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Patent Proceedings by the Numbers – Part 2

Continuing my review of patent infringement proceedings in Federal Court, I will look at how cases actually move through the court. Focusing on patent infringement cases started in 2017, 2018 and 2019 (but excluding proceedings under the PM(NOC) regulations), for this group of about 140 cases, a statement of defence was only filed in about 75% of cases. In my last column (see How Long to Trial for Patent Proceedings?), my review suggested that about half of the cases were resolved in less than two years, typically by way of settlement or discontinuance.

In the 75% of cases where a defence was filed, the median time to filing a defence was about 82 days. Under the current Federal Courts Rules, a defendant in Canada or the United States has 30 days to serve and file a defence, or 60 days if served elsewhere, which can be extended by 10 days if a notice of intention to respond is served within 10 days (per Rule 204 and 204.1). During the time period being analyzed, the Rules allowed for 30 days for delivery of a Statement of Defence if served in Canada, 40 days if served in the United States or 60 days elsewhere. Typically, in intellectual property cases, a plaintiff may provide an extension of time on consent, such as pursuant to Rule 7, or the Court may grant a longer extension of time for delivery of a defence.

While the median time for the filing of a defence is 82 days, the average is much longer at over 200 days because of several cases where a defence was not filed for over a year. The longest time to file a defence that I identified in this group of cases was over 600 days in a proceeding where default judgment was obtained and later set aside before the defence was filed. There were nine proceedings in the group, where it took over a year for a defence to be filed.

A plaintiff has 60 days to serve a Statement of Claim after it is issued pursuant to Rule 203 but it appears that in most cases the claim is served almost immediately.

Case Management and the appointment of a case management judge is a key tool used by the Federal Court to keep cases moving outside the formal deadlines imposed by the Federal Courts Rules. The Court’s Practice Notice on complex litigation assumes that proceedings are case managed, and, while not considered in this article, all actions under the Patented Medicines (Notice of Compliance) Regulations are case managed by default.

Approximately two thirds of the patent cases started in 2017-2019 were subject to case management. Proceedings typically enter case management through a request from one or both of the parties, as ordered by the court at any time, or after a status review. All the proceedings went to trial, or have trials schedule, are case managed.

On the 140 patent cases reviewed, approximately 360 case management conferences were held. In one proceeding over 30 case management conferences have been held since it started in 2017, almost double the number of case management conferences of the next busiest proceeding.

In about twenty proceedings, the case was specially managed but no case management conferences were held, likely because issues were resolved in writing or the proceeding concluded without needing a conference. There was a median of three case conferences per proceeding subject to case management.

In the 140 patent cases being reviewed, there were about 140 motion hearings although this was heavily weighted to a small number of proceedings. Less than half of proceedings had a motion hearing at all, and a quarter of all motion hearings for this group of cases involved only four patent proceedings, all case managed. Typically, motions in case managed proceedings are heard by the case management judge, or by the trial judge once identified.

This review of a sample of patent cases in the Federal Court shows that while the average case does not go to trial or involve many contentious interlocutory steps, a small subset of cases require a substantial amount of work from clients, their lawyers and the Court.

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