Federal Court Of Canada Dismisses Summary Judgment Motion In Patent Infringement Action Involving Parallel US Proceeding

On December 22, 2021, the Federal Court of Canada (the Court) in Google LLC v Sonos, Inc., 2021 FC 1462 (released earlier this month), dismissed Sonos, Inc.’s (Sonos) motion for summary judgment that relied on a voluntary dismissal of a parallel patent infringement action in the United States (US). The Court held that Sonos had failed to establish that there was no genuine issue for trial in Canada.

Google LLC (Google) brought an infringement action against Sonos with respect to its Canadian Patent No. 2,545,150 (the Canadian Patent) relating to a method and apparatus for reconfiguring noise suppression and echo cancellation based on noise conditions (the Canadian Action). The Canadian Patent claimed priority from a US patent application, which issued as US Patent No. 7,065,206 (the US Patent). The Canadian Patent and the US Patent have identical titles, detailed descriptions and figures, and share 11 identical claims.

Shortly after filing the Canadian Action alleging that certain Sonos products infringe the Canadian Patent, Google commenced an action against Sonos in the US for infringement of the US Patent and other patents (the US Action). Sonos denied infringement in both actions, arguing that their products lack an essential element of the asserted claims.

The parties jointly moved to dismiss the US Action and the US court issued the “Stipulation of Dismissal of ‘206 Infringement Claim” (the Stipulation), which stated that Google agreed to dismiss with prejudice its claims of infringement and Sonos agreed to dismiss without prejudice its defences related to the US Patent.

Following the dismissal of the US Action, Sonos brought a motion for summary judgment in the Canadian Action claiming that: (i) there was no genuine issue for trial; and (ii) the action was barred by principles of res judicata and was an abuse of process.

First, Sonos argued that the Stipulation (including the correspondence between the parties’ US counsel) represented factual admissions by Google showing there is no infringement of the Canadian Patent because an essential element of the claims identical to those in the US Patent was absent from the alleged infringing products. This, according to Sonos, eliminated any genuine issue for trial in the Canadian Action. The Court rejected the argument, finding that Google did not expressly admit or otherwise agree to the representations in the Stipulation.  

The Court noted that even if Sonos had successfully established that Google made these factual admissions in the US Action, the parties clearly did not agree on the construction of the claims. Therefore, the possibility of a different claim construction under Canadian law would be sufficient to raise a genuine issue for trial, notwithstanding that the claims at issue are identically worded in both patents.

Second, Sonos argued that the voluntary dismissal of the US Action represents an adjudication of a cause of action or factual issue by a court of competent jurisdiction, thus invoking the principles of res judicata to preclude Google from bringing the Canadian Action (referred to as cause of action estoppel and issue estoppel under Canadian law). The Court disagreed and found that: (a) Google’s Canadian cause of action related to the alleged infringement of the Canadian Patent, which is different from the cause of action in the US Action; and (b) the absence of a judicial determination of any of the facts supporting Sonos’ summary judgment motion meant that there was no basis to invoke issue estoppel or its US counterpart. The Court also disagreed with Sonos that the Canadian Action should be dismissed as an abuse of process.

Summary by: Anna Troshchynsky