Nicole Boyle

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.

Following the dismissal of an application to enforce a letter rogatory from a U.S. court against a non-party, the court determined the issue of costs.

The respondent successfully resisted the application by demonstrating it had searched its records and that the request was overly broad and premature.

The court found the respondent acted reasonably and did not thwart a legitimate inquiry.

Costs were awarded to the respondent on a partial indemnity scale, fixed at $32,053.03.

The applicant, Cisco Systems Inc., sought to enforce a Letter Rogatory from a U.S. District Court against N. Harris Computer Corporation, a non-party in the U.S. patent litigation, to obtain documents and depositions.

Harris resisted the order, arguing it was burdensome and unnecessary, and that the evidence could be obtained from a party to the U.S. litigation (Video Solutions).

The court declined to enforce the order at this time, finding it premature, but ordered Harris to preserve legacy records and allowed Cisco to renew the application with further evidence after certain steps are taken in the U.S. litigation.