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Patents - Infringement. Proslide Technology Inc. v. Whitewater West Industries, Ltd.
In Proslide Technology Inc. v. Whitewater West Industries, Ltd. (Fed CA, 2026) the Federal Court of Appeal considered issues of 'patent infringement', here where the appeal on this issue lost:B. Infringement
[14] The Federal Court began its infringement analysis at paragraph 114 of the FC Decision by recognizing the principles that:A. A patentee enjoys the exclusive right to make, construct, use and sell the invention claimed in their patent (section 42 of the Patent Act, R.S.C. 1985, c. P-4);
B. With some exceptions not relevant here, the patentee’s exclusive right is infringed when anyone other than the patentee makes, constructs, uses or sells an article that embodies all the essential elements of the invention as claimed (Monsanto Canada Inc v. Schmeiser, 2004 SCC 34, [2004] 1 S.C.R. 902 at para. 30 (Monsanto)); and
C. The making, constructing, using or selling must occur within Canada for liability to arise under Canadian law (Hospira Healthcare Corporation v. Kennedy Trust for Rheumatology Research, 2020 FCA 30, [2020] F.C.J. No. 179, at para. 36; Domco Industries Ltd. v. Mannington Mills Inc., 1990 CanLII 13668 (F.C.A.), 29 C.P.R. (3d) 481 at 494-95 (Domco)). [15] WhiteWater’s defence on infringement was that the manufacturing of the components of its allegedly infringing products was done by third party subcontractors outside Canada. None of the products in issue was physically manufactured, assembled or used in Canada. In response, ProSlide argued that WhiteWater’s activities nevertheless infringed because virtually all design and development activities short of physical manufacture took place in Canada. As described at paragraph 118 of the FC Decision:ProSlide specifically alleges that WhiteWater (1) creates pre-contract conceptual designs to promote its products, (2) generates detailed computer-aided designs and mechanical specification drawings in Canada for each product it sells, (3) provides these designs and drawings to subcontractors, who then manufacture the impugned articles’ components outside of Canada, (4) inspects and audits the moulds and parts created by the subcontractors, (5) sends instructions for the assembly, and (6) supervises installation, among other things. [16] Based on these activities, ProSlide argued that there was infringement arising from a "“real and substantial connection to Canada”" as contemplated in Society of Composers, Authors and Music Publishers of Canada v. Canadian Assn. of Internet Providers, 2004 SCC 45, [2004] 2 S.C.R. 427 (SOCAN).
[17] The Federal Court based its conclusion that WhiteWater’s activities did not amount to infringement on this Court’s recent decision in Steelhead LNG (ASLNG) Ltd. v. Arc Resources Ltd., 2024 FCA 67 (Steelhead). At paragraph 120 of the FC Decision, the Federal Court stated as follows:The legal principles expounded by the Court of Appeal in Steelhead provide a complete answer to ProSlide’s argument as to what constitutes “use”. Where a patent claims a physical object, the patentee’s exclusive rights under section 42 of the Patent Act to “use” the invention extend only to that object. They do not also include the use of conceptual designs or drawings of that object (Steelhead at paras 70-72). ProSlide has not satisfied me that there is anything in this proceeding that would justify departing from, re-examining, or expanding on the legal principles as espoused in Steelhead. [18] The Federal Court continued by indicating that the discussion above in Steelhead concerning the use of a patented invention applies equally to making the patented invention.
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B. Infringement
[40] As stated by the Federal Court, section 42 of the Patent Act identifies the rights exclusive to a patentee, and these include making and using the claimed invention. There is no dispute that WhiteWater’s products in issue incorporate all of the essential elements of the asserted claims. There is also no dispute that it is WhiteWater’s activities in Canada that are relevant for assessing infringement. The dispute is whether WhiteWater’s activities in Canada amount to infringement.
[41] ProSlide argues that WhiteWater’s activities described at paragraph 15 above amount to making and using the claimed invention. ProSlide asserts that WhiteWater’s activities in Canada are not limited to research and development, and extend to testing, validation and detailed design of each of the many components that must be precisely manufactured and assembled to make a usable water slide as claimed. ProSlide argues that the ready availability of sophisticated modern design software and digital communications tools has changed the product development process such that some principles followed in the jurisprudence regarding the threshold for making or using an invention should be scrutinized.
[42] As support for this more flexible approach to assessing infringement, ProSlide refers to the following passage from Théberge v. Galerie d’Art du Petit Champlain inc., 2002 SCC 34, [2002] 2 S.C.R. 336 at para. 47 (Théberge):This is not to say that the Act recognizes only literal physical, mechanical reproduction. The legal concept has broadened over time to recognize what might be called metaphorical copying (transformation to another medium, e.g. books to films). It is recognized that technologies have evolved by which expression could be reproduced in ways undreamt of in earlier periods, such as evanescent and “virtual” copies in electronic formats. Transformation of an artistic work from two dimensions to three dimensions, or vice versa, will infringe copyright even though the physical reproduction of the original expression of that work has not been mechanically copied. [43] This passage concerned the issue of copyright infringement and should be approached with care when applied in the context of allegations of patent infringement. For one thing, while the Copyright Act, R.S.C., 1985, c. C-42 has indeed undergone many amendments in recent years as to what constitutes infringement, the same cannot be said of the Patent Act.
[44] ProSlide also relies on SOCAN at paragraph 58, citing Libman v. The Queen, 1985 CanLII 51 (S.C.C.), [1985] 2 S.C.R. 178, which referred to fraudulent transactions that take place "“both here and there”" (meaning within Canada and without) such that "“all that is necessary to make an offence subject to the jurisdiction of our courts is that a significant portion of the activities constituting that offence took place in Canada” "[original emphasis]. This is the basis for the "“real and substantial connection to Canada”" test that ProSlide urges this Court to adopt for assessing patent infringement.
[45] As with Théberge, SOCAN concerned copyright and should therefore be approached with care when applied in the field of patents. SOCAN concerned music downloaded in Canada from servers located abroad using the internet. In this sense, the activities in question indeed took place "“both here and there”". The activities that ProSlide argues constitute patent infringement in the present case are not analogous. Though WhiteWater’s product development activities took place in Canada and were a prerequisite to the making and using activities that ultimately took place abroad, it is not clear that any of these activities took place "“both here and there”" in the sense discussed in SOCAN. Rather, the activities that could constitute infringement (physically making, assembling and using) took place abroad, and the activities that took place in Canada did not constitute infringement.
[46] ProSlide further relies on the statement in Monsanto at paragraph 43 that patent infringement arises from "“depriving the inventor, even in part and even indirectly, of the monopoly that the law intends to be theirs: only the inventor is entitled, by virtue of the patent and as a matter of law, to the full enjoyment of the monopoly conferred”" [original emphasis]. However, this statement begs the question as to what is the "“monopoly conferred”" by a Canadian patent. As noted by the Federal Court, that monopoly is territorially limited to Canada. The jurisprudence that finds patent infringement based on activities outside Canada all have an anchor in eventual infringing activities within Canada.
[47] For example, in Beloit Canada Ltd. v. Valmet-Dominion Inc., 1997 CanLII 6342 (FCA), [1997] 3 F.C. 497, 73 C.P.R. (3d) 321, infringing paper machines were made and sold for use outside Canada, but the components thereof were made and assembled for testing in Canada prior to being disassembled for export.
[48] In Pfizer Canada Inc. v. Canada (Health), 2007 FC 898, 61 C.P.R. (4th) 137, the patented compound would be present as an intermediate in the manufacturing process abroad, and the resulting final product (which by then would be missing the patented compound) would later be sold in Canada. The Federal Court found the importation of a product made abroad using a patented compound would be an infringement of the Canadian patent under the well-known Saccharin doctrine, named after the U.K. decision in Saccharin Corp. Ltd. v. Anglo-Continental Chemical Works, Ltd (1900), 17 R.P.C. 307 (Ch.).
[49] Finally, in Bauer Hockey Corp. v. Easton Sports Canada Inc., 2010 FC 361, 83 C.P.R. (4th) 315, aff’d 2011 FCA 83, 92 C.P.R. (4th) 103, a third party involved in the conception, making and adjusting of patterns, dyes and prototypes for an infringing skate boot was found to have infringed the patent under the doctrine of inducing infringement. All of the activities of inducing infringement and of direct infringement occurred in Canada.
[50] For its part, WhiteWater cites Domco in which the absence of specific infringing acts in Canada was sufficient to avoid liability. There, the defendant acknowledged that (1) it had distributors in Canada, (2) the product was sold under its trademarks in Canada, (3) it supplied product catalogues in Canada, (4) it sold store displays to its Canadian distributors and gave them price lists, (5) it had salaried sales representatives in Canada who promoted the sale of its products in Canada, and (6) it advertised its products in magazines that circulated in Canada. However, this Court found no infringement of the Canadian patent because the products in question were sold outside Canada F.O.B. "(“free on board”" or "“freight on board”"), meaning that title therein passed prior to their importation into Canada, and hence the defendant never engaged in any infringing activities in Canada.
[51] WhiteWater also relies on this Court’s recent decision in Steelhead, as did the Federal Court at paragraph 120 of the FC Decision, for the principle that infringement of a patent by use of a claim on a physical object (as are the asserted claims here) can occur only by use of that object, and not by use of designs and drawings thereof. ProSlide attempts to distinguish Steelhead on the basis that WhiteWater’s design process in the present case was far more advanced than was the case in Steelhead. However, the principle stated therein remains applicable on the facts of this case. The asserted claims concern slide features for amusement rides, and WhiteWater’s activities in Canada did not extend to physically using the claimed slide features. The extent to which WhiteWater’s designs, drawings and testing had advanced does not alter this fact.
[52] Moreover, I agree with the Federal Court that the discussion in Steelhead concerning "“using”" a claim applies equally to "“making”". As stated in paragraph 121 of the FC Decision, "“there is no basis in law to find that generating detailed computer-aided designs and mechanical drawings in Canada is “making” the claimed invention, where the invention as claimed is for a physical object.”" Treating "“making”" differently from "“using”" could create significant uncertainty as to what product development activities would, or would not, be sufficient to constitute patent infringement. In my view, it would be for Parliament (not the courts) to move the threshold for patent infringement, as it has done for copyright infringement.
[53] I conclude that the Federal Court did not err in its analysis of the issue of infringement. Remedies for the unlicensed use of a patented invention outside Canada may be available based on corresponding patents that may be obtained in other jurisdictions. . AGI Suretrack, LLC v. Farmers Edge Inc.
In AGI Suretrack, LLC v. Farmers Edge Inc. (Fed CA, 2025) the Federal Court of Appeal dismissed an appeal from a dismissed patent infringement action:[79] Infringement of a patent claim occurs when all of its essential elements, as purposively construed, are present in an impugned entity (Free World Trust, at paras. 31(f), 68(4), 75). ... . Munchkin, Inc. v. Angelcare Canada Inc.
In Munchkin, Inc. v. Angelcare Canada Inc. (Fed CA, 2024) the Federal Court of Appeal considered Canadian 'patent infringement', and where it occurs:[72] .... It is true that, to infringe a Canadian patent, infringing activities must take place in Canada. However, a person cannot avoid liability for infringement by setting itself up outside Canada, and then making arrangements from there that result in infringement of a patent in Canada. The key is whether the infringing activities took place (they did in this case), and whether the person located outside Canada (here, Munchkin, Inc.) made itself liable therefor, either by having common cause with a Canadian actor (Munchkin Canada) or otherwise being a party to the infringement. . Google LLC v. Sonos Inc.
In Google LLC v. Sonos Inc. (Fed CA, 2024) the Federal Court of Appeal considered (and dismissed) a patent infringment claim that Google brought and lost.
Here, the court considers the SOR for patent infringement appeals:[5] Before addressing the claim construction issues raised by Google, a comment on the standard of review would be helpful. The parties agree that the applicable standard of review in the present appeals is as indicated in Housen v. Nikolaisen, 2002 SCC 33, [2002] 2 S.C.R. 235: questions of law are reviewed on a standard of correctness, and questions of fact or of mixed fact and law from which no question of law is extricable are reviewed on a standard of palpable and overriding error.
[6] The parties disagree on whether the claim construction issues are questions of law or questions of mixed fact and law. In theory, the interpretation of a patent claim, like the interpretation of a statute or a regulation, is a question of law, subject to the correctness standard: Whirlpool Corp. v. Camco Inc., 2000 SCC 67, [2000] 2 S.C.R. 1067 at paras. 61, 76 (Whirlpool). However, patent claims are interpreted from the point of view of a person skilled in the art: Whirlpool at para. 48. Expert evidence is often considered in determining how such a person would have understood certain terms in a claim at the relevant date. The weighing of this evidence is a question of mixed fact and law. Therefore, where the interpretation of a patent claim turns on the weight given to expert evidence, this Court will intervene only where there is a palpable and overriding error: Biogen Canada Inc. v. Pharmascience Inc., 2022 FCA 143, 196 C.P.R. (4th) 120 at para. 38; ABB Technology AG v. Hyundai Heavy Industries Co., Ltd., 2015 FCA 181, 132 C.P.R. (4th) 405 at paras. 22–23. . Apotex Inc. v. Janssen Inc.
In Apotex Inc. v. Janssen Inc. (Fed CA, 2023) the Federal Court of Appeal considered issues of patent infringement and inducing infringement:[13] Apotex focuses its argument on the high threshold for influence required by the second prong of the test for inducement: that the infringing act would not have occurred without the influence. This Court has equated this threshold to a sine qua non (without which not) test: MacLennan v. Produits Gilbert Inc., 2008 FCA 35, [2008] F.C.J. No. 128 at para. 38 (MacLennan). Apotex urges this Court to treat the threshold as a “but for” test, and it cites jurisprudence that calls this a causation test. I have no objection to Apotex’s characterization of the test, but I do not find it to be more helpful that the “would not have occurred without” and “sine qua non” characterizations provided in the jurisprudence of this Court. In my view, these are merely different ways of describing the same threshold.
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[23] I turn now to Apotex’s more substantive argument that the Federal Court erred in concluding that the high threshold for the second prong of the test for inducing infringement was met in this case. The main weakness of this argument is that it depends on there being a requirement that prescribing practices of physicians be altered because of Apotex’s activities. In fact, this is not necessary. What is required is that the ultimate act of direct infringement occur because of Apotex’s activities.
[24] It is important to bear in mind that the ultimate act of direct infringement in the present case could be either by a prescriber (e.g. a physician or a nurse practitioner) or by a patient: Hospira Healthcare Corporation v. Kennedy Trust for Rheumatology Research, 2020 FCA 30, [2020] F.C.J. No. 179 at para. 40, citing AB Hassle v. Genpharm Inc., 2003 FC 1443, 243 F.T.R 6 at para. 127, aff’d 2004 FCA 413, [2004] F.C.J. No. 2079. The Federal Court recognized this at paragraphs 74 and 104 of its reasons. It is also important to understand that inducing patent infringement can occur even where there is no direct contact between the inducer and the direct infringer: MacLennan at para. 43, citing Procter & Gamble Co. v. Bristol-Myers Canada Ltd., [1978] F.C.J. No. 812, 39 C.P.R. (2d) 145 at 167. Accordingly, Apotex could be found to induce infringement by a patient even if they have no direct communication.
. Apotex Inc. v. Shire LLC
In Apotex Inc. v. Shire LLC (Fed CA, 2021) the Federal Court of Appeal considered principles governing claims of patent infringement:[25] I begin with a review of a few basic principles governing patent infringement.
[26] In a patent dispute, the emphasis is on the claims as worded. While the assessment of a patent’s subject matter or utility may require a more holistic appreciation of the patent and its claims, the tests for obviousness and anticipation require a claim-by-claim analysis (AstraZeneca Canada Inc. at para. 54; Hospira at para. 71).
[27] Only if every claim in a patent is invalid will the entire patent be invalid. If an independent claim is declared invalid, section 58 of the Patent Act allows for the examination of dependent claims in order to determine if their additional elements rectify the deficiencies in the independent claim. If so, the dependent claim remains valid despite the independent claim’s invalidity (AstraZeneca Canada Inc. at para. 46; Zero Spill Systems (Int’l) Inc. v. Heide, 2015 FCA 115 at para. 94 (Zero Spill Systems); Safe Gaming System v. Atlantic Lottery Corporation, 2018 FC 542 at para. 159; Seedlings Life Science Ventures, LLC v. Pfizer Canada ULC, 2020 FC 1 at para. 71). . Apotex Inc. v. Janssen Inc.
In Apotex Inc. v. Janssen Inc. (Fed CA, 2021) the Federal Court of Appeal cites the legal test for inducing infringment of a patent:[53] As indicated above, the parties agree that the applicable legal test for inducing infringement is found in Corlac Inc. v. Weatherford Canada Inc., 2011 FCA 228, 204 A.C.W.S. (3d) 888 at para. 162:[…] A determination of inducement requires the application of a three-prong test. First, the act of infringement must have been completed by the direct infringer. Second, the completion of the acts of infringement must be influenced by the acts of the alleged inducer to the point that, without the influence, direct infringement would not take place. Third, the influence must knowingly be exercised by the inducer, that is, the inducer knows that this influence will result in the completion of the act of infringement … . McCain Foods Limited v. J.R. Simplot Company
In McCain Foods Limited v. J.R. Simplot Company (Fed CA, 2021) the Federal Court of Appeal considers the elements and nature of a patent infringement claim:[68] The three requirements for inducing patent infringement are well known. Per Hospira 2020 at para. 38, quoting from Corlac Inc. v. Weatherford Canada Inc., 2011 FCA 228, 95 C.P.R. (4th) 101 at para. 162:First, the act of infringement must have been completed by the direct infringer. Second, the completion of the acts of infringement must be influenced by the acts of the alleged inducer to the point that, without the influence, direct infringement would not take place. Third, the influence must knowingly be exercised by the inducer, that is, the inducer knows that this influence will result in the completion of the act of infringement […]. ....
[76] It is true that the Patent Act does not define infringement, but it does define the exclusive rights that a patent provides (see section 42), and jurisprudence has developed a definition of infringement based on interference with those exclusive rights (Monsanto Canada Inc. v. Schmeiser, 2004 SCC 34, [2004] 1 S.C.R. 902 at para. 34). More importantly, the Patent Act defines in section 55 those to whom an infringer may be liable. In my view, no other provision of the Patent Act can support a claim of standing to sue for patent infringement (Signalisation de Montréal Inc. v. Services de Béton Universels Ltée, 1992 CanLII 2427 (FCA), [1993] 1 F.C. 341, 46 C.P.R. (3d) 199 (F.C.A.) at para. 3 (Signalisation)), or inducing patent infringement.
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