2022 Year In Review: IP Litigation

• Published date: 07 March 2023
• Subject Matter: Intellectual Property, Copyright, Patent, Trademark
• Law Firm: Bereskin & Parr LLP
• Author: Mr Andrew McIntosh and Martin Brandsma

In a year dominated with headlines of interest rate hikes, inflation, and general economic uncertainty, perhaps it is unsurprising that in the area of intellectual property litigation, a noticeable trend from 2022 was the increased number of summary trial decisions, as litigants seek more timely and cost-effective ways to resolve their IP disputes. Below we take a look back at this and other significant trends and decisions affecting IP litigation in Canada from 2022.

Summary Proceedings

2022 saw a surge in the number of issued IP decisions stemming from motions for summary trial (at least 9 decisions in the past year, compared with a total of 20 over the previous decade). The decisions largely dealt with patent or trademark enforcement, with motions brought by both plaintiffs and defendants. Four separate summary trial decisions were issued relating to patent infringement. In each instance the court was satisfied that the summary trial procedure was appropriate. The court decided by summary trial: (1) that a plaintiff did not own the patents it asserted in an infringement action (in a motion brought by the plaintiff in Mud Engineering Inc v Secure Energy (Drilling Services) Inc, 2022 FC 943); (2) that there was patent infringement in two motions brought by alleged infringers, warranting the actions to proceed to trial on the remaining defences of invalidity (Janssen Inc v Pharmascience Inc, 2022 FC 62; Janssen Inc v Apotex Inc, 2022 FC 107); and (3) that there was no infringement, and dismissed the action in its entirety, in a motion brought by a defendant (Steelhead LNG (ASLNG) Ltd v ARC Resources Ltd, 2022 FC 998). The Janssen decisions are notable as they both involved motions for summary trial brought by defendants in the context of proceedings under Canada's Patented Medicines (Notice of Compliance) Regulations, which are already intended as condensed proceedings.

Litigants also employed the summary trial process to enforce trademark rights. The court considered issues of trademark infringement under sections 19 and 20 of the Trademarks Act (Gentec v Nuheara IP Pty Ltd et al, 2022 FC 1715), passing off (Dragona Carpet Supplies Mississauga Inc v Dragona Carpet Supplies Ltd, 2022 FC 1042), and the validity of a trademark registration under section 18 of the Trademarks Act (Mainstreet Equity Corp v Canadian Mortgage Capital Corporation, 2022 FC 20). An unopposed motion for summary trial dealing with counterfeit goods was also considered in Lululemon Athletica Canada Inc v Campbell, 2022 FC 194 (see our article from February 18, 2022 on the decision).

In addition to time and cost benefits, the rise in summary trial decisions for IP disputes is further supported by the limited utility of summary judgment motions-the other mechanism for the court to substantively and summarily decide an action. Jurisprudence has held that credibility issues should not be decided on a summary judgment motion. Conversely, the Federal Courts Rules provide that on a motion for summary trial, the Court may order an affiant to appear before the court for cross-examination, to assist the court in assessing credibility. This limitation was illustrated in GEMAK Trust v Jempak Corporation, 2022 FCA 141, where the Federal Court of Appeal overturned a decision that granted summary judgment in an action...