Following effusive praise from as ‘one of the leading architects in IP’, and an introduction from ��in which we were reminded that Justice Rothstein’s exposure to IP had only begun in earnest after his appointment to the Federal Court in 1992, Justice Rothstein took to the podium. More information on his background and career can be found .

With talks from previous years taking in topics like the Copyright Pentalogy, or the art of litigating IP at the Supreme Court, the focus of the day was really on the passage of a case up the appellate ladder, and how the technical savvy of the judges filtered away to generalism as a case rose. Justice Rothstein elaborated about how trial judges at the Federal Court (where the majority of IP cases will begin) frequently come from an IP background themselves. As such, judges are not only closer to the factual record, but are also more likely to have some degree of expertise themselves. Beyond this, he explained, expediency plays less of a factor than at the appellate level, and so trial judges frequently enjoy greater access to counsel, and, with that, more time to develop an understanding of the topic.

The appellate courts are populated by a more generalist breed of judge, which is no bad thing. Citing article from Chicago’s 7^th Circuit Chief Judge Diane Wood, he noted that generalist judges can benefit from experience with a wider variety of legal issues, leaving them able to make connections between the technical subject matter and analogous areas of law to ensure that the overarching principles at hand are not ‘lost in the forest of technical detail’.

This generalism, then, is reflected in the standard of review that the Court has been setting for IP, with a high level of deference paid to most of the findings of the various administrative bodies that govern many of the issues that occur in IP. Post-Dunsmuir, we see reasonableness applied to the findings of administrative tribunals for issues of fact, mixed fact and law, and even some questions of law, with a relatively restrictive reading of when to apply correctness. However, Justice Rothstein was quick to stress that he hasn’t necessarily been seeing eye-to-eye with the Court in interpreting how to apply this standard. In , for example, he advocated unsuccessfully for a restriction of the deferential standard to cases in which there was a strong privative clause. Conversely, in , he suggested that the court had seemingly applied ‘reasonableness’ in name only when they found that the Copyright Board’s application of the ��fair dealing factors was ‘unreasonable’, leading to some tension between the Copyright Board and the Court.

It seems that the Court is still trying to figure out exactly how the standard of review should be defined here, and whether the nature of the tribunal requires an application of the standard of review analysis in every case, or whether a single standard can be etched out that might apply consistently. Justice Rothstein made no bones about the fact that he is ‘no fan of the standard of review industry’, but didn’t appear to have a solid alternative to suggest either. That said, we were reminded to keep an eye on prima facie unrelated developments in the law outside of IP, citing the recent����decision as one that may shape the future of the standard of review for cases dealing with factual matters, or ones of mixed fact and law.

The main impression that I received here, was that Justice Rothstein’s idea of the need to display deference was very much connected to the difference between generalism and technical expertise. Answering a question from Professor , he noted that he would have dispensed with expert evidence in a trademark case regarding confusion, as the notional ‘reasonable person’ (a ‘casual consumer somewhat in a hurry’) can easily be role-played by a judge (or any lay-person, for example). On the other hand, in a case like , the notional ‘person having ordinary skill in the art’ is, by definition, an expert in their field relative to a generalist judge, and so expert evidence and assistance is invaluable to the Court. Perhaps this signals a desire for separate standards of review to apply to each of the various disciplines of IP, with respect for the subject matter at hand.

Although this is Justice Rothstein’s final year at the Supreme Court, he has been an invaluable voice in IP, writing many of the Court’s decisions on the area. Whichever direction the court takes after the end of his term, IP enthusiasts can look back on an era in which an unprecedented number of issues have been decided at the Court. Hopefully, Justice Rothstein will have the opportunity to address a few more before that day comes.

Andrew Hunter is an IPilogue Editor and a J.D. Candidate at Osgoode Hall.

The post IP Osgoode Speaks Series featuring Justice Marshall Rothstein - Generalist Judges, Technical Expertise, and the Standard of Review appeared first on IPOsgoode.

The����is intended to promote education in the intellectual property field and to provide students with the opportunity to interact with jurists of the Supreme, Ontario, and Federal Courts and experienced practitioners of intellectual property law. The moot is named in honour of the late��, one of Canada’s leading intellectual property scholars and advocates.

This year's moot problem focused on the "patent bargain," and in particular, two hot topics in the world of patent litigation: sufficient disclosure under s.27(3) of the Patent Act and the patentability of diagnostic methods. In the problem’s hypothetical scenario, the Appellant had patented a process for diagnosing early stage chronic kidney disease through the isolation of a particular bacteria in saliva. The Respondent had admittedly infringed the Appellant’s patent; however, they had challenged the validity of that patent on the grounds that the Appellant's document contained insufficient disclosure and that the invention claimed was a mere scientific principle (the correlation between the bacteria and the disease). The Appellant was successful at trial; however, the patent was ultimately invalidated by the fictional Intellectual Property Court of Appeal. The moot was an appeal to the Supreme Court of Intellectual Property, the highest court in the land.��This simple premise was greatly complicated by a number of carefully worded situational factors that allowed for compelling arguments to be made on behalf of either party.

(from left) Benjamin Farrow, Isabella Ssozi, Jeremy Fisher, Faye Alipour and Jason Hayward comprised the 2014 Harold G. Fox Moot team for Osgoode Hall Law School. Photo Credit: Alan Macek

Benjamin Farrow is a JD Candidate at Osgoode Hall Law School and a member of this year’s Harold G. Fox Moot team for Osgoode Hall Law School.

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