Three years ago, the Federal Court announced a plan to try to schedule trials within two years of the commencement of the proceeding. Since that time, many new patent cases have been commenced and some trials have been scheduled and heard. Has the court met its goals for patent infringement actions?

In Canada, most patent litigation takes place in the Federal Court. As with most courts, the Federal Court seeks to balance its limited resources with ensuring access to timely justice. To achieve its goal of scheduling trials within two years, the Court has implemented several measures.

The changes that were made meant that both the judiciary and parties to litigation have to modify their practices and in some cases long-standing approaches to litigation. As noted in one decision, litigants could no longer expect cases to “creep along”. As Justice Snider wrote in another decision, “it is not realistic, practical or reasonable to merely shorten the time between the filing of a statement of claim and the start of the trial if the parties and their counsel do not also adapt their litigation practice and strategies to the shorter time frames.”

Rule Changes

Rule changes to allow for Summary Judgment (Rule 215) and Summary Trials (Rule 216) were registered in December 2009. So far only a couple of proceedings have taken advantage of these new procedures—a trade-mark counterfeiting case (Louis Vuitton Malletier SA v. Singga Enterprises (Canada) Inc, 2011 FC 776) and a damages proceeding under Section 8 of the PM(NOC) Regulations (Teva Canada Ltd. v Wyeth LLC, 2011 FC 1169).

There were also rule changes to allow more flexibility with expert witnesses, especially in patent proceedings to reduce the “length of proceedings”. It is unclear what effect these rules on experts have had on proceedings so far.

Case Management

The Court announced it would allow case management to be requested by way of letter early in the proceeding so that a case manager can assist early in the process. Prothonotaries, who are typically appointed as case managers, are given significant deference to manage proceedings.

In the two years prior to the 2009 announcement to streamline litigation, the first mention of case management in the court docket for patent infringement actions took place on average approximately 11 months after an action was started. In the two years following the announcement, the first mention of case management took place about 4 months earlier at approximately 7 months.

Early Trial Dates

The court is also trying to schedule trial dates earlier in the proceeding, often prior to pre-trial conferences. The parties and the case manager may try to identify a point when most of the issues are identified and the time needed for discovery, expert reports and other pre-trial steps are clarified before a trial date being scheduled. Justice Harrington wrote in 2007 that:

The general principle under rule 3 is that the rules are to be interpreted and applied so as to secure the just, most expeditious and least expensive determination of every proceeding on its merits. The Court has control over its own process and may, in appropriate circumstances, vary a rule or dispense with compliance. It is certainly not unheard of , especially in case management, for the Court to fix trial dates before pleadings are closed, and before examinations for discovery are complete.

According to the most recent Federal Court public schedule, there are trial schedules as far into the future as September 2014.

In spite of these pressures, the length of time parties have to wait to be allocated a trial date is getting shorter. Often, having a fixed trial date encourages parties to work towards that date and reduces ‘slippage’ in schedules. In 2009, trial dates were allocated on average about 5.4 years after a proceeding had been started. By 2011, trial dates were being allocated approximately 2.5 years after the Statement of Claim was filed.

Even though trial dates were being allocated earlier in proceedings, the start dates of the trials were still on average about four years after the Statement of Claim.  Often proceedings are settled or discontinued prior to trial and only about 15 patent infringement cases went to trial in 2009 to 2011.

While Rule 263 contemplates that the scheduling of the trial will be discussed at the Pre-Trial Conference, these trends suggest that Prothonotaries and the Chief Justice are often scheduling trials prior to a pre-trial conference.

Perhaps because of the early scheduling of trial dates, the Court often has to cancel or re-schedule many patent trials. Hopefully, the Federal Court and parties can take advantage of the cancelled dates.

Justice Snider noted after the perindopril patent infringement action was heard two years after the Statement of Claim that “[a]rguably, the time requirements for a path to trial that took four years and one that took less than two years are the same; the difference is that the same volume of work must be carried out in half the time” (2008 FC 1070).

Future

While ordering that a trial date be given up, Justice Hughes identified the pressure the court is under to identify early trial dates for parties (in 2011 FC 1442 at para 4):

A second reason respecting the trial date is that consideration must be given to the pressures on this Court to find trial dates for other litigants in other cases. Even now, some litigants are not expecting trial dates until 2015.

The Federal Court has also recognized that much of the day-to-day case management falls to Prothonotaries. The Court currently has six Prothonotaries but does not necessarily have long term funding for those positions. Also, in the past year, the Court has had to reduce its use of deputy judges as result of the Felipa decision.

Conclusion

The above analysis focuses on patent infringement actions but it should be recognized that the Federal Court handles a diverse set of proceedings each with their own demands ranging from immigration matters, tax, maritime, as well as other areas of intellectual property including PM(NOC) prohibition proceedings.

The Federal Court has taken significant steps to reduce the backlog of cases and move case towards resolution. The improvements that can be made pre-trial now appear to be limited by the availability of judges to hear trials.

 

Alan Macek is an associate at Dimock Stratton LLP and publishes a blog and daily email on developments in intellectual property law in Canada at IPPractice.ca.