Federal Appeal


Intellectual Property

Patents

Miscellaneous

Six-year limitation period could not be applied to all acts of infringements

Limitation period. Respondent AC Inc. claimed interest in 693 Patent. 693 Patent was issued on December 3, 1991, thus was subject to application of old Patent Act, which did not have specific section dealing with limitation period applicable to infringement actions. Since 1993, in current version of Patent Act, s. 55.01 provides that six-year time limitation applies to acts of infringement. AC Inc. brought infringement action against appellant A Inc. Federal Court found that five claims, including Claim 1, were valid and had been infringed by A Inc. Federal Court concluded that since 2004, and up to expiration of 693 Patent in 2008, A Inc. directly infringed 693 Patent by making and selling its product in Canada and induced infringement by its customers and by end-users throughout Canada. Federal Court held that six-year limitation applied to all acts of infringements by A Inc. A Inc. challenged time limitation applicable to certain products that were made, sold and delivered in Ontario and to which, in its view, two-year limitation should apply. It also contested that exportation of infringing products meant that six-year limitation applied. Appeal allowed in part. Judgment varied. If Federal Court’s conclusion was based on its reading that words “a cause of action arising otherwise than in a province” in s. 39(2) of Act as though they said “all causes of action, any of which arose otherwise than in a single province”, Federal Court erred in its interpretation. Indeed, having regard to text of s. 39(1) of Act and to provincial jurisdiction over property and civil rights and that each act of infringement constituted distinct cause of action, such interpretation was unreasonable. Where law is set out in statute, court must articulate law as it is defined in that statute. Here, statute requires inquiry into place where each cause of action arose. For purposes of limitation analysis, critical fact was that, following jurisprudence of this Court, cause of action arises in province if all elements of cause of action occur in that province. Hence provincial limitation period would apply to acts of infringement limited to single province. Federal Court could not simply apply six-year limitation set out in s. 39(2) to all infringing activities of A Inc. To that extent, Federal Court’s judgement had to be modified to reflect possibility that some transactions would be subject to applicable provincial limitation period. Decision as to how that determination should be done was best left to Federal Court.

Apotex Inc. v. AstraZeneca Canada Inc. (2017), 2017 CarswellNat 40, 2017 FCA 9, J.D. Pelletier J.A., Johanne Gauthier J.A., and A.F. Scott J.A. (F.C.A.); varied (2015), 2015 CarswellNat 2415, 2015 CarswellNat 5054, 2015 FC 671, 2015 CF 671, R.L. Barnes J. (F.C.).

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