My recent article on the 2009 amendments to the Federal Courts Rules relating to summary judgment and summary trial, particular for intellectual property proceedings was published by Slaw.

Summary Resolution of Intellectual Property Cases

If you have decided to go to court to assert your rights, or someone has taken you to court, there are several summary options, short of a conventional trial, that may save time and money yet still get the result you are interested in.

In 2009 the Federal Courts Rules were amended to expand the availability of summary judgment and summary trial options. The number of proceedings that have used or are using these provisions has expanded in recent years, perhaps in part as a response to greater discussion of summary options in the superior courts and by the Supreme Court of Canada in Hryniak.

For summary judgment, the rules (see Rule 215) provide that the court shall grant judgment where the court is satisfied that there is no genuine issue for trial with respect to a claim or defence. Even if there is a genuine issue of fact or law for trial, the court may determine the issue by way of summary trial. Prior to the amendments, there was no provision for summary trials (see Suntec Environmental Inc. v. Trojan Technologies Inc., 2004 FCA 140 at 19).

With summary trial, there is more flexibility and jurisdiction for the court to grant judgment where “there is sufficient evidence for adjudication,” unless the Court is of the opinion that it would be unjust to decide the issue on the motion. The rules for summary trial (see Rule 216) also allow the Court to issue orders requiring experts or witnesses to be cross-examined live at the hearing. The rules on summary trials were modeled after similar rules in the British Columbia Court, what is now Rule 9-7 of the British Columbia Supreme Court Civil Rules.

For summary trials, decisions (see for exampler Teva Canada Limited v. Wyeth and Pfizer Canada Inc., 2011 FC 1169 at 34 reversed on other grounds 2012 FCA 141, Louis Vuitton Malletier S.A. v. Singga Enterprises (Canada) Inc., 2011 FC 776 at 96 and Leo Ocean S.A. v. Westshore Terminals Limited Partnership, 2015 FCA 282) have set out some of the criteria for determining whether a summary trial (as opposed to a conventional trial) is appropriate for a particular case. The burden to show that a summary trial is appropriate, is on the moving party. Factors considered include:

• the issues are well defined;
• the facts necessary to resolve the issues are clearly set out in the evidence;
• the evidence is not controversial and there are no issues as to credibility; and
• the questions of law, though novel, can be dealt with as easily now as they would otherwise have been after a full trial;
• the amount involved and the cost of taking the case forward to a conventional trial in relation to the amount involved;
• the complexity of the matter.

Regarding the Wenzel patent case, Justice Snider said at para 38, “Patent infringement trials and issues are inherently complex, and technical. The technical nature of the ‘630 Patent requires review by expert witnesses to assist the Court in construing the patent, in addition to the fact that contradictory evidence will be presented by both the Defendants and the Plaintiffs on the subject.”

In 2015, the Federal Court of Appeal considered the appropriateness of summary proceedings in a pair of decisions issued in December. In Leo Ocean, which is referred to above, the Court reversed a trial decision which had found summary trial not appropriate. The Federal Court of Appeal held that the real issue was simply an interpretation of an agreement (in a maritime law case) and, while difficult, would raise the same issues at a summary proceeding or at trial and sent the issue back for determination. In Collins v. Canada, 2015 FCA 281, all parties appealed decisions on multiple summary trial motions in a public office misfeasance proceeding. The Court upheld all of the trial judge’s decisions that summary trials were appropriate stating at para 80, that “The existence of conflicting affidavit evidence establishes that there is disagreement among the affiants. It does not necessarily establish that any of the affiants lack credibility.”

It is important to consider that a motion for summary trial can only be brought once (except with leave of the court, Rule 213(2)) and has to be brought after a defence has been filed and before the time and place for trial has been fixed. This later requirement can be problematic if, as is the case in many intellectual property proceedings, a trial date is fixed early in the proceeding. In one of the first decisions to consider the new rules on summary proceedings, Justice Snider in Wenzel Downhole Tools Ltd. v. National-Oilwell Canada Ltd., 2010 FC 966, was critical of a party which brought a motion for summary judgment after the pre-trial conference because notice of the motion had not been raised with the court at that time, even though the moving part was technically within the rules. It is therefore worth considering raising any summary judgment or trial motions with the court and the other side early in a proceeding.

In E. Mishan & Sons, Inc. v. Supertek Canada Inc., 2014 FC 326, a proceeding I was involved in, the patentee filed for summary trial on infringement after the close of pleadings. Instead of a summary trial, the court scheduled a conventional trial on patent infringement and validity within nine months of the Statement of Claim.

On a summary judgment or summary trial motion, the motion’s judge must determine both, whether the motion is appropriate, and if so, a decision on the merits of the issue(s) raised on the motion. Justice Strickland, in 0871768 B.C. Ltd. v. Aestival (Vessel), 2014 FC 1047, considered whether a responding party could take the position at a hearing that the moving party had not met its burden on the motion but also submit that if the court found the burden was met, the respondent be permitted to file responding evidence later. Justice Strickland held that the summary proceeding was appropriate and the responding party was required to put their ‘best food forward’ pursuant to Rule 214. He granted summary judgement based only on the moving party’s evidence in favour of the moving party and refused to adjourn the hearing to permit the responding party to introduce evidence.

Perhaps because of the comments of Justice Snider, in Wenzel regarding the complexity of receiving conflicting expert opinion evidence on patent construction, prior art and infringement and Justice Teitelbaum’s earlier comments in Pallmann Maschinenfabrik G.m.b.H. Co. KG v. CAE Machinery Ltd. (1995), 62 C.P.R. (3d) 26 (F.C.T.D.) that “I am also of the opinion that, in general, summary judgment is not the proper means to obtain judgment where the issues before the court involve the infringement or the invalidity of a patent”, most contested intellectual property decisions in the Federal Court on summary trials and judgment on the merits have related to trademarks or copyright, or arise where the responding party is not participating.

Some of the copyright and trademark cases where summary judgement and summary trials were considered since the rule changes demonstrate the variety of applications of the rules:

• In Society of Composers, Authors and Music Publishers of Canada v. Maple Leaf Sports & Entertainment, 2010 FC 731, a motion for summary judgment in a copyright was filed under the previous rules but the Court considered the issues under the post-2009 rules. The Court considered the issues too factually complex to resolve in a summarily way, stating, “The motion occupied three days of argument about whether there was anything to argue about – at trial.”
• In Concept Developments Ltd. v. Webb, 2010 FC 1315, a proceeding relating to copyright in building plans, the Court dismissed a motion for summary judgment on the basis that not all the facts were before the court, there were serious issues of credibility, complex facts and no measure of damages established.
• In Louis Vuitton Malletier S.A. v. Singga Enterprises (Canada) Inc., 2011 FC 776, the respondents did not file materials or appear at the hearing and Justice Russell permitted and granted summary trial on trademark and copyright infringement, including punitive damages.
• In Tremblay v. Orio Canada Inc., 2013 FC 109, the parties jointly agreed to proceed by way of summary trial. The Justice Boivin determined authorship and assignment of copyright in a software program and infringement.
• In Harley-Davidson Motor Company Group, LLC v. Manoukian, 2013 FC 193, the court granted summary judgment for trademark infringement and damages.
• In Driving Alternative Inc v. Keyz Thankz Inc., 2014 FC 559, the respondents did not file materials. Justice Manson granted summary trial on issues of trademark infringement, likelihood of confusion, passing off and depreciation of goodwill in favour of the plaintiffs.
• In Terrace (City) v. Urban Distilleries Inc., 2014 FC 833, the Court granted summary judgment that two section 9 marks were unenforceable.
• In MC Imports Ltd. v. Afod Ltd., 2014 FC 1161, the defendant in a trademark infringement action, moved for summary trial. Justice Rennie declared the trademark invalid and issued a declaration of non-infringement along with the defendant’s costs.
• In Chanel S. de R.L. v. Kee, 2015 FC 1091 the court considered trademark infringement on the basis of summary trial. The court held that even though the defendants argued there were credibility issues, the issue could be resolved on the basis of the evidence before it.
• In Lum v. Dr. Coby Cragg Inc., 2015 FCA 293 reversing 2014 FC 1171, the trial judge and court of appeal considered the validity of the OCEAN PARK trademark on the basis of a summary trial.

There are several cases where summary judgment or summary trials have been considered in patent cases since the rule amendments, in addition to Wenzel, discussed above. In Teva, the issue on summary trial related to the effect of a corporate merger on entitlement to remedies. In Brown v. Canada, 2014 FC 831, the Court held that a summary judgment motion on the issue of whether a patent applicant was a public servant was appropriate for determination but held that whether material allegations must be willfully made to void a patent was to be determined at trial. In Delp v. Fresh Headies Internet Sales Ltd., 2011 FC 1228, the defendant sought summary judgment on the basis that promised utility was not met based on an admission obtained during discovery. Justice Barnes dismissed the motion on the basis that determining the promised utility and putting the admission in context was required and was a genuine issue for trial.Sterling Lumber Company v. Harrison, 2010 FCA 21, was a rare instance where the court granted summary judgment on issues of patent validity based on an admission during discovery of sales made prior to the relevant date that embodied the claims of the patent at issue.

Parties are already taking advantage of the amended rules for summary judgment and summary trials. As summary trials become more common, creative counsel will undoubtedly continue to expand the range of issues resolved in a summary manner, including at some point contested substantive patent issues.