Federal Court

Intellectual Property


Actions for infringement

Prothonotary correctly considered counterclaim separately from statement of defence

Plaintiff commenced action for patent infringement. In responding to plaintiff’s claim, defendant asserted that its product did not infringe patent in dispute and that it was rightful owner of patent, having been assigned all rights of invention claimed in patent pursuant to series of agreements with inventors. On motion by plaintiff to strike portions of amended statement of defence and counterclaim, prothonotary found essential nature of action was patent dispute. Prothonotary found contractual issues raised in defence were advanced as shield against claim of patent infringement and were within Federal Court’s jurisdiction. Prothonotary further found that essential nature of defendant’s counterclaim was not patent infringement but rather contractual claim for declaration that defendant was owner of patent, which was beyond jurisdiction of Federal Court. Prothonotary refused to strike struck portions of amended defence and struck portions of counterclaim. Both parties appealed. Appeals dismissed. Defendant’s plea of non-infringement, including reference to the agreements as support for defence of non-infringement, was within jurisdiction of Federal Court. Prothonotary did not err in differentiating between ownership allegations contained in defence and those asserted in counterclaim. Prothonotary correctly considered counterclaim separately from statement of defence and did not err in finding defendant failed to establish irreparable harm if required to pursue contract claim in another court. There were no palpable and overriding errors.

Farmobile, LLC v. Farmers Edge Inc. (2018), 2018 CarswellNat 8484, 2018 CarswellNat 8485, 2018 FC 1269, 2018 CF 1269, Anne L. Mactavish J. (F.C.).

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