Federal Court Holds Improper Priority Claim Not a Material Misrepresentation

On March 16, 2016, Manson J of the Federal Court of Canada issued his decision in Uponor AB v Heatlink Group Inc et al, 2016 FC 320, holding that a majority of the claims in CA Patent No. 2,232,376 (376 Patent), owned by the plaintiff, are invalid for inutility in fact, insufficiency, overbreadth, anticipation, and obviousness, but that Heatlink Group Inc and Pexcor Manufacturing Company Inc (Pexcor) infringed the remaining claims. He also held that Crosslink Finland OY, which supplied and serviced the infrared (IR) ovens used by Pexcor, did not induce the infringement.

The 376 Patent relates to methods and apparatus for polymer crosslinking using IR radiation.  Manson J’s invalidity findings were largely fact-driven.  Of significance is his holding on the effect of an improper priority claim.  Manson J determined that the claim for priority made in respect of the 376 Patent was improper because the priority applications did not disclose the claimed subject matter.  However, he held that the improper priority claim was not a material misrepresentation since its only effect would be to deny the applicant’s entitlement to the earlier claim date.  In the view of Manson J, this “would not and does not impact how the public would make use of the invention”.

Manson J held that the plaintiff is entitled to damages but denied the remedies of delivery-up, election of profits and punitive damages.

The defendants have appealed.