At the Supreme Court of Canada, Google Inc. will be searching for a more favourable ruling than it got at the Court of Appeal for British Columbia in The appeal stems from the BC Supreme Court’s granting of an requiring Google to de-index certain websites from its search results. Google applied for to the Supreme Court on September 10, 2015 after the BC court dismissed Google’s appeal in June.

The BC Decisions

BC Supreme Court Justice Lauri Ann Fenlon sided with Equustek Solutions Inc. in the original 2014 decision in , issuing an injunction requiring Google to de-index Morgan Jack’s Datalink Technologies Gateways Inc. and Datalink Technologies Gateways LLC websites. Datalink had formerly been a distributor of Equustek’s industrial network hardware, but had relabelled Equustek’s products to sell as its own and had built and marketed online a competing product using illegally-obtained Equustek designs.

Google was not a party to the original action, and complied with the plaintiff’s request to voluntarily de-index 345 URLs associated with Jack’s now-virtual company (only on google.ca). However, Google did refuse to de-index the so-called “mother sites” or entire categories of URLs associated with the company. The plaintiffs that this was insufficient and that it led to an unsuccessful game of “whack-a-mole” wherein the defendants listed their product at new URLs faster than Google could de-index them. As a result, Equustek applied for and was granted the injunction requiring much more extensive de-indexing

(Google) Mapping Jurisdiction

While Google was not a party to the initial litigation, it launched the appeal to the Court of Appeal to contend that the extraterritorial interlocutory injunction granted by the lower court over-extended the court’s jurisdiction. Indeed, the issue of territorial competence was central to the appeal (which also included concerns of comity and freedom of expression). The parties agreed that the jurisdiction of the BC Supreme Court lay in s.3(e) of the which requires a real and substantial connection between British Columbia and the facts of the case.

Finding for the respondents, Justice Groberman stated (at paragraph 41), “The most important facts on which the injunction application is based–facts concerning the violation of trade secrets and of intellectual property rights–have a strong connection to the Province.”

Justice Groberman went on to hold that the Supreme Court Justice was correct in finding in personam jurisdiction over Google based on Google’s “doing business” in BC. The judge found Google’s active search function, advertising, and data collection (“Googlebot”) sufficient. By finding territorial competence over Google, the court is effectively allowing for more expansive powers to be exercised extraterritorially over Google.

Censorship or Justice?

Google unsurprisingly raises concerns at the breadth and implications of the BC courts’ findings of jurisdiction, but Justice Groberman is manifestly unsympathetic. According to the court, Google’s fears of being open to restrictive orders from other states’ courts (friendly or otherwise) derive from “the world-wide nature of Google’s business and not any defect in the law.”

It is probably true that de-indexing on the scale of “mother sites”, rather than mere URLs, is more effective as a remedy than playing “whack-a-mole” to fend off a virtual company’s infringement of (your) products. Nevertheless, it is hard to imagine that if the Supreme Court of Canada upholds the BC courts’ jurisdiction over an enormous global search engine – with a desktop search engine market share of nearly – it will not cause the floodgates to open for (at least attempts at) extraterritorial motions to be brought against Google and other similar companies. The question is, can motions such as this be limited in scope to dealing with internet links to companies that break the law, or will the decision be a precedent for more aggressive restrictions in other jurisdictions? Clearly appropriation of trade secrets is a crime, but in many places, so are much less clear-cut issues.

Google is by no means the only company with paid local advertising, active search functions, or data collection abilities. Nor is it the only site capable of listing links to potentially illegal activities. An action like this one is not limited to Google, and it is not limited to being issued by Canadian courts. As such, the decision raises fears in some corners that a door has been opened for courts to regulate speech outside their jurisdiction. As the (EFF) submitted in their , the injunction would likely infringe on the American constitutional right to free speech (which includes internet search results).

According to the EFF, the ruling “ The BC courts were not unaware of the issue, but relied on the limited temporal nature and ability to vary interlocutory orders as a safeguard to free speech. It will be up to the Supreme Court, if it chooses to back the lower courts, to emphasize the scope and limitations of such orders, especially when they concern extraterritorial requirements. It remains to be seen, then, if fighting counterfeit GW1000 networking devices opens the door to greater judicial control over the internet.

Sebastian Beck-Watt is an IPilogue Editor and a JD Candidate at Osgoode Hall Law School

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is a topical ophthalmic product used to treat intraocular pressure for people suffering from chronic glaucoma and has been patented (hereafter “’764 patent”) by Allergan since April 2003 (granted October 2005).�� A generic version, developed by Apotex (known as APO-BRIMONIDINE-TIMOP), could only receive a NOC from the Minister of Health before April 2023 if Apotex could invalidate the ‘764 patent.�� A finding by Justice Hughes that the ‘764 patent was obvious (and therefore invalid) conflicted with the final order Apotex from obtaining the NOC for their product.

The ruling, according to Justice Hughes, was made in order to preserve comity.�� There was a in the federal court where a different generic competitor (Sandoz) also attempted to invalidate the ‘764 patent on the basis of obviousness, and lost.�� Justice Crampton, in making that decision, relied on expert testimony to come to the conclusion that the ‘764 patent was not obvious.�� In the current decision, Justice Hughes, relying on different expert witnesses who represented Apotex and slightly different testimony by Allergan’s expert, decided that the ‘764 patent was obvious.�� Justice Hughes recognized the similarity between the two cases and the fact that both judges were relying on similar evidence to reach their conclusions.

“Is the evidence and argument before me “different” from or “better” than the evidence and argument before Crampton J in Sandoz? There is no real way to measure “different” or “better”. The evidence and argument is of the same kind. In some cases evidence and argument is more one of quality to the best that can be discerned from the record that I have, and this Court not having the record as to what was before Crampton J” (at ).

In order to acknowledge this difficulty in the law, Justice Hughes was forced to admit that he might not be in the best position to rule on the obviousness of the ‘764 patent and left the matter for an appellate court. ��“The only practical way to get the matter before the Court of Appeal is for me to grant the Order for prohibition in the likely expectation that Apotex will appeal” said , which explains his order for prohibition. ��At the same time however, Justice Hughes stated his own conclusion that the ‘764 patent was obvious in order to demonstrate to an appeal court that he had reached a separate and opposite conclusion to that of Justice Crampton.�� Given the fact that both judges were relying heavily on expert testimony, Justice Hughes correctly identified the real possibility of conflicting judgments within the same level of court, despite having nearly identical facts and arguments.

When it comes to patent law, judges rely on being able to access expert witnesses that can explain the current state of the art and whether or not a current patent was obvious to those skilled in the art.�� Judges simply do not have the technical skill for coming to their own conclusions about obviousness. ��Therefore, these findings of obviousness are mainly based on the expert evidence that is before a judge.�� It follows that, given different evidence of a similar kind, judges from the same level of court might reasonably disagree on the findings of obviousness depending solely on the type of expert evidence they hear. ��Justice Hughes finds that result unacceptable and therefore deferred the matter to a higher court.

By making the judgment that he did, Justice Hughes has created an opportunity for a higher level court to make the final decision regarding obviousness, while at the same time expressing his own opinion on the evidence and giving deference to comity.�� Since he prohibited Apotex from obtaining the necessary NOC for their product, he anticipates an appeal might give Apotex the result he feels they deserve, and also allow the court to offer guidance regarding similar NOC proceedings.�� It was a practical if somewhat confusing way to address the problems in this case and I commend him for it.

��

Adam Stevenson is a��JD Candidate at Western University faculty of law

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