. 150; 11 C.P.R.(4th) 78 (F.C.A.), refd to. [para. 52].

Vandervell's Trust (No. 2), Re, [1974] 3 All E.R. 205, refd to. [para. 53].

384238 Ont. Ltd. v. Canada, [1984] 1 F.C. 661; 52 N.R. 206; 8 D.L.R.(4th) 676 (F.C.A.), refd to. [para. 54].

Imperial General Properties Ltd. v. Minister of National Revenue, [1985] 1 F.C. 344; 62 N.R. 137 (F.C.A.), refd to. [para. 54].

Conohan et al. v. Cooperators (2002), 286 N.R. 364 (F.C.A.), refd to. [para. 54].

Entreprises A & B Cormier Ltée v. Minister of National Revenue, [1992] T.C.J. No. 574 (Tax Ct.), refd to. [para. 54].

Granville Shipping Co. v. Pegasus Lines Ltd. S.A., [1996] 2 F.C. 853; 111 F.T.R. 189 (T.D.), refd to. [para. 59].

Inhesion Industrial Co. v. Anglo Canadian Mercantile Co., [2000] F.T.R. Uned. 354; 6 C.P.R.(4th) 362 (T.D.), refd to. [para. 60].

Feoso Oil Ltd. v. Ship Sarla, [1995] 3 F.C. 68; 184 N.R. 307 (F.C.A.), refd to. [para. 60].

Von Langsdorff (F.) Licensing Ltd. v. S.F. Concrete Technology Inc. (1999), 165 F.T.R. 74 (T.D.), refd to. [para. 60].

Pallman Maschinenfabrik GmbH Co. KG v. CAE Machinery Ltd. and PS & E Projects Ltd. (1995), 98 F.T.R. 125; 62 C.P.R.(3d) 26 (T.D.), refd to. [para. 62].

Hudson Luggage Supplies Inc. v. Tormont Publications Inc. et al. (1995), 109 F.T.R. 18; 65 C.P.R.(3d) 216 (T.D.), refd to. [para. 63].

Hayden Manufacturing Co. v. Canplas Industries Ltd. (1996), 115 F.T.R. 20; 68 C.P.R.(3d) 186 (T.D.), refd to. [para. 66].

American Cyanamid Co. et al. v. Bio Agri Mix Ltd. (1997), 127 F.T.R. 274; 73 C.P.R. (3d) 277 (T.D.), refd to. [para. 66].

Apotex Inc. v. Merck & Co. et al., [2003] 1 F.C. 242; 291 N.R. 96 (F.C.A.), refd to. [para. 68].

Bayer AG v. Apotex Inc., [1998] F.C.J. No. 1593 (T.D.), refd to. [para. 75].

Pfizer Canada Inc. v. Canada (Attorney General), [2003] 4 F.C. 95 (F.C.A.), refd to. [para. 76].

Rizzo & Rizzo Shoes Ltd. (Bankrupt), Re, [1998] 1 S.C.R. 27; 221 N.R. 241; 106 O.A.C. 1, refd to. [para. 80].

Bell ExpressVu Limited Partnership v. Rex et al., [2002] 2 S.C.R. 559; 287 N.R. 248; 166 B.C.A.C. 1; 271 W.A.C. 1, 2002 SCC 42, refd to. [para. 80].

Rooke v. Canada, [2002] F.C.J. No. 1448 (F.C.A.), refd to. [para. 80].

Qu v. Canada (Minister of Citizenship and Immigration) (2001), 248 N.R. 201 (F.C.A.), refd to. [para. 80].

Giffin v. Canstar Sports Group Inc. (1990), 30 C.P.R.(3d) 238 (F.C.T.D.), refd to. [para. 97]

LaRoche v. Canada (1998), 85 C.P.R.(3d) 67 (F.C.T.D.), affd. (2000), 9 C.P.R.(4th) 90 (F.C.A.), refd to. [para. 97].

Gustavson Drilling (1964) Ltd. v. Minister of National Revenue, [1977] 1 S.C.R. 271; 7 N.R. 401, refd to. [para. 103].

Baker Petrolite Corp. et al. v. Canwell Enviro-Industries Ltd. et al., [2003] 1 F.C. 49; 288 N.R. 201; 2002 FCA 158, refd to. [para. 103].

Statutes Noticed:

Patent Act, R.S.C. 1985, c. P-4, sect. 59, sect. 60 [para. 47]; sect. 77 [para. 95].

Patent Act Regulations (Can.), Patent Rules, rule 3.1 [para. 98]; rule 32, rule 34 [para. 86].

Patent Rules - see Patent Act Regulations (Can.).

Authors and Works Noticed:

Sullivan, Ruth, Sullivan and Driedger on the Construction of Statutes (4th Ed. 2002), p. 1 [para. 79].

Counsel:

Donald M. Cameron, R. Scott MacKendrick and Allyson Whyte Nowak, for the plaintiffs;

Ronald E. Dimock, David M. Reive and Michael D. Crinson, for the defendant.

Solicitors of Record:

Ogilvy Renault, Toronto, Ontario, for the plaintiffs;

Dimock Stratton Clarizio LLP, Toronto, Ontario, for the defendant.

This motion was heard on June 24, 2003, by Martineau, J., of the Federal Court, who delivered the following decision on November 30, 2004.