Richards Packaging Inc. v. Distrimedic Inc.

Richards Packaging Inc. v. Distrimedic Inc.

Prothonotary Steele's ruling was correct: s.16.1 of the Patent Act protects the challenged communications retroactively except for disclosure required in proceedings that were ongoing on June 24, 2016; Richards did not waive privilege beyond the limited material actually disclosed to the Patent Office; Distrimedic failed to adduce prima facie evidence of fraud or other serious unlawful purpose that would defeat solicitor‑client or patent‑agent privilege; the Rule 237(4) examination transcript was inadmissible for the purposes advanced and would not alter the outcome, therefore the appeal is dismissed.

Citation
2020 FC 1162
Parties
Plaintiff / Defendant by Counterclaim: Richards Packaging Inc.; Defendant / Plaintiff by Counterclaim: Distrimedic Inc.
Court
Federal Court
Jurisdiction
Canada
Judgment Date
17 December 2020
Procedural Posture
Patent Infringement and Reissue Validity Dispute / Appeal of Prothonotary Steele's Privilege Order (motion Under Rule 51)
Outcome
Appeal dismissed; Privilege Order of Prothonotary Steele dated February 10, 2020 affirmed
Legal Topics
Reissue Under S.47 Patent Act, Section 16.1 Patent Act Retroactivity, Waiver/implied Waiver of Privilege, Fraud/misconduct Exception to Privilege, Admission of New Evidence on Appeal, Rule 237(4) Examinations
Source Language
English
Patent Law Privilege (solicitor‑client and Patent Agent) Civil Procedure Evidence Reissue Under S.47 Patent Act Section 16.1 Patent Act Retroactivity Waiver/implied Waiver of Privilege Fraud/misconduct Exception to Privilege +2 more

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Parties

Richards Packaging Inc.

Plaintiff / Defendant by Counterclaim

Distrimedic Inc.

Defendant / Plaintiff by Counterclaim

Procedural Posture

Patent Infringement and Reissue Validity Dispute / Appeal of Prothonotary Steele's Privilege Order (motion Under Rule 51)

Legal Issues

  1. 1 Whether s.16.1(6) of the Patent Act bars retroactive patent‑agent privilege for communications that predate June 24, 2016 and relate to proceedings commenced before that date
  2. 2 Whether Richards waived privilege (expressly or impliedly) by disclosing redacted communications to the Patent Office during the reissue process and by putting instructions to patent agents in issue
  3. 3 Whether alleged misconduct (improper purpose to capture competitor) defeats solicitor‑client or patent‑agent privilege and whether Distrimedic established a prima facie case of fraud

Ratio Decidendi

Prothonotary Steele's ruling was correct: s.16.1 of the Patent Act protects the challenged communications retroactively except for disclosure required in proceedings that were ongoing on June 24, 2016; Richards did not waive privilege beyond the limited material actually disclosed to the Patent Office; Distrimedic failed to adduce prima facie evidence of fraud or other serious unlawful purpose that would defeat solicitor‑client or patent‑agent privilege; the Rule 237(4) examination transcript was inadmissible for the purposes advanced and would not alter the outcome, therefore the appeal is dismissed.

Court Disposition

Appeal dismissed; Privilege Order of Prothonotary Steele dated February 10, 2020 affirmed

Orders

  • The appeal by Distrimedic Inc. is dismissed.
  • Costs awarded to Richards Packaging Inc. in the aggregate lump sum of $6,000.00, including taxes and disbursements.