Patent Infringement Damages Can Extend To Products Beyond Scope Of Claims

In a recent decision relating to a discovery dispute, the Federal Court of Canada (2025 FC 1916) affirmed that section 55(1) of the Patent Act does not necessarily limit patentees to damages arising only from products falling within the scope of their patent claims.

The underlying action related to downhole drilling tools. During discovery, the Defendant requested production of drawings to determine whether the Plaintiffs' products fell within the scope of their own patent. The Plaintiffs refused to produce these documents. The case management judge dismissed the Defendant's motion to compel production. The Federal Court upheld that decision, affirming the lower court's determination that the drawings were irrelevant. The Federal Court held that the language of section 55(1) permits a patentee to seek all damages flowing from the infringing acts of others. In assessing damages, the Court considers whether "But for" the infringing product being on the market, what would the patentee's position have been? For example, the Court agreed that a patentee could hypothetically sue for recovery of all consequent losses from an infringing product destroying the patentee's business entirely.

Accordingly, where a plaintiff can establish sufficient causation between the damage and the infringing act, a Court may reward damages in respect of products that fall outside the scope of the asserted patent claims. However, the Court did warn that depending on the facts of the case, it may be difficult for a patentee to prove lost sales of products that do not fall within the scope of the patent. In such cases, a patentee may consider electing for an accounting of the defendant's profits instead, a unique Canadian remedy.

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