(Disponible uniquement en anglais)
LeBlanc J.A.
Simon Lin of Evolink Law Group and Sébastien A. Paquette of Services Juridiques SP Inc. for Seismotech IP Holdings Inc. and Seismotech Safety Systems Inc. (Appellants)
William Regan and Evan Reinblatt of Piasetzki Nenniger Kvas LLP for Ecobee Technologies ULC (Respondent)
Richard Lizius and Kendra Levasseur of McCarthy Tétrault LLP for Apple Canada Inc. and Apple Inc. (Respondents)
Seismotech IP Holdings Inc. v Ecobee Technologies ULC, 2024 FCA 205
December 2, 2024
This is an appeal from an order of Grammond J. dismissing the Appellants’ motion for a Norwich order which was brought in relation to two actions brought by the Appellants against unidentified consumers who purchased smart thermostats which the Appellants argue infringe their patents. Among the manufacturers is Ecobee Technologies ULC, who was granted party status as a defendant by the FCA.
The Norwich order would have required non-party respondents Apple Inc. and Apple Canada Inc. to disclose the names and contact information of the consumers who had downloaded the app that connects to the thermostats. Grammond J. dismissed the motion for a Norwich order on the ground that the Appellants failed to show a bona fide claim against the unidentified consumers. Additionally, he stated that granting the motion would not be in the public interest. The Appellants appealed, arguing that Grammond J. erred by elevating the bona fide threshold to one of a prima facie threshold and extending the public interest factor.
With regards to the bone fide criteria, the FCA rejected the Appellants’ arguments that the motion Judge had incorrectly applied a prima facie threshold. The FCA found that the motions Judge was aware the bona fide criteria did not require a plaintiff to show that the claim is likely to succeed, but only some minimal analysis of the merits of the claim. Accordingly, the appeal court held that Grammond J. applied the proper burden contained in the bona fide criteria and therefore, did not commit a palpable and overriding error in this respect.
Regarding the public interest criterion, the motions Judge found that granting the Norwich order would go against public interest as it would deprive the unidentified consumer defendants from meaningful access to justice given the complexity associated with defending patent infringement actions. The Appellants argue that the motions Judge erred in extending the public interest, contending that this criterion only consists of balancing two factors: public interest in ensuring intellectual property rights owners can statutorily enforce their rights and the privacy interests of the alleged infringers. The FCA found no error in law in the motion Judge’s approach to this element of the test for obtaining a Norwich order, relying on various cases which showcase that non-privacy concerns are within the ambit of the public interest criterion.
Accordingly, the FCA found no palpable and overriding error in the Grammond J.’s findings and dismissed the appeal.
Prepared by Sandi Gendi, Borden Ladner Gervais LLP