Anita Gogia is an IPilogue Writer and a 2L JD Candidate at Osgoode Hall Law School.

Pessimism is to innovative culture as heat is to ice. It slowly destroys but can be remedied by its polar opposite. On April 28, Halimah DeLaine Prado, the general counsel at Google, wrote about her optimism for innovative culture in an online post. She outlined reforms and recommendations that .

Google’s contribution to the US patent system

Healthy patent systems can sometimes be as a way to incentivize creative inventions, encourage building on existing ideas, and avoid frivolous litigation. Google has created a space that incentivizes innovation by being one of the first companies to . Google has invested in patenting and licensing their engineers’ inventions (), and has sold patents to smaller companies to help strengthen their portfolios. Google also helped the License on Transfer Network. This Network protects members from patent trolls’ claims, these ‘patent trolls’ are described as companies that bring patent claims for profit and to supress competition.

Concern with the US patent system

Patent litigation has been on the , with 46% more patent litigation lawsuits in 2021 than in 2018.

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Patent trolls and opportunistic companies, as DeLaine Prado describes, weaponize patents against competitors which deters innovation and harms the quality of new products. Most notably, says the American “prized ‘culture of innovation’ is being undermined by a ‘culture of litigation.’” ��Such litigation wastes court resources and are a shakedown tactic or to “stretch patents beyond recognition.” Resources spent on wasteful litigation is better used in research and development for new products. In contrast, Google has a history of confronting overreaching patent claims and defending their users and products. Smaller companies “nascent technologies” are unable to fight these lawsuits without raising costs for consumers or harming their ability to create new products.

Google’s recommendation

Google proposes 3 developments: support for the US Patent Trademark Office (PTO), Judiciary review of forum shopping, and congressional changes to address patent abuse.

The PTO receives . The evaluation process has not been streamlined because PTO employees are under-resourced despite the PTO working on AI solutions. Such inefficiency leads to possible issuances of invalid patents, inventors may then be unable to protect their inventions confidently. Others end up having to defend infringement claims against patents that . Google that investing in the patent office can help prevent such issues and are that “important work can finally begin” by the new director of the PTO, Kathi Vidal.. Google also funding the PTO by increasing fees for larger patent filers (including themselves).

At the judicial level, Google Chief Justice Roberts urgently investigates the judicial imbalances caused by abusive forum shopping. DeLaine Prado recommends ending forum shopping as many companies suing patent claims may damage the integrity of the judicial process. In a year-end report on the federal judiciary, Justice Roberts pledged to direct the judicial conference to address patent venue rules and that the . The extreme concentration of patent cases in Waco, Texas in Judge Alan Albright’s court has concerned Senators. To illustrate, approximately 20% of all US patent litigation is filed in Judge Albright’s court.

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Senators have also raised concern that Judge Albright has . have raised concern that this patent-owner friendly policy attracts patent trolls. Senators also note that current case assignment procedures may allow the plaintiff to select a specific judge to hear their case.

Google supports legislation before congress that reduces abusive patent litigation, restoring access to inter partes review, and increasing accountability. Inter partes review was a created by Congress as part of the America Invents Act that helps companies cost-effectively invalidate low-quality patents. This program was created to provide expert review of patents with the greatest impact on the US economy, however changed PTO rules created some barriers to use the program that could be reduced.

Overall, Google’s concern with the lack of promotion of innovation and creativity by the US patent system will likely spark debate and potential reform in the near future.

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File Wrapper Estoppel (or “Prosecution History Estoppel”) is a concept from American jurisprudence that was best described by the Supreme Court of the United States in . ��It is an equitable power of the court designed to hold an inventor to the representations they made during the patent application process. It does this by allowing a patent-holder’s competitors to rely on the patent’s prosecution history to estop the patentee from recapturing subject matter surrendered by amendment as a condition of obtaining the patent.

The estoppel arises from any amendment that narrows a claim to comply with any patent legislation requirement, and when it applies it bars the doctrine of equivalence (the doctrine which deems any modification to an invention that performs an equivalent function to be infringement) for the element that was amended. When estoppel applies, it does not completely bar the patent-holder from claiming infringement of their amended claims, but only for the aspects of those claims that were amended.

There are many ways in which file wrapper estoppel can lead to increased litigation. Determining what the amended claim does or does not cover, through the lens of the patent prosecution dialogue, is where the largest amount of litigation arises.�� There are also cases in which estoppel would normally arise, but doesn’t because the alleged infringing equivalent was unforeseeable at the time of the amendment, a fact which must be proven in court, through litigation.

It’s for the above reasons that Justice Binnie completely rejected the concept of file wrapper estoppel in Canada in his ruling in He confined the scope of a patent to the “objective manifestation of that intent in the patent claims, as interpreted by the person skilled in the art”, rejecting “extrinsic evidence such as statements or admissions made in the course of patent prosecution”. ��Justice Binnie reasoned that allowing file wrapper estoppel would weaken the public notice function of a patent’s claims, and that it would also introduce an uncertainty that could only be resolved with litigation.

While it is true that file wrapper estoppel has the ability to tie an inventor to their correspondence during patent prosecution, it is much simpler (as Justice Binnie stated) to just have the claims accurately reflect what was agreed upon in the negotiations instead of determining it through litigation. File wrapper estoppel within the finalised and published patent in the determination of an invention’s limits, while subsequently elevating the importance of “rough drafts” of the patent and their surrounding correspondence. This has the very real effect of detracting from the primacy of the claims, and making the monopoly covered by the patent more uncertain.

The changes brought by Bill C-86 with the introduction of file wrapper estoppel will affect the patent prosecution process at every stage. Inventors will need to turn their minds to not just the prior art, . in their language during the prosecution process. Patent owners will have less certainty than before as to what their amended claims actually cover, and because of this, less certainty as to which acts are infringements of their patents. Potential patent infringers will now have a new tool of defence to any accusations of infringement. And, of course, the benefit of the newly-created doubt will go to the patent litigators, who will be needed to define the scope of the claims.

Written by Keenan Fast, IPilogue Editor and JD Candidate at Osgoode Hall Law School.

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In Canada, most patent litigation takes place in the Federal Court. As with most courts, the Federal Court seeks to balance its limited resources with ensuring access to timely justice. To achieve its goal of scheduling trials within two years, the Court has implemented several measures.

The changes that were made meant that both the judiciary and parties to litigation have to modify their practices and in some cases long-standing approaches to litigation. As noted in one decision, litigants could no longer expect cases to “creep along”. As Justice Snider in another decision, “it is not realistic, practical or reasonable to merely shorten the time between the filing of a statement of claim and the start of the trial if the parties and their counsel do not also adapt their litigation practice and strategies to the shorter time frames.”

Rule Changes

Rule changes to allow for Summary Judgment () and Summary Trials () were registered in . So far only a couple of proceedings have taken advantage of these new procedures—a trade-mark counterfeiting case (Louis Vuitton Malletier SA v. Singga Enterprises (Canada) Inc, ) and a damages proceeding under of the PM(NOC) Regulations (Teva Canada Ltd. v Wyeth LLC, ).

There were also to allow more flexibility with expert witnesses, especially in patent proceedings to reduce the “length of proceedings”. It is unclear what effect these rules on experts have had on .

Case Management

The Court announced it would allow case management to be requested by way of letter early in the proceeding so that a case manager can assist early in the process. Prothonotaries, who are typically appointed as case managers, are given significant deference to manage proceedings.

In the two years prior to the 2009 announcement to streamline litigation, the first mention of case management in the court docket for patent infringement actions took place on average approximately 11 months after an action was started. In the two years following the announcement, the first mention of case management took place about 4 months earlier at approximately 7 months.

Early Trial Dates

The court is also trying to schedule trial dates earlier in the proceeding, often prior to pre-trial conferences. The parties and the case manager may try to identify a point when most of the issues are identified and the time needed for discovery, expert reports and other pre-trial steps are clarified before a trial date being scheduled. Justice Harrington that:

The general principle under is that the rules are to be interpreted and applied so as to secure the just, most expeditious and least expensive determination of every proceeding on its merits. The Court has control over its own process and may, in appropriate circumstances, vary a rule or dispense with compliance. It is certainly not unheard of , especially in case management, for the Court to fix trial dates before pleadings are closed, and before examinations for discovery are complete.

According to the most recent Federal Court public schedule, there are trial schedules as far into the future as September 2014.

In spite of these pressures, the length of time parties have to wait to be allocated a trial date is getting shorter. Often, having a fixed trial date encourages parties to work towards that date and reduces ‘slippage’ in schedules. In 2009, trial dates were allocated on average about 5.4 years after a proceeding had been started. By 2011, trial dates were being allocated approximately 2.5 years after the Statement of Claim was filed.

Even though trial dates were being allocated earlier in proceedings, the start dates of the trials were still on average about four years after the Statement of Claim.�� Often proceedings are settled or discontinued prior to trial and only about 15 patent infringement cases went to trial in 2009 to 2011.

While contemplates that the scheduling of the trial will be discussed at the Pre-Trial Conference, these trends suggest that Prothonotaries and the Chief Justice are often scheduling trials prior to a pre-trial conference.

Perhaps because of the early scheduling of trial dates, the Court often has to many patent trials. Hopefully, the Federal Court and parties can take advantage of the cancelled dates.

Justice Snider noted after the perindopril patent infringement action was heard two years after the Statement of Claim that “[a]rguably, the time requirements for a path to trial that took four years and one that took less than two years are the same; the difference is that the same volume of work must be carried out in half the time” ().

Future

While ordering that a trial date be given up, Justice Hughes identified the pressure the court is under to identify early trial dates for parties (in ):

A second reason respecting the trial date is that consideration must be given to the pressures on this Court to find trial dates for other litigants in other cases. Even now, some litigants are not expecting trial dates until 2015.

The Federal Court has also recognized that much of the day-to-day case management falls to Prothonotaries. The Court currently has six Prothonotaries but does not necessarily have for those positions. Also, in the past year, the Court has had to reduce its use of deputy judges as result of the decision.

Conclusion

The above analysis focuses on patent infringement actions but it should be recognized that the Federal Court handles a diverse set of proceedings each with their own demands ranging from immigration matters, tax, maritime, as well as other areas of intellectual property including PM(NOC) prohibition proceedings.

The Federal Court has taken significant steps to reduce the backlog of cases and move case towards resolution. The improvements that can be made pre-trial now appear to be limited by the availability of judges to hear trials.

Alan Macek is an associate at ��and��publishes a blog and daily email on developments in intellectual property law in Canada at .

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