Daniel Davies

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 appellant infringed a patent held by the respondents for metallocene linear low-density polyethylenes (thin but strong plastics).

Following a liability finding, a reference judge awarded the respondents an accounting of profits equal to the appellant's actual revenue minus actual full costs, and also awarded springboard profits — profits earned post-patent-expiry causally attributable to infringement during the patent period.

The majority dismissed the appeal, holding that an accounting of profits requires disgorgement of all profits causally attributable to the invention using a three-step framework; the appellant's concession that no non-infringing option existed precluded reduction of the award; and springboard profits are legally permissible and factually supported.

Côté J. dissented, arguing the differential profit approach should have been available and the matter remitted to the Federal Court.