Federal Court Continues Recent Trend Of Granting Summary Judgment In Appropriate Patent Proceedings

• Published date: 15 January 2021
• Subject Matter: Intellectual Property, Litigation, Mediation & Arbitration, Patent, Court Procedure, Trials & Appeals & Compensation
• Law Firm: Smart & Biggar
• Author: Mr Matthew Norton and Daniel Davies

In a recent decision, Flatwork Technologies LLC v Brierley (2020 FC 997), the Federal Court granted summary judgment in favour of the Plaintiff, Flatwork Technologies, LLC (Flatwork), in respect of its patent impeachment action.

A motion for summary judgment is a streamlined and expeditious procedure whereby a party seeks to have the Court adjudicate some or all of the issues in an action based entirely on a paper record. Unlike a full trial which requires the parties to put forward live witnesses, in a motion for summary judgment all of the evidence is submitted by way of affidavits followed by cross-examinations on those affidavits. A motion for summary judgment may be brought at any time after the defendant has filed a defence but before the time and place for trial have been fixed.

This decision further demonstrates the Federal Court's recent willingness to grant summary judgment in patent cases in appropriate circumstances. Accordingly, it appears that in the certain cases, summary judgment may be a viable option to resolve patent disputes more expeditiously while avoiding the costs of a full patent trial.

Smart & Biggar successfully represented Flatwork with a team led by Daniel Davies, alongside Laura Easton and Matthew Norton.

Flatwork's Motion for Summary Judgment

In 2018, the patent owner, Ms. Brierley, initiated a provincial court action in Alberta against Flatwork alleging infringement of Canadian Patent No. 2,383,341 (the '341 Patent). Flatwork responded by bringing an impeachment action in the Federal Court seeking to invalidate the '341 patent pursuant to 60(1) of the Patent Act.

The '341 Patent was entitled "Method and Apparatus for Maintaining Articulating Hydraulic Booms Operating in Freezing Temperatures". The patent generally related to an electric heating wrap for an articulated hydraulic boom.

Flatwork brought a motion for summary judgment seeking to invalidate the '341 Patent without the need for a full trial. The motion sought to invalidate the patent for anticipation, obviousnessand lack of utility.

Within the summary judgment motion, the parties each submitted expert affidavits on the construction and validity of the '341 Patent. Both experts were cross-examined.

The Court granted summary judgment in favour of Flatwork, finding that the subject matter claimed in the '341 Patent was obvious. The Court found that the differences between the '341 Patent and the prior art were limited to applying a standard prior art heating wrap to...