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Burden on summary trial can shift, and both parties come up short on ownership

In Mud Engineering Inc. v Secure Energy (Drilling Services) Inc., 2022 FC 943, Justice St-Louis dismissed a motion for summary trial and found both parties were not owners of the 300 and 190 Patents, concerning drilling fluid compositions.

The Court decided:

  • Where the burden of proof lies on a motion for summary trial;
  • If Mud was entitled to the ownership declaration they sought; and
  • If Secure was entitled to the ownership or co-ownership declaration they sought by counterclaim.

Burden of Proof

Justice St-Louis found that the party asserting an issue in the summary trial (here, Mud asserting ownership of the patents in issue) has the legal burden of proving that issue. She cited ViiV FC (previously discussed here) affirmed by ViiV FCA where the onus was reversed from what would occur in the underlying trial because “on a motion for summary trial, the burden of proof pertains to what is raised in the motion, not to what is raised in the underlying action.” Justice St-Louis did not follow Justice Manson’s conflicting decision in Pharmascience Paliperidone because stare decisis bound her to follow the ViiV FCA decision.

Thus, as Mud brought the motion for summary trial for the patent ownership issue, Mud had the burden of proving, on a balance of probabilities, the facts they raised to assert ownership of the disputed patents. Because Secure counterclaimed for ownership, Secure also bore the burden of proving their own set of allegations on a balance of probabilities.

Patent Ownership

The patent ownership issue turns on the work of Mr. Wu and Mr. Brockhoff. Mr. Wu is the named inventor of the patents in issue, is the president of Mud, and was a former employee of a predecessor to Secure named Marquis. Mr. Brockhoff was Mr. Wu’s supervisor at Marquis.

Mud alleged that Mr. Wu had developed the claimed technology after leaving Marquis and relied solely on the evidence of Mr. Wu. Justice St-Louis did not find Mr. Wu direct, sincere, and candid and concluded that Secure rebutted the weak presumption of ownership and inventorship in s. 43(2) of the Patent Act.

Secure alleged that Mr. Brockhoff was a coinventor of the disputed patents based on overlap between those patents and a separate patent that was coinvented by Mr. Brockhoff. Secure also alleged that Mr. Wu was required to assign the disputed patents to Marquis because he worked on them while he was employed by Marquis. Justice St-Louis found Secure’s evidence insufficient and drew an adverse inference because Secure did not adduce the evidence of their employee Mr. Brockhoff or of any witness with personal knowledge of the facts to support their claims.

Justice St-Louis concluded both parties did not meet their burden to obtain declarations of ownership. Because parties must put their best foot forward on a motion for summary trial, Justice St-Louis held that it was not appropriate to give the parties a “second kick at the can” by allowing the ownership issue to be argued again at trial and dismissed both the motion and the underlying action.

The full decision can be read here.