In US patent litigation, claim construction is routinely carried out in a separate hearing before trial, a procedure known as a Markman hearing (named after the 1996 decision of the US Supreme Court in Markman v. Westview Instruments, Inc.). In May of 2003, a Canadian Court had for the first time approved of a Markman-type hearing in Canada. This decision has now been overturned on appeal.
The lower Court had granted, upon motion by the Defendants, an order for a Markman-type hearing pursuant to Rule 107 of the Federal Court Rules, 1998. That rule permits the Court to “order the trial of an issue or that issues in a proceeding be determined separately.” In granting the order, the lower Court was of the belief that a Markman-type hearing in patent infringement actions could encourage the parties to settle, depending on the construction given to the claims, and thus could potentially “speed up the litigation.”
On appeal, the Federal Court of Appeal was of the view that the lower Court did not give sufficient weight to all the relevant considerations. In particular, it was not apparent that the lower Court gave sufficient attention to whether the Plaintiffs would suffer any injustice as a result of the order. The Federal Court of Appeal pointed out that the Plaintiffs would lose the advantage of having the whole of the action tried at the same time by the same judge.
The Federal Court of Appeal was also not satisfied that a Markman-type hearing would actually save time and expense in the circumstances of the particular case at bar. On the contrary, the Court suggested that such a hearing could possibly delay a trial on the merits. Finally, although recognizing that the promotion of out-of-court settlements might be a welcome by-product of a Markman-type hearing, the Court was not convinced that this was an objective of Rule 107.
It is interesting that in its decision the Federal Court of Appeal does not completely foreclose the possibility of a Markman-type hearing pursuant to Rule 107. The Court indicated that “it is not to suggest that a Markman-type order would not be available in any circumstances under the rule which, admittedly, is broadly phrased.” However, the Court was hesitant in the Realsearch case to produce a change of this magnitude in current Canadian patent law practice without prior debate and careful consideration. As a result, for the time being, it appears that patent claims in Canada will continue to be construed for the first time by the Court at trial.
Jeremy E. Want, Ottawa