Weatherford Canada Ltd. et al. v. Corlac Inc. et al., (2010) 370 F.T.R. 54 (FC)

JudgePhelan, J.
CourtFederal Court (Canada)
Case DateJune 01, 2009
JurisdictionCanada (Federal)
Citations(2010), 370 F.T.R. 54 (FC);2010 FC 602

Weatherford Can. Ltd. v. Corlac Inc. (2010), 370 F.T.R. 54 (FC)

MLB headnote and full text

Temp. Cite: [2010] F.T.R. TBEd. JN.003

Weatherford Canada Ltd., Weatherford Canada Partnership, Edward Grenke and GrenCo Industries Ltd. (plaintiffs/defendants by counterclaim) v. Corlac Inc., National-Oilwell Canada Ltd. and National Oilwell Incorporated (defendants/plaintiffs by counterclaim)

(T-1236-01; 2010 FC 602)

Indexed As: Weatherford Canada Ltd. et al. v. Corlac Inc. et al.

Federal Court

Phelan, J.

June 3, 2010.

Summary:

Canadian patent No. 2,095,937 (the '937 patent) was owned by Grenke and licenced to GrenCo Industries Ltd. which sublicensed the patent rights to Weatherford PC Pump Ltd. and subsequently Weatherford Canada Ltd. and Weatherford Canada Partnership (collectively, the plaintiffs). The '937 patent claimed a seal assembly combination designed to fix a problem of leaking stuffing boxes on rotary progressive cavity pumps that troubled heavy oil producers since the early 1980s. This litigation centered on the claim that the defendants had been infringing, since at least 1999, the '937 patent in the manufacture and sale of their drive systems for rotary oil well pumps. The defendants, aside from denying the allegations and attacking the patent, also counterclaimed against the plaintiffs, claiming that the defendants were the owners by assignment/licence of the '937 patent and that the plaintiffs had in fact infringed their patent rights.

The Federal Court allowed the action and dismissed the counterclaim.

Patents of Invention - Topic 1026

The specification and claims - Construction of a patent - General - The Federal Court stated that "[t]he interpretation of a patent is to be conducted purposively, in light of the patent as a whole. [...] In giving meaning to a patent, there are limits on what a Court can and should do. The exercise is the responsibility of the judge aided by expert evidence. Regard to the disclosure portion of the patent's specification is unnecessary where the terms used in the claim are plain and unambiguous but may be used where there is ambiguity. Further, where the words in the claim are plain and unambiguous, they should not be narrowed or limited to a patent's preferred embodiment. The key to purposive construction is the identification by the Court, with the assistance of expert evidence, as to what a 'skilled person' would know and understand of the particular words or phrases in the claims that describe what the inventor intended to be the 'essential' elements of the invention." - See paragraphs 116 to 122.

Patents of Invention - Topic 1507

Grounds of invalidity - General - Untrue material allegations in petition, specification or drawings - Canadian patent No. 2,095,937 (the '937 patent), filed in May 1993 and issued in December 1998, was owned by Grenke and licenced to GrenCo Industries Ltd. which sublicensed the patent rights to Weatherford PC Pump Ltd. and subsequently Weatherford Canada Ltd. and Weatherford Canada Partnership (collectively, the plaintiffs) - The '937 patent claimed a seal assembly combination designed to fix a problem of leaking stuffing boxes on rotary progressive cavity pumps that troubled heavy oil producers since the early 1980s - This litigation centered on the claim that the defendants had been infringing, since at least 1999, the '937 patent in the manufacture and sale of their drive systems for rotary oil well pumps - The defendants asserted that the '937 patent was invalid because Grenke made material misrepresentations or material willful misstatements in the patent petition by claiming that he was the inventor of the '937 patent - In Grenke's initial petition, the inventors named were Grenke and Torfs - A later amendment removed Torfs as co-inventor - The defendants relied on s. 53(1) of the Patent Act to assert that a patent grounded on a material untruth in the petition was void - The Federal Court rejected the assertion - In order for s. 53(1) to void a patent, the statement had to be material and untrue - The statement had to be material to the granting of the patent, i.e., to whether the patent would be granted on those terms in the patent - Grenke's misstatement was not material at the time of the patent's issuance - At that time Grenke had acquired, to the extent necessary, all the right title and interest in the patent from Torfs' employer who had the legal interest in the patent and from Torfs' estate to the extent that the estate might have had a claim - The naming of Torfs on the patent as a co-inventor after he had died would have been a nice gesture of recognition but would have had no relevance to the validity of the patent, its ownership or any rights of inventorship - The patent was not void by reason of Grenke's misstatement in respect to the amendment to the petition for the '937 patent - See paragraphs 323 to 339.

Patents of Invention - Topic 1512

Grounds of invalidity - General - Delay in prosecution of patent application - Canadian patent No. 2,095,937 (the '937 patent), filed in May 1993 and issued in December 1998, was owned by Grenke and licenced to GrenCo Industries Ltd. which sublicensed the patent rights to Weatherford PC Pump Ltd. and subsequently Weatherford Canada Ltd. and Weatherford Canada Partnership (collectively, the plaintiffs) - The '937 patent claimed a seal assembly combination designed to fix a problem of leaking stuffing boxes on rotary progressive cavity pumps that troubled heavy oil producers since the early 1980s - This litigation centered on the claim that the defendants had been infringing, since at least 1999, the '937 patent in the manufacture and sale of their drive systems for rotary oil well pumps - The defendants asserted that the '937 patent was invalid on the ground of abandonment of the patent by reason of not acting in good faith in dealings with the Patent Office - The defendants asserted that s. 73(1)(a) of the Patent Act gave them a right to challenge the validity of the patent on the basis of this section as if it was a supplement to s. 53 (material misstatement) - The Federal Court rejected the assertion - Section 73 was not directed primarily at the validity of a patent once issued - The provision was directed at controlling the prosecution of the patent process - The term "abandonment" itself gave an indication that the provision was not directed to post-issuance validity - Section 73(3) which allowed for reinstatement of the patent prosecution upon rectification of the various steps of "deemed abandonment" also showed that the provision was not directed at validity challenges but at prosecution stages - The '937 patent was not invalid or deemed abandoned by reason of s. 73(1) - See paragraphs 342 to 353.

Patents of Invention - Topic 1589

Grounds of invalidity - Lack of "inventive ingenuity" (obviousness) - Particular patents - [See both Patents of Invention - Topic 1605 ].

Patents of Invention - Topic 1605

Grounds of invalidity - Anticipation - Particular patents - Canadian patent No. 2,095,937 (the '937 patent), filed in May 1993 and issued in December 1998, was owned by Grenke and licenced to GrenCo Industries Ltd. which sublicensed the patent rights to Weatherford PC Pump Ltd. and subsequently Weatherford Canada Ltd. and Weatherford Canada Partnership (collectively, the plaintiffs) - The '937 patent claimed a seal assembly combination designed to fix a problem of leaking stuffing boxes on rotary progressive cavity pumps that troubled heavy oil producers since the early 1980s - This litigation centered on the claim that the defendants had been infringing, since at least 1999, the '937 patent in the manufacture and sale of their drive systems for rotary oil well pumps - The defendants asserted that the '937 patent was invalid on the grounds of anticipation and obviousness - The defendants claimed that the '937 patent was anticipated and/or obvious because its subject matter was disclosed to the public contrary to s. 28.2(1)(a) of the Patent Act as early as 1991 to prospective clients - The Federal Court rejected the assertion - The communications between the plaintiffs and the customers took place with an expectation of confidence - Industry evidence confirmed that parties acting in a common cause and those using prototypes or proposing tentative solutions expected and received confidential treatment - The evidence was not sufficiently precise and persuasive that what was disclosed was the essence of the invention - The fact that the units were being tested by some customers was well-known in the area; a testament to the close relationship between the plaintiffs and the customers but that knowledge was not disclosure of the invention itself - Grenke did not disclose the information to either customer with a view that it was a public disclosure nor was he reckless in the matter of disclosure - Under all the circumstances, he had good reason to believe that the essence of his invention would not be disclosed to the public and until he was ready to do so and in fact that was the case in respect of both corporations - See paragraphs 290 to 312 and 319 to 322.

Patents of Invention - Topic 1605

Grounds of invalidity - Anticipation - Particular patents - Canadian patent No. 2,095,937 (the '937 patent), filed in May 1993 and issued in December 1998, was owned by Grenke and licenced to GrenCo Industries Ltd. which sublicensed the patent rights to Weatherford PC Pump Ltd. and subsequently Weatherford Canada Ltd. and Weatherford Canada Partnership (collectively, the plaintiffs) - The '937 patent claimed a seal assembly combination designed to fix a problem of leaking stuffing boxes on rotary progressive cavity pumps that troubled heavy oil producers since the early 1980s - This litigation centered on the claim that the defendants had been infringing, since at least 1999, the '937 patent in the manufacture and sale of their drive systems for rotary oil well pumps - The defendants asserted that the '937 patent was invalid on the grounds of anticipation and obviousness - The defendants claimed that the '937 patent was anticipated and/or obvious because its subject matter was disclosed to the public contrary to s. 28.2(1)(a) of the Patent Act as early as 1991 to Merkel and Flenders Canada - The Federal Court rejected the assertion - Merkel was working with Grenke to help with solutions and to sell its own products with the common object of finding some solutions to the stuffing box problem - To suggest that Merkel could legally take the plaintiffs' ideas and work and use them as its own was not sustainable - Merkel did not have that right and never claimed it had any such right - There was no evidence that it behaved in any manner other than with a duty of confidence - To an even greater extent, Flenders was subject to confidentiality obligations and expectations - There was no suggestion that Grenke could have purloined Flenders' (Torfs) work on the rotary engine or Flenders could take and use Grenke's work - These parties were engaged in a common endeavour which was recognized in the co-inventorship arrangement between Grenke and Torfs - There were the interrelated obligations of confidence and the absence of making the invention "available to the public" - The disclosure by Grenke to Merkel and Flenders did not constitute making the subject matter of the '937 patent available to the public - The disclosure was private and for a limited purpose to facilitate the development of the invention - Given the nature of the respective relationships, while in hindsight it might have been preferable, it was not necessary to set up a formal non-disclosure regime - The parties understood the nature of the relationship and their duties to each other - See paragraphs 290, 313 to 322.

Patents of Invention - Topic 1625

Grounds of invalidity - Not true or first inventor - Failure to name all inventors - Canadian patent No. 2,095,937 (the '937 patent) was owned by Grenke and licenced to GrenCo Industries Ltd. which sublicensed the patent rights to Weatherford PC Pump Ltd. and subsequently Weatherford Canada Ltd. and Weatherford Canada Partnership (collectively, the plaintiffs) - The '937 patent claimed a seal assembly combination designed to fix a problem of leaking stuffing boxes on rotary progressive cavity pumps that troubled heavy oil producers since the early 1980s - This litigation centered on the claim that the defendants had been infringing, since at least 1999, the '937 patent in the manufacture and sale of their drive systems for rotary oil well pumps - The defendants asserted that Grenke was not the true inventor/owner of the claims in '937 patent and the '937 patent failed to mention all inventors - The Federal Court rejected the assertion - The court noted that "a person who contributes to the inventive concept may be a co-inventor while those who help the invention to completion, but whose ingenuity is directed to verification rather than original inventive concept, are not co-inventors. [...] the 'inventor' is not just a person who comes up with a general idea or thesis. The inventor must have reduced the idea or thesis to a definite and practical shape by building it as described or by fully describing how it will be practised - showing that there is utility in the claimed invention. [...] even where certain elements have been contributed by persons other than the inventor named, this would not make them joint inventors of the combination." - Grenke was an inventor of the '937 patent - The other persons identified by the defendants (except with the special case of Torfs) were not - The evidence was that Grenke came up with the key concepts of the invention - He acknowledged that others made suggestions, but it was he who made the choices of options, determined how the invention should function and made it function - See paragraphs 235 to 281.

Patents of Invention - Topic 2885

Infringement of patent - Acts constituting an infringement - Functional equivalent - Canadian patent No. 2,095,937 (the '937 patent) was owned by Grenke and licenced to GrenCo Industries Ltd. which sublicensed the patent rights to Weatherford PC Pump Ltd. and subsequently Weatherford Canada Ltd. and Weatherford Canada Partnership (collectively, the plaintiffs) - The '937 patent claimed a seal assembly combination designed to fix a problem of leaking stuffing boxes on rotary progressive cavity pumps that troubled heavy oil producers since the early 1980s - This litigation centered on the claim that the defendants had been infringing, since at least 1999, the '937 patent in the manufacture and sale of their drive systems for rotary oil well pumps - The Federal Court allowed the action - The court accepted the plaintiffs' expert's conclusion that the defendants' devices had the same sealing assembly described in claims 1, 6, 9, 11, 14-16 (although the retrofit units did not include a drive means as per Claims 15 and 16) and the manuals for the devices taught the practice in claim 17 - The defendants' case against infringement relied significantly on its interpretation of the terms "seal cartridge" and "dynamic seal" which were rejected by the court - Further, Schneider, the head engineer of what became Weatherford PC Pump Ltd. which designed rotating stuffing boxes, left his employment shortly before GrenCo licensed his employer - Schneider joined the defendant Corlac Equipment and Corlac Equipment began the manufacture and sale of the infringing product - The timing of the change of jobs, the nature of the competitive market for this product then and later and the timing and similarity of the Corlac products called out for an explanation - Absent an explanation and given the plaintiffs' evidence of infringement, the court drew the conclusion that the defendants intentionally set out to create a product which they knew or ought to have known would infringe the '937 patent - See paragraphs 166 to 204.

Patents of Invention - Topic 2888

Infringement of patent - Acts constituting an infringement - Of particular patents - [See Patents of Invention - Topic 2885 ].

Patents of Invention - Topic 3041

Infringement of patent - Persons liable - General - Canadian patent No. 2,095,937 (the '937 patent) was owned by Grenke and licenced to GrenCo Industries Ltd. which sublicensed the patent rights to Weatherford PC Pump Ltd. and subsequently Weatherford Canada Ltd. and Weatherford Canada Partnership (collectively, the plaintiffs) - The '937 patent claimed a seal assembly combination designed to fix a problem of leaking stuffing boxes on rotary progressive cavity pumps that troubled heavy oil producers since the early 1980s - This litigation centered on the claim that the defendants had been infringing, since at least 1999, the '937 patent in the manufacture and sale of their drive systems for rotary oil well pumps - The Federal Court allowed the action, holding that the defendants' product infringed the '937 patent - The defendants were Corlac Inc. and its subsidiary company Corlac Equipment - National-Oilwell Canada Ltd. (NOC) purchased Corlac Equipment from Corlac in November 2003 and amalgamated with Corlac Equipment in 2004 - National Oilwell Inc. was NOC's parent company - The court concluded that Corlac and Corlac Equipment were jointly and severally liable for infringement and that National Oilwell Inc. was jointly liable with NOC - Due to the amalgamation consequences of NOC and Corlac Equipment, the defendants were jointly and severally liable with each other for infringement - See paragraphs 205 to 220.

Patents of Invention - Topic 3047

Infringement of patent - Persons liable - Liability of parent corporation for subsidiary's infringements - [See Patents of Invention - Topic 3041 ].

Patents of Invention - Topic 3510

Infringement actions - General - Limitation of actions - Canadian patent No. 2,095,937 (the '937 patent) was owned by Grenke and licenced to GrenCo Industries Ltd. which sublicensed the patent rights to Weatherford PC Pump Ltd. and subsequently Weatherford Canada Ltd. and Weatherford Canada Partnership (collectively, the plaintiffs) - The '937 patent claimed a seal assembly combination designed to fix a problem of leaking stuffing boxes on rotary progressive cavity pumps that troubled heavy oil producers since the early 1980s - This litigation centered on the claim that the defendants had been infringing, since at least 1999, the '937 patent in the manufacture and sale of their drive systems for rotary oil well pumps - The defendants asserted that the plaintiffs' claim for infringement was statute barred or limited by reason of the limitations periods in s. 55.01 of the Patent Act and the Federal Courts Act - The Federal Court rejected the assertion - The defendants conceded that because the earliest of the consolidated actions that had the statement of claim issued July 6, 2001, the plaintiffs were only statute barred from any remedies that might exist prior to July 6, 1995 - As the infringing activities commenced in late 1999-early 2000, there was no real issue as to limitation periods - The six-year limitation period did not bar the plaintiffs' claim - See paragraphs 221 to 224.

Patents of Invention - Topic 3606

Infringement actions - Parties - Persons entitled to commence action (incl. standing) - Canadian patent No. 2,095,937 (the '937 patent) was owned by Grenke and licenced to GrenCo Industries Ltd. which sublicensed the patent rights to Weatherford PC Pump Ltd. and subsequently Weatherford Canada Ltd. and Weatherford Canada Partnership (collectively, the plaintiffs) - The '937 patent claimed a seal assembly combination designed to fix a problem of leaking stuffing boxes on rotary progressive cavity pumps that troubled heavy oil producers since the early 1980s - This litigation centered on the claim that the defendants had been infringing, since at least 1999, the '937 patent in the manufacture and sale of their drive systems for rotary oil well pumps - The defendants asserted that because Art Britton (who worked with Grenke at GrenCo during the time of development of the claimed invention in the patent) was the true inventor/owner of the '937 patent and the plaintiffs had no assignment from him, they had no right to commence an infringement action - The Federal Court rejected the assertion - Art Britton was neither "the" nor "an" inventor of the '937 patent nor was he entitled to ownership of the patent - Any assignment of his rights therein to the defendants was devoid of substance - See paragraphs 225 and 226.

Patents of Invention - Topic 3606

Infringement actions - Parties - Persons entitled to commence action (incl. standing) - Canadian patent No. 2,095,937 (the '937 patent) was owned by Grenke and licenced to GrenCo Industries Ltd. which sublicensed the patent rights to Weatherford PC Pump Ltd. and subsequently Weatherford Canada Ltd. and Weatherford Canada Partnership (collectively, the plaintiffs) - The '937 patent claimed a seal assembly combination designed to fix a problem of leaking stuffing boxes on rotary progressive cavity pumps that troubled heavy oil producers since the early 1980s - This litigation centered on the claim that the defendants had been infringing, since at least 1999, the '937 patent in the manufacture and sale of their drive systems for rotary oil well pumps - The defendants asserted that the actions of the plaintiffs, most particularly Grenke in his dealings with the Patent Office in removing Tofts as an inventor, ought to deprive the plaintiffs of any entitlement to equitable relief particularly injunctive relief - The Federal Court rejected the assertion - While Grenke's conduct raised issues, it was not such as to disentitle him from his ownership of the '937 patent - Further, the issuance of injunctive relief was not only a benefit to a successful party but in the public interest to ensure the enforceability of the Canadian patent system - See paragraphs 227 to 229.

Patents of Invention - Topic 5001

Licensing agreements - General - Canadian patent No. 2,095,937 (the '937 patent) was owned by Grenke and licenced to GrenCo Industries Ltd. which sublicensed the patent rights to Weatherford PC Pump Ltd. and subsequently Weatherford Canada Ltd. and Weatherford Canada Partnership (collectively, the plaintiffs) - The '937 patent claimed a seal assembly combination designed to fix a problem of leaking stuffing boxes on rotary progressive cavity pumps that troubled heavy oil producers since the early 1980s - This litigation centered on the claim that the defendants had been infringing, since at least 1999, the '937 patent in the manufacture and sale of their drive systems for rotary oil well pumps - The defendants challenged the validity of the licence and sub-licence between the plaintiffs and, if valid, alleged that they were not effective in respect of the Weatherford plaintiffs during the time that the Grenke plaintiffs and the Weatherford plaintiffs were disputing the existence and terms of the sub-licence - The Federal Court rejected the assertions - The sub-licence was simply the right to use the patent and it was clear as to those rights - The Weatherford plaintiffs' rights in this action arose not from an assignment of a chose-in-action but from its right to use, its "claiming under" the patent - The defendants remained liable to the Weatherford plaintiffs during all the periods covered by the sub-licence agreements - See paragraphs 360 to 377.

Cases Noticed:

Whirlpool Corp. et al. v. Camco Inc. et al., [2000] 2 S.C.R. 1067; 263 N.R. 88, refd to. [para. 117].

Free World Trust v. Electro Santé Inc. et al., [2000] 2 S.C.R. 1024; 263 N.R. 150, refd to. [para. 117].

Pfizer Canada Inc. et al. v. Canada (Minister of Health) et al. (2007), 366 N.R. 347; 2007 FCA 209, refd to. [para. 118].

Mobil Oil Corp. et al. v. Hercules Canada Inc. (1995), 188 N.R. 382; 63 C.P.R.(3d) 473 (F.C.A.), refd to. [para. 169].

Lubrizol Corp. et al. v. Imperial Oil Ltd. et al. (1992), 150 N.R. 207; 45 C.P.R.(3d) 449 (F.C.A.), refd to. [para. 170].

Nedco Ltd. v. Clark et al. (1973), 43 D.L.R.(3d) 714 (Sask. C.A.), refd to. [para. 212].

Northeast Marine Services Ltd. v. Atlantic Pilotage Authority (1995), 179 N.R. 17 (F.C.A.), refd to. [para. 212].

R. v. Black & Decker Manufacturing Co., [1975] 1 S.C.R. 411; 1 N.R. 299, refd to. [para. 215].

Hoffmann-La Roche Ltd. v. Canada (Minister of Health) et al., [2005] F.T.R. Uned. A97; 2005 FC 1415, refd to. [para. 215].

Shoal Point Management Ltd. et al. v. ICI Canada Inc. et al., [2006] B.C.T.C. 857; 2006 BCSC 857, refd to. [para. 215].

Apotex Inc. and Novopharm Ltd. v. Wellcome Foundation Ltd., [2002] 4 S.C.R. 153; 296 N.R. 130, refd to. [para. 236].

Lovell Manufacturing Co. v. Beatty Brothers Ltd. (1962), 41 C.P.R. 18 (Ex. Ct.), refd to. [para. 240].

Sanofi-Synthelabo Canada Inc. et al. v. Apotex Inc. et al. (2008), 381 N.R. 125; 2008 SCC 61, refd to. [para. 285].

Baker Petrolite Corp. et al. v. Canwell Enviro-Industries Ltd. et al. (2002), 288 N.R. 201; 17 C.P.R.(4th) 478 (F.C.A.), refd to. [para. 292].

International Corona Resources Ltd. v. LAC Minerals Ltd., [1989] 2 S.C.R. 574; 101 N.R. 239; 36 O.A.C. 57, refd to. [para. 298].

Beloit Canada Ltd. v. Valmet Oy (1986), 64 N.R. 287; 8 C.P.R.(3d) 289 (F.C.A.), refd to. [para. 320].

Gilbert (Jules R.) Ltd. v. Sandoz Patents Ltd. (1970), 64 C.P.R. 14 (Ex. Ct.), refd to. [para. 330].

Procter & Gamble Co. v. Bristol-Myers Ltd. (1978), 39 C.P.R.(2d) 145 (F.C.T.D.), refd to. [para. 333].

Searle (G.D.) & Co. et al. v. Novopharm Ltd. et al. (2007), 296 F.T.R. 254; 56 C.P.R.(4th) 1 (F.C.), refd to. [para. 344].

Bourgault Industries Ltd. v. Flexi-Coil Ltd. (1999), 237 N.R. 74; 86 C.P.R.(3d) 221 (F.C.A.), refd to. [para. 349].

Apotex Inc. and Novopharm Ltd. v. Wellcome Foundation Ltd. (2000), 262 N.R. 137; 10 C.P.R.(4th) 65 (F.C.A.), refd to. [para. 363].

Signalisation de Montréal Inc. v. Services de Béton Universels ltée et al. (1992), 147 N.R. 241; 46 C.P.R.(3d) 199 (F.C.A.), refd to. [para. 370].

Union Carbide Canada Ltd. v. Trans-Canadian Feeds Ltd., [1966] Ex. C.R. 884, dist. [para. 372].

Eli Lilly and Co. et al. v. Novopharm Ltd. et al. (2000), 265 N.R. 137; 10 C.P.R.(4th) 10 (F.C.A.), refd to. [para. 374].

Bayer Aktiengesellschaft et al. v. Apotex Inc. (1998), 113 O.A.C. 1; 82 C.P.R.(3d) 526 (C.A.), refd to. [para. 375].

Statutes Noticed:

Patent Act, R.S.C. 1985, c. P-4, sect. 28.2(1) [para. 284]; sect. 28.3 [para. 319]; sect. 53(1) [para. 327]; sect. 55.01 [para. 222]; sect. 73(1)(a) [para. 343]; sect. 73(3) [para. 346].

Counsel:

Robert MacFarlane, Adam Bobker and Joshua Spicer, for the plaintiffs, Weatherford Canada Ltd. and Weatherford Canada Partnership;

Bruce Stratton and Vincent Man, for the plaintiffs, Edward Grenke and Grenco Industries Ltd.;

Christopher Kvas, William Regan and Mala Joshi, for the defendants.

Solicitors of Record:

Bereskin & Parr, Toronto, Ontario, for the plaintiffs, Weatherford Canada Ltd. and Weatherford Canada Partnership;

Dimock Stratton, LLP, Toronto, Ontario, for the plaintiffs, Edward Grenke and Grenco Industries Ltd.;

Ridout & Maybee, LLP, Toronto, Ontario, for the defendants.

This action and counterclaim were heard between April 20 and June 1, 2009, at Toronto, Ontario, by Phelan, J., of the Federal Court, who delivered the following judgment on June 3, 2010.

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31 practice notes
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    ...of the '937 patent and that the plaintiffs had in fact infringed their patent rights. The Federal Court, in a decision reported at 370 F.T.R. 54, allowed the action and dismissed the counterclaim. The defendants The Federal Court of Appeal allowed the appeal regarding the finding of infring......
  • Apotex Inc. v. Sanofi-Aventis, (2011) 402 F.T.R. 1 (FC)
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    ...Inc. (2009), 351 F.T.R. 1; 80 C.P.R.(4th) 1; 2009 FC 991, refd to. [para. 187]. Weatherford Canada Ltd. et al. v. Corlac Inc. et al. (2010), 370 F.T.R. 54; 84 C.P.R.(4th) 237; 2010 FC 602, refd to. [para. Lubrizol Corp. et al. v. Imperial Oil Ltd. et al. (1992), 150 N.R. 207; 45 C.P.R.(3d) ......
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11 firm's commentaries
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    ...consumers in Canada, notwithstanding that the locus of sale was outside Canada. Corlac Inc v Weatherford Canada Inc, 2011 FCA 228, var'g 2010 FC 602. Paragraph 73(1)(a) of the Patent Act provides that a Canadian patent application shall be "deemed to be abandoned" if the applicant does not ......
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    ...consumers in Canada, notwithstanding that the locus of sale was outside Canada. Corlac Inc v Weatherford Canada Inc, 2011 FCA 228, var’g 2010 FC 602. Paragraph 73(1)(a) of the Patent Act provides that a Canadian patent application shall be “deemed to be abandoned” if the applicant does not ......
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    ...a decision involving the infringement of a patent covering the sealing assembly for rotary oil well pumps back to the Federal Court (see 2010 FC 602, rev'd 2011 FCA 228, 2012 FC 261, rev'd 2012 FCA 261, 2018 FC 565), and Zero Spill Systems (Int'l) Inc. v. Heide, in which the Federal Court o......
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    • Mondaq Canada
    • 16 Enero 2023
    ...that does, for example where the non-infringing corporation benefits from the infringement (see, Weatherford Canada Ltd v Corlac Inc, 2010 FC 602, aff'd 2011 FCA In UPL NA Inc v AgraCity Crop & Nutrition Ltd, 2022 FC 1422, the Court rejected an argument that one of the defendants, NewAgco, ......
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2 books & journal articles
  • Patents
    • Canada
    • Irwin Books Intellectual Property Law. Second Edition
    • 15 Junio 2011
    ...also Novo Nordisk Canada Inc. v. Cobalt Pharmaceuticals Inc. , 2010 FC 746 at [329]–[31]; compare Weatherford Canada Ltd. v. Corlac Inc. , 2010 FC 602 at [331] [ Weatherford ]. 58 Jules R. Gilbert Ltd. v. Sandoz Patents Ltd. (1970), 64 C.P.R. 14 at 74 (Ex. Ct.), rev’d on other grounds ( sub......
  • Table of Cases
    • Canada
    • Irwin Books Intellectual Property Law. Second Edition
    • 15 Junio 2011
    ...1991) .............................................................................3, 24, 428, 553 Weatherford Canada Ltd. v. Corlac Inc., 2010 FC 602, 84 C.P.R. (4th) 237, [2010] F.C.J. No. 721 ........................................................... 282, 284 Webb & Knapp (Can.) Ltd., v......

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