Monday, April 29, 2019

Caution as to Whether a Single Direct Infringer Is Required for Inducement

Packers Plus Energy Services Inc v Essential Energy Services Ltd 2019 FCA 96 Gleason JA: Boivin, Rivoalen JJA aff’g 2017 FC 1111 O’Reilly J

In this decision, the FCA upheld O’Reilly J’s finding that Packers Plus’ 072 patent was invalid for obviousness, essentially on the basis that absent an extricable error of law, the standard of appellate review is deferential [29]-[31], and the appellant's arguments either mischaracterized O’Reilly J’s findings or attempted to reargue findings on which deference was owed [34].

O’Reilly J had also addressed anticipation and obviousness, holding that the patent was invalid as anticipated, but if it had been valid, it was not infringed. Perhaps the most interesting aspect of the FCA decisions is the remark that in light of its holding regarding obviousness “it is unnecessary to address the arguments regarding anticipation and infringement, other than to note that these Reasons should not be viewed as endorsing the Federal Court’s findings or Reasons in respect of these issues” [3]. This of course does not mean that O’Reilly J’s holding was wrong on either of these points, but it does mean that his holdings on these issues should be treated cautiously, and do not carry the same weight as a matter of comity that they might otherwise. In my view, discussed here, the most problematic aspect of his decision related to infringement by inducement. The first branch of the Weatherford test for inducement requires that “the act of infringement must have been completed by the direct infringer” 2011 FCA 228, [162]. Even though the patented invention had been performed [38], O’Reilly J held the first branch had not been established because there was no single party who had performed it [55]. That is, he read the test as requiring not just that the act of infringement be completed, but that it must have been completed by a single direct infringer. This point had not established in the prior case law. It may be that it was this point that the FCA intended should remain open (though it may also have been some point related to anticipation, discussed here).


  1. The Court affirmed (e.g., paragraph 9) that in "obvious to try" scenarios, the Sanofi test is "was it more or less self evident that what is being tried ought to work".

  2. Francoise Van GastelApril 29, 2019 at 9:18 PM

    In this case as in contributory infringement the underlying issue is partial infringement. Here O'Reilly J. rejected that the companies could collectively be the direct infringement party because it would imply that each of them was committing an act of partial infringement. With regard to contributory infringement the mere supply of a component of a patented combination which has no non-infringing use is not enough to incur liability because otherwise it implies as well that you accept partial infringement as a cause of action.

    1. Yes, I agree that was the issue and the holding. Whether it is good law is another question.