NOV Downhole Eurasia Limited v. TLL Oil Field Consulting

NOV Downhole Eurasia Limited v. TLL Oil Field Consulting

The prothonotary erred by relying on inadmissible evidence and misapplying legal principles (including Free World) to conclude it was plain and obvious that the pleaded s.53 defence could not succeed; prosecution history may be admissible to establish wilful misrepresentation under s.53 and assignees can be disentitled to equitable relief for assignor misconduct, so the pleadings disclose a defence with a real chance of success and must be reinstated.

Citation
2014 FC 889
Parties
Plaintiffs/defendants by Counterclaim: NOV Downhole Eurasia Limited; Plaintiffs/defendants by Counterclaim: Dreco Energy Services ULC; Defendants/plaintiffs by Counterclaim: TLL Oil Field Consulting; Defendants/plaintiffs by Counterclaim: Acura Machine Inc.
Court
Federal Court
Jurisdiction
Canada
Judgment Date
17 September 2014
Procedural Posture
Patent Infringement / Appeal From Prothonotary Order (rule 51)
Outcome
Appeal granted; prothonotary's decision overturned
Legal Topics
Misrepresentation to Patent Office, Section 53 Patent Act, Unclean Hands, Pleading Standards, Prosecution History Admissibility, Claim Construction
Source Language
English
Patent Law Intellectual Property Civil Procedure Misrepresentation to Patent Office Section 53 Patent Act Unclean Hands Pleading Standards Prosecution History Admissibility +1 more

Case Brief

Summary, issues, holding and outcome

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Parties

NOV Downhole Eurasia Limited

Plaintiffs/defendants by Counterclaim

Dreco Energy Services ULC

Plaintiffs/defendants by Counterclaim

TLL Oil Field Consulting

Defendants/plaintiffs by Counterclaim

Acura Machine Inc.

Defendants/plaintiffs by Counterclaim

Procedural Posture

Patent Infringement / Appeal From Prothonotary Order (rule 51)

Legal Issues

  1. 1 Whether the prothonotary applied the correct standard in striking pleadings under Rule 221(1)(a)
  2. 2 Whether misrepresentations or amendments made during prosecution can invalidate a patent under s.53 of the Patent Act
  3. 3 Whether prosecution history may be admissible for purposes other than claim construction (e.g. s.53 challenges)

Ratio Decidendi

The prothonotary erred by relying on inadmissible evidence and misapplying legal principles (including Free World) to conclude it was plain and obvious that the pleaded s.53 defence could not succeed; prosecution history may be admissible to establish wilful misrepresentation under s.53 and assignees can be disentitled to equitable relief for assignor misconduct, so the pleadings disclose a defence with a real chance of success and must be reinstated.

Court Disposition

Appeal granted; prothonotary's decision overturned

Orders

  • Appeal is granted
  • The decision of Prothonotary Milczynski dated March 27, 2014 to strike paragraphs 25 to 27 and the words "and/or void" in paragraph 31 from the defendants' amended statement of defence and counterclaim, without leave to amend, is overturned