Lexpert US Guides

48 | LEXPERT • June 2018 | www.lexpert.ca/usguide trial in a diligent fashion, similarly to what is found in the United States with the difference that in Canada the case management judge is usually not the trial judge. Also, the Federal Court will endeavor to hear intel- lectual property cases within two years of filing where sophisticated parties are determined to bring the matter to the Court expeditiously and request an early assignment of trial dates. On the other hand, forum shop- ping has long been a hurdle for litigants in the United States where some districts (and their juries) are known to be more or less patentee friendly than others and different circuits may apply different lines of case law. Until recently, a third of all patent cases in the United States were brought before the Eastern District of Texas, the forum of choice for patentees. This was made possible by a 1990 Federal Circuit decision that gave a broad interpretation to the jurisdictional test of "where the defendant resides" as essentially be- ing anywhere a corporation makes sales. This resulted in parties rushing to court to be the first to file in the forum of choice and the parties wasting precious time and money challenging jurisdiction of the court at the outset of the case. However, forum shopping in the US is likely to be more difficult fol- lowing the 2017 decision of the Su- preme Court in TC Heartland that overruled the 1990 Federal Circuit precedent and reinstated the standard established in a 1957 Supreme Court decision that held that a domestic corporation "resides" only in its state of incorporation. The number of pat- ent cases filed in the District of Dela- ware has since then doubled. This does not necessarily mean litigants have stopped arguing over jurisdic- tion altogether and it's still open, in some cases, to the alleged infringer to bring pre-emptive proceedings for declaratory judgment. #2 - Discovery is less invasive and less expensive While the Canadian legal system has a documentary and oral discov- ery process (unlike most European jurisdictions), it is usually much less invasive for the parties and therefore much less expensive than the discovery for a patent case in the United States. In the Federal Court, each party has a duty to dis- close to the other party all relevant documents it intends to rely on at trial or that could be detrimental to its own case. Although the Federal Courts Rules do not specifically provide for requests for production of additional documents, the prac- tice has developed over the years to exchange such requests in advance of oral examinations for discovery to streamline the process. In our experience, the exchange of docu- ments is usually more focused in Canadian patent cases than it can be in the United States, resulting in fewer documents to be reviewed by the parties and their counsel. Oral examinations for discovery (or depositions) are much more limited in Canada than they are in the United States. The general rule is that a party is only entitled to depose one representative of the other party and does not get to decide who that representative is (similar to Rule 30(b)(6) corporate depositions). Exceptionally, a defendant in a patent case is also allowed to depose the inventors of the patent(s) at issue but cannot use the depositions at trial unless the inventors are called to testify. The rules do not generally allow experts to be deposed as part of the discovery process. Moreover, the Federal Court has issued practice notices in recent years to limit the duration of depositions as well as refusals motions to compel parties to answer questions. #3- No jury trials Another notable difference with the United States is that there is no jury trial for patent infringement cases in Canada. All factual and legal issues are decided by a single judge, usually at the same time (save for questions of monetary compensation which are oftentimes bifurcated in intellectual property cases to be determined only after a plaintiff has succeeded on the trial on liability is completed). The merits of juries for civil cases have long been debated and could be the subject of a separate article in itself, but it is the authors' view that the outcome of a complex patent case may be more predictable when the trial is heard by a single experienced judge than a jury. There is also less fluctuations in Canada between the damages awarded by the trial judge and any subsequent revision by the Federal Court of Appeal as compared to damages awarded by juries in the United States that can sometimes be significantly reduced by the appellate court. This also means judges are not required to hold a pretrial hearing (referred to as "Markman hearing" in the United States) to construe the claims of the patent in advance of the trial, which can have both advantages and disadvantages. On the one hand, experts in Canadian patent cases are required to provide their opinion at trial on validity and infringement of the patents without knowing how the Court will ultimately construe the patent. On the other hand, there can be benefits in having the judge decide all of the issues in a case at the same time having heard all of the factual and expert evidence presented by the parties. Although not com- mon in the Federal Court in Canada, there is nevertheless the option for a party to bring a motion early in a proceeding for a determination of claim construction issues if an early preliminary ruling would be seen by the Court as being appropriate under the circumstances. " patent litigation in Canada can be affordable, fast and patentee-friendly"

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