Summary Trials - A Cost-Effective Resultion for Intellectual Property Litigants



Jenna Wilson for The Lawyers Weekly

March 12, 2010

Intellectual property litigation-particularly patent litigation-is often viewed as the province of the well-heeled plaintiff. The cost of a lawsuit from pleadings to trial, including legal fees and disbursements such as expert witness fees, is potentially enormous and out of the reach of many mid-size and smaller rights-holders.

While options for early resolution, such as summary judgment or a separate determination of certain issues, are available to plaintiffs and defendants, attempts to obtain them often fail. However, recent changes to the rules of the Federal Court, where most intellectual property litigation takes place, may improve the chances for litigants to obtain earlier resolution.

The advantages of summary judgment are obvious: earlier resolution of litigation; lower costs compared to a full trial with live witnesses; and for a rightsholder seeking summary judgment on infringement, the opportunity to obtain an injunction against an infringer without waiting for trial, or without seeking an interlocutory injunction, which imposes the often insurmountable hurdle of proof of irreparable harm.

Unfortunately, those advantages are seldom realized in intellectual property matters-particularly in patent infringement disputes. In patent infringement litigation, the vast majority of the thirty or so motions for summary judgment heard over the past decade have been dismissed. Generally, the court found conflicts in the evidence presented, or that viva voce expert testimony was needed to resolve issues of credibility; only in those few cases with relatively clear facts or admissions was summary judgment granted.

Summary judgment has proven to be a more viable option in copyright and trade-mark cases, where during the same time period, summary judgments were granted in roughly half of the motions brought in the Federal Court.

Early resolution of issues germane to patent infringement and validity has also been difficult to attain. For example, the defendant in Realsearch Inc. v. Valone Kone Brunette Ltd., [2003] F.C.J. No. 854, obtained an order from the Federal Court for an early hearing on the issue of patent claim construction prior to trial, under rule 107 of the Federal Courts Rules. In granting the order, the court found that an early determination of the meaning of the claims would speed up litigation and promote early settlement.

The Federal Court of Appeal overturned the order ( [2004] F.C.J. No. 23), noting that the institution of claim construction hearings was a fundamental change in Canadian patent law practice, and should be first carefully considered with reference to the rules. The Court of Appeal also observed that the dispute in Realsearch was straightforward, and that a trial could be completed within a relatively short period of time, depending on the urgency with which the parties treated the matter. Of course, the courts cannot predict the course of litigation; it took another six years for that action to be resolved.

However, recent amendments to the Federal Courts Rules may improve the chances of early resolution in intellectual property disputes. At the end of 2009, amendments to the rules came into force, introducing a new summary trial procedure into Federal Court practice. Rule 213 has been amended to provide plaintiffs and defendants with the option of bringing a motion for either summary judgment or summary trial after the filing of a defence.

Summary judgment motions proceed generally in the same manner as they did prior to the amendments, with an additional proviso in amended R. 214, which reflects recent jurisprudence clarifying that the respondent may not rely on prospective evidence that might be introduced later in the proceedings-the respondent must put itself in the best position possible at the summary judgment motion. The evidence and standard for summary judgment remains as it was before amendment: evidence is still based on affidavits and cross-examination transcripts, and judgment may be granted where the court is satisfied that there is no genuine issue for trial.

The new summary trial procedure, which is similar to the summary procedure set out in the British Columbia Rules of Court, provides the Federal Court with wider latitude to grant judgment in a summary fashion and broader scope for evidence to be considered on the motion. As with summary judgments, affidavits from fact and expert deponents may be tendered; however, while no examination-in-chief is provided for, a deponent may be ordered to attend for cross-examination before the court.

If the court finds, in a summary judgment motion, that there is a genuine issue for trial, the court may order that a summary trial be held to resolve the issue, rather than simply deferring the matter to a trial in the normal course.

What does this mean for litigants? Many patent infringement cases are relatively straightforward and otherwise ripe for summary judgment or early determination of an issue, but for the difficulties of conflicting fact or expert evidence. The summary trial procedure will allow the court to weigh credibility, while retaining the benefits of a summary proceeding. The cost of litigating a summary trial will be lower than a full-blown trial, since evidence is introduced in writing rather than by examination in chief. Hastening the day of judgment by means of summary trial may bring patent and other intellectual property litigation within the realm of affordability for smaller litigants.

Jenna Wilson practises intellectual property law and litigation at Dimock Stratton LLP in Toronto. Her firm acted as counsel for the defendants in Realsearch.

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