Markman-Style Claim Hearings not About to Invade Canada

On January 9, 2004, the Canadian Federal Court of Appeal allowed an appeal by the Plaintiffs, Realsearch Inc and Dingwall's Machinery & Supply Ltd, from a motion in the Trial Division pursuant to Rule 107 of the Federal Court Rules by the Defendants, Valon Kone Brunette Ltd and BRD Machinery Ltd. The decision on the motion see E-TIPSâ„¢ (Vol 2, No 2, July 3, 2003) had permitted a separation of the issues of patent construction from a trial on the merits of the alleged infringement. In the United States, the claims of a patent are routinely interpreted before trial in claim interpretation hearings, following the US Supreme Court decision in Markman v Westview Instruments. The issue on appeal in the Realsearch case was whether sufficient weight had been given by the Motions Judge to all the elements of the test under Rule 107. That is, did the evidence establish that construing patent claims before discovery would be the more "just, expeditious and least expensive determination of the proceeding on the merits"? While accepting that Canadian law clearly gives the Court the necessary power to bifurcate a trial, the Federal Court of Appeal confirmed that the severance of issues should be confined to exceptional circumstances. The Court of Appeal acknowledged that issues of claim construction and infringement are closely interwoven. Splitting the issues could deprive the Plaintiff of "the advantage of having the whole of the action tried at the same time by the same judge". The Court of Appeal underlined that it was not suggesting that a Markman-type order would not be available in any circumstances. However, on the facts of the case before the Court, there was no evidence that severance of the issues would save time and expense. Further, the Court of Appeal suggested that a better means to such a change in practice would be by way of a submission by the intellectual property bar to the Court's rules committee. For the full text of Realsearch Inc v Valon Kone Brunette Ltd (January 9, 2004), [2004] FCA 5, rev'g (May 28, 2003), [2003] FCT 669, see: http://decisions.fct-cf.gc.ca/fct/2004/2004fca5.html; and http://decisions.fct-cf.gc.ca/fct/2003/2003fct669.html for the Court of Appeal and Trial Division decisions respectively. Summary by: Nicholas J. Whalen