Federal Court of Canada – Summary Judgment and Trial Guidelines

Via email: caroline.perrier@cas-satj.gc.ca

The Honourable Justice Angela Furlanetto
Chair, Federal Court Intellectual Property Users Committee
c/o Caroline Perrier, Legal Counsel
Federal Court
180 Queen St. W.
Toronto ON M5V 3L6

Dear Justice Furlanetto:

Re: Federal Court of Canada –Summary Judgment and Trial Guidelines

I write on behalf of the Intellectual Property Section of the Canadian Bar Association (the CBA Section), in response to the Federal Court seeking feedback from the intellectual property bar about the scope and content of the upcoming practice guideline on summary judgment and summary trial.

CBA is a national association of over 40,000 lawyers, law students, notaries and academics, and our mandate includes seeking improvement in the law and the administration of justice. The CBA Section deals with law and practice relating to all forms of ownership, licensing, transfer and protection of intellectual property and related property rights, including patents, trademarks, copyright, industrial designs, plant breeders' rights, as well as trade secrets.

We agree that a practice guideline on summary judgment and summary trial would be beneficial to parties and the profession, supplementing the existing rules governing these procedures. We, and our clients, value the ability to narrow the issues in a proceeding before trial and consider the summary procedures as valuable tools for streamlining procedures and promoting the efficient use of both party and judicial resources.

1. The guidelines would be helpful if they assist parties to reduce the risk of choosing only one of summary judgment or summary trial
   • The Federal Courts Rules (Rules) currently address summary judgment and summary trial together.
   • Under the Rules, parties must pursue summary trial and summary judgment together, in particular, Rules 213(2)(which precludes a second motion without leave of the Court) and 215(3) (which allows a judge on summary judgment, to determine an issue by way of summary trial). Pursuing summary trial and summary judgment together prevents a party from losing the opportunity to request the other summary procedure later if one is denied. For example, if a motion for summary judgment is refused, the litigant may no longer be able to seek a summary trial if it is not included in the motion for summary judgment. At the very least, a motion for summary trial must be framed as alternative relief—which begs the question as to how to generate a record so that alternative relief is available. To avoid being left without a chance, a party might move for summary judgment and/or summary trial at the same time rather than risk losing both options later.
   • The CBA Section recognizes that motions for summary judgment and summary trial involve different evidentiary requirements and legal tests. Preparing both types of motions simultaneously within a single motion is inefficient and onerous.
   • The guidelines should provide more explicit guidance on reducing the risk that may arise when parties move on only one of summary judgment or summary trial. This may be achieved, for example, by suggesting that the moving party includes a request for leave to bring a further motion for either summary judgment or summary trial under Rule 213(2), with the understanding that the Court may grant such leave in appropriate circumstances. Alternatively, this can also be achieved by modifying Rule 213(2), e.g., to permit a motion for either summary judgment or summary trial and a subsequent motion for the other summary proceeding without requiring leave.
2. The guidelines would be helpful if they provided direction on selecting between summary judgment and summary trial, and on notice and scheduling procedures.
   • The CBA Section welcomes any direction or guidance from the Court to select between summary judgment and summary trial. The IP bar has a strong interest in ensuring that the correct type of motion is brought at the correct time, with a concrete process for providing notice of the motion to the Court and managing scheduling of the motion—all the while minimizing the waste of judicial resources, delay, and unnecessary costs.
   • The guidelines can provide direction by listing indicia identifying cases suitable for summary judgment or summary trial. This could include identifying a threshold or categorical issues that indicate which procedure is more appropriate, assisting a party’s assessment of its proceeding before bringing any particular motion. For example, the practice guideline could indicate that, in general, summary judgment is appropriate for pure questions of law, while any proceedings with factual or credibility issues are more appropriate for summary trial.
   • Coupled with the Court’s case management powers, this can be a powerful tool to encourage motions that lead to efficiencies and weed out motions likely to be a waste of time.
   • Clear procedures to seek direction or assistance from the Court about the notice of and scheduling of a motion for summary judgment or summary trial, including guidance on selecting the appropriate motion, would assist the CBA Section and the Court in effectively and efficiently managing the proceedings. For example:
     • Case/Trial Management. The Court can provide specific guidance to parties in a proceeding through the case management or trial management function. For instance, the IP bar welcomes a clear and concrete process to notify the Court of a planned motion for summary judgment or summary trial and to understand the Court’s approach to scheduling the steps involved.
       • For any planned motion, the parties can prepare a notice of motion and seek a case management conference to obtain the Court’s guidance to manage the scheduling of the steps in the motion.
       • In a situation where a Case Management Judge intends to decline scheduling a motion for summary judgment or summary trial once a party raises its intention to bring motion for summary judgment or summary trial, it would be highly beneficial for the parties to receive a clear explanation of the Case Management Judge’s decision.
     • With respect to the selection between summary judgment and summary trial, the parties can jointly agree on which motion is appropriate and bring the proposal to the Court. In the event of disagreement between the parties, the Case Management Judge can provide this type of guidance through their existing broad powers under Rule 385.
     • When a case is not case-managed, and there is disagreement between the parties as to the timing of such a motion and/or whether a summary judgment or summary trial motion is appropriate, the CBA Section would welcome a process to discuss with the Court a planned motion for summary judgment or summary trial, allowing the Court to offer guidance or mediate the selection of the appropriate motion, setting down the motion, and scheduling its steps to ensure that one party cannot hold up the case.
     • “Meta motion”. In certain provincial courts (e.g., British Columbia and Ontario), it is possible to seek the Court’s guidance through a “meta motion”, in which the Court determines a direction on applicable law, rules of procedure, and the suitability of proposed steps in the proceeding. The Court can provide specific guidance to a party seeking summary judgment or summary trial through a similar “meta motion” process, including guidance on which motion is more appropriate. Currently, this Court’s jurisprudence needs to be reconsidered: see ViiV Healthcare Co. v Gilead Sciences Canada, Inc.,¹; Wenzel Downhole Tools Ltd v National-Oilwell Canada Ltd². In short, under case management, a broad discretion should be afforded to Case Management Judges to control their processes
     • Amendment to Trial Management guidelines. Any motion for summary judgment or summary trial must be brought before the time and place for trial has been fixed. To maximize the efficiency of summary procedures and manage resources effectively, both parties and the Court would benefit from knowing whether any summary procedure will be pursued before moving into the trial preparation and trial management phase. The Trial Management guidelines could incorporate a trial management step in which the parties are directed to consult with the Case Management Judge on potential summary procedure before proceeding with the trial management steps and to allow for the scheduling of any such summary motion.
3. The guidelines would be beneficial if they provided a clear process for continuing into a trial or summary trial after a motion for summary judgment
   • Rule 215 permits the Court to order an alternative summary process if a motion for summary judgment is not entirely successful. For example, the Court can order a trial of the amount the moving party is entitled to (Rule 215(2)(a)) or determine a genuine issue of fact or law by way of summary trial and make any order necessary for the conduct of the summary trial (Rule 215(3)(a)).
   • The guidelines can assist the parties and the CBA Section by providing a framework or structured procedure to proceed into a trial on a specific issue, or a summary trial, after a motion for summary judgment is not entirely successful.
     • For example, a trial management conference could be scheduled promptly, involving the Trial Judge. The purpose would be to:
       • Confirm the issues remaining for trial or summary trial; and
       • Establish a schedule for the steps required for the next phase of the proceeding.
   • However, it remains important to ensure the alternative summary process offers a streamlined and efficient option over simply proceeding to trial. It would be beneficial to receive guidance from the Court about how evidence or findings from a previous summary judgment might be used in a subsequent summary trial or trial.
4. The guidelines would be helpful if they provided guidance on the burden of proof for summary trial where the moving party is a defendant
   • There is significant uncertainty regarding which party bears the burden on the merits when a defendant moves for summary trial. See e.g., the Court’s comments in Enigmatus, S.R.O. v Playtika Ltd.^3] on “competing” lines of cases, including ViiV Healthcare Company v Gilead Sciences Canada, Inc,⁴ and Mud Engineering Inc v Secure Energy (Drilling Services) Inc,⁵ compared to Steelhead LNG (ASLNG) Ltd v ARC Resources Ltd,⁶ , Janssen Inc v Pharmascience Inc,⁷, and Janssen Inc v Apotex Inc⁸).
   • The uncertainty presents a significant barrier for the CBA Section when advising defendant clients on whether to seek a summary trial, particularly in cases that appear to be more suitable for a summary trial rather than summary judgment or a full trial, and practically where the client cannot bear the elevated risk of further costs and delays from an appeal based on these “competing” lines of cases.
   • The CBA Section would welcome any guidance the Court can provide to assist in navigating the question of burden on summary trial and advising clients on summary procedures.
5. The guidelines would be helpful if they indicated whether the Court plans to entertain any Markman-type summary procedure
   • While the Court’s older case law indicates that it is resistant to a Markman-type summary process to decide claim construction at an earlier stage of a patent proceeding (see e.g., the Court’s comments at paragraph 47 of Merck & Co., Inc. v. Pharmascience Inc.⁹) given the trend toward increased use of summary procedure, as directed by the Supreme Court of Canada in Hryniak v Mauldin,¹⁰, the CBA Section would welcome any information from the Court on whether it plans to entertain any Markman-type summary process on claim construction and any special considerations that would affect those proceedings (e.g., the Court’s expectations around expert evidence).
   • The CBA Section recognizes that the role of evidence in claim construction complicates the ability to treat that as a matter purely for summary judgment. However, if offered a clear process, the CBA Section and parties can consider it as an option to streamline and advance the proceeding efficiently. In addition, it is important to receive guidance about the procedure to appeal any summary decision on claim construction and the anticipated timelines for any appeal. The benefit of summary claim construction procedure would be reduced if an appeal could not be rendered quickly.
   • If the Court is prepared to entertain such proceedings, we recommend that they remain an optional procedure to be initiated by the parties in appropriate cases, with guidance from the Trial Judge.

It is important to maintain a focus on efficiency and proportionality in accordance with Rule 3 in adopting any Markman-type summary process.

Conclusion

Thank you for the opportunity to offer early input on the crafting of a practice guideline on summary judgment and summary trial. We welcome the opportunity to review a draft practice guideline once available and to offer specific feedback. If the Court considers amendments to the summary judgment or summary trial rules, we would be glad to contribute additional input to assist.

Best regards,

(original letter signed by Julie Terrien for Charlotte McDonald)

Charlotte McDonald
Chair, Intellectual Property Section