Cole Meagher

The court considered whether the defences of anticipation and obviousness to a patent infringement claim should be struck as an abuse of process, given a prior Patent Re-Examination Board decision.

The court held that the issues before the Board (patentability) and the court (validity) are distinct, and that the Patent Act reserves validity determinations for the courts.

The motion to strike was dismissed, allowing the defences to proceed.

The plaintiff in a patent infringement action brought a motion to compel the defendants to produce additional financial information and records relating to the use of the allegedly infringing mine doors, and to make officers available for cross-examination.

The court dismissed the motion, finding that the statement of claim did not plead an accounting of profits against the co-defendant purchaser, and that the request against the manufacturer defendant was premature as the plaintiff had not yet conducted examinations for discovery to identify specific missing documents.

The defendants moved to amend a Protective and Confidentiality Order to add a second law firm, Norton Rose Fulbright LLP, as "outside counsel" alongside their existing counsel.

The plaintiff opposed, citing a potential conflict of interest as Norton Rose Fulbright also represents another drug manufacturer with similar claims against the plaintiff in a separate action.

The court found that the defendants failed to provide a sufficient explanation for seeking to add Norton Rose Fulbright as co-counsel under paragraph 10(b) of the order, rather than simply seeking leave under paragraph 10(g) to allow them to view confidential information.

The court identified a foreseeable risk of conflict of interest due to Norton Rose Fulbright's dual representation and the lack of evidence regarding screening mechanisms or waivers.

The motion was dismissed.

The court issued trial management directions for an upcoming ten-day bifurcated trial on liability concerning a patent invalidity and public nuisance claim.

Directions were given regarding the exchange of witness affidavits for evidence in chief, read-ins from discovery transcripts, opening statements, and scheduling.

The court also directed that outstanding issues regarding document production and particulars of special damages be resolved summarily at an upcoming case conference.