Summary Resolution of Intellectual Property Cases

• Author: Alan Macek
• Date: February 03, 2016

If you have decided to go to court to assert your rights, or someone has taken you to court, there are several summary options, short of a conventional trial, that may save time and money yet still get the result you are interested in.

In 2009 the Federal Courts Rules were amended to expand the availability of summary judgment and summary trial options. The number of proceedings that have used or are using these provisions has expanded in recent years, perhaps in part as a response to greater discussion of summary options in the superior courts and by the Supreme Court of Canada in Hryniak.

For summary judgment, the rules (see Rule 215) provide that the court shall grant judgment where the court is satisfied that there is no genuine issue for trial with respect to a claim or defence. Even if there is a genuine issue of fact or law for trial, the court may determine the issue by way of summary trial. Prior to the amendments, there was no provision for summary trials (see Suntec Environmental Inc. v. Trojan Technologies Inc., 2004 FCA 140 at 19).

With summary trial, there is more flexibility and jurisdiction for the court to grant judgment where “there is sufficient evidence for adjudication,” unless the Court is of the opinion that it would be unjust to decide the issue on the motion. The rules for summary trial (see Rule 216) also allow the Court to issue orders requiring experts or witnesses to be cross-examined live at the hearing. The rules on summary trials were modeled after similar rules in the British Columbia Court, what is now Rule 9-7 of the British Columbia Supreme Court Civil Rules.

For summary trials, decisions (see for exampler Teva Canada Limited v. Wyeth and Pfizer Canada Inc., 2011 FC 1169 at 34 reversed on other grounds 2012 FCA 141, Louis Vuitton Malletier S.A. v. Singga Enterprises (Canada) Inc., 2011 FC 776 at 96 and Leo Ocean S.A. v. Westshore Terminals Limited Partnership, 2015 FCA 282) have set out some of the criteria for determining whether a summary trial (as opposed to a conventional trial) is appropriate for a particular case. The burden to show that a summary trial is appropriate, is on the moving party. Factors considered include:

• the issues are well defined;
• the facts necessary to resolve the issues are clearly set out in the evidence;
• the evidence is not controversial and there are no issues as to credibility; and
• the questions of law, though novel, can be dealt with as easily now as they would otherwise have been after a full trial;
• the amount involved and the cost of taking the case forward to a conventional trial in relation to the amount involved;
• the complexity of the matter.

Regarding the Wenzel patent case, Justice Snider said at para 38, “Patent infringement trials and issues are inherently complex, and technical. The technical nature of the ‘630 Patent requires review by expert witnesses to assist the Court in construing the patent, in addition to the fact that contradictory evidence will be presented by both the Defendants and the Plaintiffs on...