Canadian National Railway Company v. BNSF Railway Company

Canadian National Railway Company v. BNSF Railway Company

Motion dismissed: the Court found it lacked a proper basis to stay the Commissioner’s prosecution/issuance on these facts because the issues and relief before the Commissioner and the Federal Court are distinct (no serious question linking them), BNSF failed to demonstrate irreparable harm or prejudice beyond commercial interest, and the balance of convenience did not favour a stay; Commissioner and Attorney General were added as parties for the purposes of the motion only; applicable interlocutory tests (RJR‑MacDonald and White) were considered and not satisfied.

Citation
2019 FC 142
Parties
Moving Party / Plaintiff by Counterclaim: BNSF Railway Company; Responding Party / Defendant by Counterclaim: Canadian National Railway Company; Third Party: Commissioner of Patents; Third Party: Attorney General of Canada
Court
Federal Court
Jurisdiction
Canada
Judgment Date
4 February 2019
Procedural Posture
Patent Dispute — Infringement, Validity and Improper Divisional Filing Practice; Counterclaim / Interlocutory Motion to Stay Prosecution and Issuance of Divisional Patent Applications
Outcome
Motion dismissed
Legal Topics
Patent Law, Divisional Applications, Stay of Proceedings, Judicial Review, Improper Divisional Filing Practice
Source Language
English
Intellectual Property Administrative Law Civil Procedure Patent Law Divisional Applications Stay of Proceedings Judicial Review Improper Divisional Filing Practice

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Parties

BNSF Railway Company

Moving Party / Plaintiff by Counterclaim

Canadian National Railway Company

Responding Party / Defendant by Counterclaim

Commissioner of Patents

Third Party

Attorney General of Canada

Third Party

Procedural Posture

Patent Dispute — Infringement, Validity and Improper Divisional Filing Practice; Counterclaim / Interlocutory Motion to Stay Prosecution and Issuance of Divisional Patent Applications

Legal Issues

  1. 1 Whether the Federal Court has jurisdiction to stay prosecution or issuance of patent applications before the Commissioner of Patents
  2. 2 Whether the prosecution of the divisional applications, further divisional filings, or issuance of patents should be stayed pending this Court’s determination of related patent validity issues
  3. 3 Whether the Commissioner and the Attorney General should be added as parties for the purposes of the stay motion

Ratio Decidendi

Motion dismissed: the Court found it lacked a proper basis to stay the Commissioner’s prosecution/issuance on these facts because the issues and relief before the Commissioner and the Federal Court are distinct (no serious question linking them), BNSF failed to demonstrate irreparable harm or prejudice beyond commercial interest, and the balance of convenience did not favour a stay; Commissioner and Attorney General were added as parties for the purposes of the motion only; applicable interlocutory tests (RJR‑MacDonald and White) were considered and not satisfied.

Court Disposition

Motion dismissed

Orders

  • Motion dismissed
  • Style of cause amended to include the Commissioner of Patents and the Attorney General of Canada as third parties for the purposes of this motion