Safilo Canada Inc. v. Contour Optik Inc.

Safilo Canada Inc. v. Contour Optik Inc.

Dismissal under r.221(1) refused because plaintiff's Federal action had statutory basis and was not plainly frivolous, and because applicants unreasonably delayed reserving their right to seek dismissal; stay under s.50 was granted as a matter of judicial discretion because (i) the Superior Court proceedings were significantly advanced, (ii) risks of duplication and contradictory judgments were low given the state of the Superior Court record and related Federal proceedings, and (iii) defendants gave an undertaking to consent to striking the patent if the Superior Court ultimately declared it invalid, thereby protecting the plaintiff's interests.

Citation
2005 FC 278
Parties
Plaintiff/respondent: Safilo Canada Inc.; Defendant/applicant: Contour Optik Inc.; Defendant/applicant: Chic Optic Inc.
Court
Federal Court
Jurisdiction
Canada
Judgment Date
23 February 2005
Procedural Posture
Patent Invalidity / Declaratory Relief Under S.60 Patent Act / Motion to Dismiss or Stay (stay Granted)
Outcome
Stay granted
Legal Topics
Stay of Proceedings, Lis Pendens, Interlocutory Injunction, Abuse of Process, Concurrent Jurisdiction
Source Language
English
Patent Law Intellectual Property Civil Procedure Stay of Proceedings Lis Pendens Interlocutory Injunction Abuse of Process Concurrent Jurisdiction

Case Brief

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Parties

Safilo Canada Inc.

Plaintiff/respondent

Contour Optik Inc.

Defendant/applicant

Chic Optic Inc.

Defendant/applicant

Procedural Posture

Patent Invalidity / Declaratory Relief Under S.60 Patent Act / Motion to Dismiss or Stay (stay Granted)

Legal Issues

  1. 1 Whether plaintiff's Federal Court action under s.60 Patent Act was scandalous, frivolous or an abuse of process such that it should be dismissed under Federal Court Rules r.221(1)
  2. 2 Whether the Federal Court should stay its proceedings under s.50 Federal Court Act because parallel Superior Court proceedings are advanced and risk duplication or inconsistent judgments
  3. 3 Whether conduct of counsel (race to court) amounts to sufficient basis to dismiss or stay proceedings

Ratio Decidendi

Dismissal under r.221(1) refused because plaintiff's Federal action had statutory basis and was not plainly frivolous, and because applicants unreasonably delayed reserving their right to seek dismissal; stay under s.50 was granted as a matter of judicial discretion because (i) the Superior Court proceedings were significantly advanced, (ii) risks of duplication and contradictory judgments were low given the state of the Superior Court record and related Federal proceedings, and (iii) defendants gave an undertaking to consent to striking the patent if the Superior Court ultimately declared it invalid, thereby protecting the plaintiff's interests.

Court Disposition

Stay granted

Orders

  • Proceedings to invalidate patent No. 2,180,714 (714E) in the Federal Court are stayed until final disposition of the applicants' application for an injunction in the Superior Court and all appeal deadlines have elapsed, or until this Court directs otherwise.
  • Defendants to file in the Registry of the Federal Court the undertaking given at the hearing within the deadlines set by the Court.