Louis Brown et al v HMTQ et al, 2014 FC 831

In this decision the Federal Court dismissed a motion for summary judgment brought by Canada for the invalidation of a patent for a transportable decontamination system (“ColPro Systems”) pursuant to section 53 of the Patent Act. Canada successfully argued that the inventor made an untrue material allegation for having not indicated in the patent application that he was a public servant, but whether this would invalidate the patent was considered a genuine issue requiring a trial.

The motion arose during proceedings for patent infringement brought by the plaintiff inventor (and respondent on the motion) Louis Brown and NOR Environmental International against Canada and defendant HDT Tactical Systems of Canadian Patent No. 2,285,748 (the “ ‘748 patent”). [1]

Brown had applied for the ‘748 patent while listed in the Supplementary Reserve of the Canadian Forces. [7]

Canada argued that the patent was invalid for containing an untrue material allegation, or in the alternative, that Canada is immune from the infringement action since using the patent is necessary to the defence of Canada. [4] While some sub-issues were decided on the motion, the majority of issues were considered genuine issues requiring a trial.

In framing its approach to the law of summary judgment, the Court imported values from the recent civil procedure decision Hryniak v Mauldin, 2014 SCC 7, which espoused a “culture shift” towards emphasizing the importance of summary judgment motions to securing a “just, expeditious, and inexpensive determination”. [40-47]

Issues Decided on Summary Judgment

Canada argued that the ‘748 patent is invalid pursuant to section 53 of the Patent Act on the basis that Brown had breached his duty pursuant to section 4 of the Public Servants Inventions Act, RSC 1985, c P-32 (the “PSIA”) for not disclosing in his patent application that he a public servant. [2] The Court found that Brown was a public servant on the basis that the definition of “public servant” in the PSIA includes all members of Canadian Forces, regardless of Brown’s objection that he was not employed and was merely on a list of the Reserve Force. [55, 62] The Court also found that neglecting to include this information in the patent application was not merely an omission, as Brown had contended, but rather an untrue material allegation for the purposes of section 53 of the Patent Act. [80, 86]

Issues Deferred to Trial

Notwithstanding these determinations, the Court did not declare the ‘748 patent invalid, having decided that the issue of whether the untrue material allegation needs to have been made with an intent to mislead, and whether Brown had that intent, are genuine issues requiring a trial. [114]

Canada had alternatively argued that Canada is immune to claims for damages for patent infringement relying on section 8 of the Crown Liability and Proceedings Act, RSC 1985, c C-50 (the “CLPA”) since the invention in the ‘748 patent is necessary for the defence of Canada and for the training or maintaining the efficiency of the Canadian Forces. [4] Whether this defence stands was determined to be a genuine issue requiring a trial. [120]

Canada had further argued that Canada is immune from a permanent injunction preventing it from using or procuring ColPro Systems or an order for Canada to deliver-up or destroy CalPro Systems relying on section 22 of the CLPA. [5] However, since the validity of the ‘748 patent was disputed, the Court did not conclude on this issue. [126]

The decision is being appealed and cross-appealed.

Commentary

This decision builds on the case law surrounding what may constitute an “untrue material allegation” for the purposes of section 53 of the Patent Act, specifically with respect to omissions that may constitute untrue material allegations.

This case also brings to the fore the Public Servants Inventions Act and its interplay with the Patent Act. Specifically, this case demonstrates that obligations of the PSIA that are breached may provide a basis for invalidating a patent pursuant to section 53 of the Patent Act.

Although the issues were not decided on the motion for summary judgment, this case raises two issues regarding the ability of a patentee to sue the Canadian government for patent infringement and the defences that Canada can raise in response pursuant to the Crown Liability Proceedings Act.

The Federal Court also seems to have adopted the spirit of the Hryniak “culture shift” that summary judgment is to be considered an accessible and expedient means of administering the law, and not just as a means to weed out unmeritorious claims. Although that decision relates to the Ontario Rules of Civil Procedure, the Court found it appropriate to endorse the decision having regard to the Federal Court Rules.