Kobold Corporation v. NCS Multistage Inc.

Kobold Corporation v. NCS Multistage Inc.

Court held as a matter of law that s.56(1) requires the pre- and post-claim acts to be the same (identical) with respect to the relevant inventive concept; subsections 56(6) and 56(9) afford a separate, broader defence to third parties for 'substantially the same' articles or services but do not apply to NCS on the record; the '561 Patent claims construed to distinguish 'secured' (requires co-movement/force transmission) from 'connected'; summary judgment granted on statutory interpretation and claim construction and on dismissal of s.56(6)/(9) defences, allowed NCS to continue manufacture/use of the pre-claim Mongoose device, but infringement and the applicability of s.56(1) require trial.

Citation
2021 FC 1437
Parties
Plaintiff/defendant by Counterclaim: Kobold Corporation; Plaintiff/defendant by Counterclaim: Kobold Completions Inc.; Plaintiff/defendant by Counterclaim: 2039974 Alberta Ltd.; Defendant/plaintiff by Counterclaim: NCS Multistage Inc.
Court
Federal Court
Jurisdiction
Canada
Judgment Date
7 January 2022
Procedural Posture
Patent Infringement; Summary Judgment Motion / Summary Judgment Decision; Remaining Issues to Proceed to Trial
Outcome
Partial summary judgment: interpretation of s.56(1) requires identical acts; s.56(6) and s.56(9) defences dismissed for the defendant; '561 Patent construed (distinction between 'secured' and 'connected'); defendant allowed to continue manufacture/use of Mongoose device; all other issues (infringement and...
Legal Topics
Prior User Defence, Section 56 Patent Act, Claim Construction, Summary Judgment, Infringement
Source Language
English
Patent Law Intellectual Property Civil Procedure Prior User Defence Section 56 Patent Act Claim Construction Summary Judgment Infringement

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 5 Authorities cited 17 Party arguments 2 Amounts and remedies 1
Sign in to unlock

Parties

Kobold Corporation

Plaintiff/defendant by Counterclaim

Kobold Completions Inc.

Plaintiff/defendant by Counterclaim

2039974 Alberta Ltd.

Plaintiff/defendant by Counterclaim

NCS Multistage Inc.

Defendant/plaintiff by Counterclaim

Procedural Posture

Patent Infringement; Summary Judgment Motion / Summary Judgment Decision; Remaining Issues to Proceed to Trial

Legal Issues

  1. 1 Whether summary judgment/summary trial appropriate
  2. 2 Proper interpretation of s.56 of the Patent Act
  3. 3 Construction of Canadian Patent No. 2,919,561 ('561 Patent)

Ratio Decidendi

Court held as a matter of law that s.56(1) requires the pre- and post-claim acts to be the same (identical) with respect to the relevant inventive concept; subsections 56(6) and 56(9) afford a separate, broader defence to third parties for 'substantially the same' articles or services but do not apply to NCS on the record; the '561 Patent claims construed to distinguish 'secured' (requires co-movement/force transmission) from 'connected'; summary judgment granted on statutory interpretation and claim construction and on dismissal of s.56(6)/(9) defences, allowed NCS to continue manufacture/use of the pre-claim Mongoose device, but infringement and the applicability of s.56(1) require trial.

Court Disposition

Partial summary judgment: interpretation of s.56(1) requires identical acts; s.56(6) and s.56(9) defences dismissed for the defendant; '561 Patent construed (distinction between 'secured' and 'connected'); defendant allowed to continue manufacture/use of Mongoose device; all other issues (infringement and...

Orders

  • Summary judgment granted on interpretation of subsections 56(1), (6) and (9) of the Patent Act as described in Reasons
  • Summary judgment granted to Plaintiffs dismissing Defendant's defences under subsections 56(6) and (9) of the Patent Act