Markman-Style Patent Claim Hearings Coming to Canada

The Federal Court of Canada (Trial Division) has recently allowed what may be Canada's first Markman-style claim interpretation hearing. In his May 28, 2003 decision in Realsearch Inc. v. Valone Kone Brunette Ltd., Mr. Justice Noël granted a motion to hold a separate determination of the issue of claim construction before the trial of the main action on patent infringement. The case related to mechanical devices for removing bark from logs. The applicant sought a preliminary determination of the meaning of two specific and technical phrases in the claims. Under Canadian law, the construction of patent claims is a matter of law. Patent claims are to be construed or interpreted by the judge, usually aided by expert evidence, separately from the judge's determination of patent validity or infringement. Although the Federal Court Rules permit a preliminary determination of any issues in a case, this is believed to be the first time that Rule 107 has been applied to patent claim construction. In the US, such hearings have become a common fixture of patent litigation since the landmark Supreme Court decision in Markman v. Westview Instruments. In Realsearch, the Court indicated that by adopting the Markman-style procedure in Canada, it might speed up the litigation and enable the parties "to better determine the relative merits of their positions". The Realsearch decision is under appeal. A copy of the Realsearch decision is available at: http://decisions.fct-cf.gc.ca/fct/2003/2003fct669.html Summary by: Jennifer Jannuska