(Disponible uniquement en anglais)
Crinson A.J.
Alan Macek, Bentley Gaikis, and Gabriella Levkov of DLA Piper (Canada) LLP for Canadian Energy Services L.P. (Plaintiff)
Patrick Smith, Sharn Mashiana, and Mike Myschyshyn of Seastone IP LLP for Secure Energy Services Inc. and Secure Energy (Drilling Services) Inc. (Defendants)
Canadian Energy Services L.P. v Secure Energy Services Inc., 2024 FC 1833
November 18, 2024
This decision concerned a motion by the Defendants for an order lifting the stay in the underlying patent infringement action and granting leave to serve and file a statement of defence and counterclaim.
The underlying context for the Defendants’ motion was a series of proceedings regarding a dispute over inventorship and ownership of the patent at issue. Initially, the Plaintiff had brought a patent infringement action in the Federal Court against the Defendants. However, the Defendants argued that the sole inventor of the patent at issue had learned of the claimed subject matter from another individual while both were employed at a company that was later acquired by the Defendants. The Defendants therefore argued that they were the true owners of the patent at issue by virtue of the acquisition.
This dispute over inventorship and ownership resulted in the Plaintiff bringing an action in the Alberta Court of Queen’s Bench. While those proceedings were ongoing, the present action in the Federal Court was held in abeyance pending resolution of the inventorship and ownership issues. Meanwhile, the Defendants had brought their own separate application in the Federal Court to address the issues of inventorship and ownership under section 52 of the Patent Act. The Federal Court would resolve this section 52 application in favour of the Defendants and issue a declaration that Secure Energy (Drilling Services) Inc. was the true and proper owner of the invention disclosed in the patent at issue. The Plaintiff appealed that section 52 decision and filed a notice of discontinuance with respect to this initial Federal Court action concerning patent infringement.
The Federal Court held that this notice of discontinuance had the effect of terminating all issues raised by the Plaintiff in its statement of claim. However, pursuant to Rule 402 of the Federal Courts Rules, the issue of costs was still extant. Thus, the Federal Court ordered that the stay be lifted only for the purpose of resolving the issue of costs.
Consequently, as there was no longer a statement of claim to answer by virtue of the Plaintiff’s notice of discontinuance, the Federal Court refused to grant the Defendants leave to serve and file a statement of defence and counterclaim. However, the Federal Court noted that this order would not preclude the Defendants from bringing its claim in a new and separate proceeding.
In light of this divided success, the Federal Court ordered that each party shall bear its own costs on the motion.
Prepared by Eric Li, Borden Ladner Gervais LLP