Grenke v. Corlac Inc.

Grenke v. Corlac Inc.

The Commissioner of Patents is not a person who ought to have been joined under Rule 104 because the Federal Court, exercising exclusive jurisdiction under s.52, determines private rights reflected in Patent Office records and the Commissioner is statutorily obliged to give effect to such orders; notice suffices and there is no evidence the Commissioner would refuse to comply.

Citation
2007 FC 396
Parties
Plaintiff: Edward Grenke; Plaintiff: Grenco Industries Ltd.; Defendant (plaintiff by Counterclaim): Corlac Inc.; Defendant (plaintiff by Counterclaim): National-Oilwell Canada Ltd.; Defendant (plaintiff by Counterclaim): National Oilwell Incorporated
Court
Federal Court
Jurisdiction
Canada
Judgment Date
16 April 2007
Procedural Posture
Patent Infringement With Counterclaim for Invalidity and Rectification Under Section 52 of the Patent Act / Pre Trial Motion Under Rule 104 Seeking Joinder of the Commissioner of Patents
Outcome
Motion partly granted and partly denied
Legal Topics
Patent Rectification, Joinder of Parties, Section 52 Patent Act, Federal Court Jurisdiction, Notice to Administrative Decision Maker
Source Language
English
Patent Law Civil Procedure Administrative Law Patent Rectification Joinder of Parties Section 52 Patent Act Federal Court Jurisdiction Notice to Administrative Decision Maker

Case Brief

Summary, issues, holding and outcome

More case intelligence is available

Unlock the full research layer for this judgment.

Full judgment text Legal principles 3 Authorities cited 5 Party arguments 2
Sign in to unlock

Parties

Edward Grenke

Plaintiff

Grenco Industries Ltd.

Plaintiff

Corlac Inc.

Defendant (plaintiff by Counterclaim)

National-Oilwell Canada Ltd.

Defendant (plaintiff by Counterclaim)

National Oilwell Incorporated

Defendant (plaintiff by Counterclaim)

Procedural Posture

Patent Infringement With Counterclaim for Invalidity and Rectification Under Section 52 of the Patent Act / Pre Trial Motion Under Rule 104 Seeking Joinder of the Commissioner of Patents

Legal Issues

  1. 1 Whether the Commissioner of Patents must be joined as a party to a section 52 counterclaim to bind the Commissioner to give effect to any court order
  2. 2 Whether notice to the Commissioner suffices instead of joinder
  3. 3 Whether Rule 104 requires joinder of the Commissioner to completely determine the dispute

Ratio Decidendi

The Commissioner of Patents is not a person who ought to have been joined under Rule 104 because the Federal Court, exercising exclusive jurisdiction under s.52, determines private rights reflected in Patent Office records and the Commissioner is statutorily obliged to give effect to such orders; notice suffices and there is no evidence the Commissioner would refuse to comply.

Court Disposition

Motion partly granted and partly denied

Orders

  • Leave granted to the Defendants to serve and file a Freshly Amended Statement of Defence and Counterclaim amending paragraph 17(a) and adding new paragraph 17(a)(iii) on the provision that the plaintiffs will be entitled to discovery on these amendments
  • Leave to serve and file a Freshly Amended Statement of Defence and Counterclaim adding the Commissioner of Patents as a party to the Counterclaim and proposed new paragraph 22A is denied