Stay of Patent Re-examination Pending Litigation in Federal Court
Prenbec Equipment Inc. and Quadco Equipment Inc. v. Timberblade Inc., 2010 FC 23 (de Montigny, J.)
 
January 8, 2010

François Guay for the Plaintiffs, Prenbec Equipment Inc. and Quadco Equipment Inc.
John Koch for the Defendant, Timberblade Inc.

This was a motion by the Plaintiffs for an order staying proceedings before a patent re-examination board pending parallel litigation in the Federal Court.

The day before filing its Defence and Counterclaim in response to a patent infringement action, the Defendant filed a request with the patent office for re-examination of the patent.  Both the re-examination request and the Defence and Counterclaim raised the same prior art and grounds of invalidity.

Justice de Montigny granted the stay of proceedings.  The date of invention is a critical element in the Defendant’s invalidity argument before both the court and the re-examination board.  The parties’ evidence on that issue is based on testimony but there is no opportunity to cross-examine a witness before the re-examination board, as there is before the trial judge.  Justice de Montigny was concerned that the Defendant was trying to shield its evidence from cross-examination by having it dealt with by the re-examination board before a trial could take place.

Justice de Montigny found that the Plaintiffs would suffer irreparable harm if the re-examination were to proceed and conclude before the trial. Although re-examination is designed as a speedy alternative to litigation, the Plaintiffs had seized the court of the issue long before re-examination was requested, so it was not a genuine alternative in this case.

By:  Greg Moore, Goudreau Gage Dubuc LLP