Court Refuses Motion for Extension of Time Pending Re-Examination
Prenbec Equipment Inv. v. Timberblade Inc. 2009 FC 584 (Aalto, P.)

June 3, 2009

François Guay for the Plaintiffs,  Prenbec Equipment Inc. (“Prenbec”) and Quadco Equipment Inc.
John Koch and Athar Malik for the Defendant, Timberblade Inc. (“Timeberblade”)

Prenbec commenced an action alleging patent infringement. Timberblade defended and counterclaimed on the basis of invalidity. Timberblade filed a Re-examination Request with the Patent Office with respect to the impugned patent. Timberblade now sought a schedule for the action that suspended all deadlines pending further action by the Re-examination Board. The proposed timetable would require no further steps be taken in the proceeding until after the final determination of the Re-examination Board or Notice from the Re-examination Board that the request for re-examination was denied. The motion denied was denied with costs.

The Court noted that Timberblade was essentially seeking a stay of the proceeding pending the outcome of the re-examination process. The Court rejected this motion on a number of bases, including that the patent had already been the subject of two lawsuits, which had alleged invalidity but which had not been demonstrated. Further, the Court noted that the Re-examination Board does not review credibility of witnesses and therefore the scope of the within action was wider than that of the re-examination process. The Court noted that Timberblade had not demonstrated any prejudice if the action was to proceed, and that any prejudice could be compensated for in costs if ultimately successful in the action. Finally, the Court noted that, if either a stay was granted or a timetable approved which effectively amounted to a stay pending the outcome of the re-examination process, parties may use the re-examination process as a means of delaying infringement actions.

By: Chantal Saunders, Gowling Lafleur Henderson LLP