Wenzel Downhole Tools Ltd. et al. v. National-Oilwell Canada Ltd. et al., (2010) 373 F.T.R. 306 (FC)

• Judge: Snider, J.
• Court: Federal Court (Canada)
• Case Date: September 28, 2010
• Jurisdiction: Canada (Federal)
• Citations: (2010), 373 F.T.R. 306 (FC);2010 FC 966

Wenzel Downhole Tools v. Nat.-Oilwell (2010), 373 F.T.R. 306 (FC)

MLB headnote and full text

Temp. Cite: [2010] F.T.R. TBEd. OC.004

Wenzel Downhole Tools Ltd and William Wenzel (plaintiffs) v. National-Oilwell Canada Ltd., National Oilwell Nova Scotia Company, National Oilwell Varco Inc., Dreco Energy Services Ltd., Vector Oil Tool Ltd. and Frederick W. Pheasey (defendants)

National-Oilwell Canada Ltd., National Oilwell Nova Scotia Company, National Oilwell Varco Inc., Dreco Energy Services Ltd., Vector Oil Tool Ltd. and Frederick W. Pheasey (plaintiffs by counterclaim) v. Wenzel Downhole Tools Ltd. and William Wenzel (defendants by counterclaim)

(T-1327-05; 2010 FC 966)

Indexed As: Wenzel Downhole Tools Ltd. et al. v. National-Oilwell Canada Ltd. et al.

Federal Court

Snider, J.

September 28, 2010.

Summary:

The plaintiffs alleged that the defendants had infringed the plaintiffs' '630 patent. The defendants claimed that the subject matter defined by the claims in the '630 patent were disclosed before the claim date in the patent by persons other than the inventor in a U.S. patent. The defendants moved for summary dismissal of the action under rule 213 of the Federal Courts Rules on the basis that the '630 patent was obvious in light of, or anticipated by, the U.S. patent and was, therefore, invalid. The plaintiffs brought a motion asking the court to decline to hear the summary judgment motion in light of the defendants' representations at a pretrial conference that obviousness and anticipation were issues for trial.

A Prothonotary of the Federal Court, in a decision reported at [2010] F.T.R. Uned. 440; 2010 FC 669, referred the motion to the trial judge.

The Federal Court held that the motion for summary dismissal should not proceed.

Patents of Invention - Topic 8006

Practice - General - Summary judgments - The plaintiffs alleged that the defendants had infringed the plaintiffs' '630 patent - The defendants claimed that the subject matter defined by the claims in the '630 patent were disclosed before the claim date in the patent by persons other than the inventor in a U.S. patent - The defendants moved for summary dismissal of the action under rule 213 of the Federal Courts Rules on the basis that the '630 patent was obvious in light of, or anticipated by, the U.S. patent and was, therefore, invalid - The plaintiffs brought a motion asking the court to decline to hear the summary judgment motion in light of the defendants' representations at a pretrial conference that obviousness and anticipation were issues for trial - The Federal Court held that the motion for summary dismissal should not proceed as there were genuine issues for trial - There were errors in the defendants' position that this was a case where there was no genuine issue - Before anticipation and obviousness could be considered, the court had to construe the '630 patent - This required the assistance of expert witnesses - Here, no expert evidence had been provided - There was contradictory evidence on the issues of the patent's construction and whether it was anticipated by prior art - Further, where there would be expert testimony, there were often issues of credibility, requiring the court to assess and weigh the experts' opinions - Cross-examination was an essential feature in these cases - See paragraphs 25 to 32.

Patents of Invention - Topic 8006

Practice - General - Summary judgments - [See Practice - Topic 5255.4 ].

Practice - Topic 5255.4

Trials - General - Summary trials - Availability of - The plaintiffs alleged that the defendants had infringed the plaintiffs' '630 patent - The defendants claimed that the subject matter defined by the claims in the '630 patent were disclosed before the claim date in the patent by persons other than the inventor in a U.S. patent - The defendants moved for summary dismissal of the action under rule 213 of the Federal Courts Rules on the basis that the '630 patent was obvious in light of, or anticipated by, the U.S. patent and was, therefore, invalid - The plaintiffs brought a motion asking the court to decline to hear the summary judgment motion in light of the defendants' representations at a pretrial conference that obviousness and anticipation were issues for trial - The Federal Court, having held that the motion for summary dismissal should not proceed, considered whether the issues could be determined by summary trial under rule 216 - There were several factors that weighed against directing the parties toward a motion for summary trial, including the matter's complexity and the consequent costs and time required due to the technical nature of the issues - It was possible that a summary trial could be found to be an efficient and effective procedure in a patent infringement proceeding - However, based on the amount of time required to prepare the summary trial, the proximity of the actual trial date and the lack of independent expert evidence available on the motion, allowing the motion to proceed was not in the interests of justice - See paragraphs 33 to 41.

Practice - Topic 5702

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

Practice - Topic 5708

Judgments and orders - Summary judgments - Bar to application - Existence of issue to be tried - [See first Patents of Invention - Topic 8006 ].

Practice - Topic 5719

Judgments and orders - Summary judgments - To dismiss action - [See first Patents of Invention - Topic 8006 ].

Cases Noticed:

Chesters v. Canada (Minister of Citizenship and Immigration), [2001] F.T.R. Uned. 929; 2001 FCT 1374, refd to. [para. 13].

Bourque (Pierre) & Fils ltée v. Canada (1998), 150 F.T.R. 140 (T.D.), refd to. [para. 13].

Society of Composers, Authors and Music Publishers of Canada v. Maple Leaf Sports & Entertainment, [2010] F.T.R. Uned. 466; 2010 FC 731, refd to. [para. 26].

Lameman et al. v. Canada (Attorney General) et al., [2008] 1 S.C.R. 372; 372 N.R. 239; 429 A.R. 26; 421 W.A.C. 26; 2008 SCC 14, refd to. [para. 27].

Granville Shipping Co. v. Pegasus Lines Ltd. S.A. et al., [1996] 2 F.C. 853; 111 F.T.R. 189 (T.D.), refd to. [para. 28].

Canada (Minister of Citizenship and Immigration) v. Laroche, [2008] F.T.R. Uned. 372; 2008 FC 528, refd to. [para. 29].

Inspiration Management Ltd. v. McDermit St. Lawrence Ltd. (1989), 36 B.C.L.R.(2d) 202; 36 C.P.C.(2d) 199 (C.A.), refd to. [para. 36].

Dahl et al. v. Royal Bank of Canada et al., [2005] B.C.T.C. 1263; 46 B.C.L.R.(4th) 342; 2005 BCSC 1263, refd to. [para. 37].

Counsel:

Grant S. Dunlop, for the plaintiffs/defendants by counterclaim;

Kevin P. Feehan, Q.C., and Dennis R. Schmidt, for the defendants/plaintiffs by counterclaim.

Solicitors of Record:

Ogilvie LLP, Edmonton, Alberta, for the plaintiffs/defendants by counterclaim;

Fraser Milner Casgrain LLP, Edmonton, Alberta, for the defendants/plaintiffs by counterclaim.

This motion was considered in writing without the personal appearance of the parties at Ottawa, Ontario, by Snider, J., of the Federal Court, who delivered the following reasons for order on September 28, 2010.