Parties to a patent action often wonder after trial what the
outcome would have been if they had just been able to locate that
key piece of evidence they know is out there ... somewhere ... What
if, however, that evidence is actually located after the trial has
concluded, but before judgment has been rendered? That was the
situation in Varco Canada Limited v. Pason
Systems Corp., 2011 FC 467 and the question
on motion before the Court was whether the trial should be
re-opened in light of evidence that had been subsequently
Although there is a paucity of law in this regard, the Court
stated that reopening a trial was a matter of broad discretion but
one which must be exercised sparingly and cautiously. As such, key
factors which should be considered on such a motion include: 1)
could the evidence, if it had been presented at trial, have had any
influence on the result? (an inquiry as to materiality/relevance);
2) could the evidence have been obtained before trial by the
exercise of reasonable diligence?; and 3) are there exceptional
circumstances that would justify setting aside the "due
diligence" test or at least reduce its overall importance in
the exercise of discretion.
In the case at hand, the new evidence was the file of a Texas
patent agent who was the first agent that the inventor received
advice from. According to the theory put forward by the Defendants,
this agent gave advice on prior art which could have impacted on
the inventor's chances of securing a patent. As a result, the
inventor subsequently approached another patent agent, failed to
disclose the prior art he had been advised of, and had the new
patent agent file a patent application in the U.S. without
disclosing this prior art. According to the Defendants, this
alleged fraud on the U.S. Patent Office had the knock-on effect of
misleading the Canadian Patent Office into issuing a patent.
Plaintiffs' counsel admitted that the sworn evidence
previously given by the inventor at trial was in some material
aspects inaccurate in light of the fresh evidence. Not only would
the new evidence therefore affect the witness's credibility,
but the evidence went directly to the Defendants' claim of
inequitable conduct. The Court therefore found that the receipt of
this evidence, properly established, could therefore influence the
final decision and would most certainly form part of the
Although there were "significant problems" with the
diligence employed by the Defendants in attempting to locate the
evidence in the first place, there was precedent for the principle
that "any lack of due diligence must be tempered by the
crucial factor that a court should not be misled as to the true
facts." Given the exceptional circumstances of this case, the
Court could not turn a blind eye and make findings of fact based on
an inaccurate evidentiary record. The Court therefore found that it
was appropriate to re-open the trial.
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The Federal Court dismissed a motion by Apotex seeking particulars from Allergan's pleading relating to the prior art, inventive concept, promised utility and sound prediction of utility of the patents at issue.
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