Federal Court of Appeal rejects motion for extension of time

The Federal Court of Appeal considered a motion seeking both an extension of time and an order varying the Court’s dismissal of an appeal. The Court dismissed the motion, finding there was no merit to Greenblue’s arguments regarding overbreadth and that the motion was brought outside the applicable time.

Background

The underlying patents at issue relate to a system and a component part of a system designed to foster tree growth in urban environments. Among other grounds, Greenblue had alleged that the patents were invalid for overbreadth because they omitted a top or lid with two metal rods, which it claimed was essential for the system to function. The Federal Court rejected this argument, finding that this allegation only related to DeepRoot’s commercial product. Both patents were found valid and infringed. 

Extension of Time

Rule 397(1)(b) of the Federal Court Rules states that a party may serve and file a notice of motion within 10 days after the making of an order, to request that the Court reconsider its terms on the ground that “a matter that should have been dealt with has been overlooked or accidentally omitted.” Although Rule 8 allows the Court to extend the time limits provided in the Rules, the FCA found that such an extension was not appropriate in this case.

The case law establishes that an extension of time should be granted in circumstances where the party seeking the extension shows that granting it is in the interests of justice. The relevant circumstances to establish this include whether:

• The party seeking the extension has a continuing intention to pursue the matter, which commenced before the relevant time limit expired;
• There is a reasonable explanation for the delay;
• There is some merit to the party’s application; and
• There is no prejudice to the opposite delay.

The FCA found the motion was brought well outside the ten day-time limit of Rule 397. Greenblue claimed the delay was due to the fact that the matter was complex, and they wanted to settle the issue before seeking leave to appeal to the Supreme Court. However, Greenblue failed to provide any evidence of intent to file the motion within the relevant ten-day time limit.

The Court held that Greenblue had been represented by experienced counsel, who should have “easily been able to grasp within the required ten days whether an issue was unaddressed by the Court.”. The Court also concluded that there was no rational connection between the deadline for seeking leave to appeal to the Supreme Court of Canada and the deadline to bring a Rule 397 motion.

Overbreadth

On this motion, Greenblue argued that the FCA failed to deal with its overbreadth arguments. If its arguments had been addressed, Greenblue claimed that the appeal would have been allowed for lack of an upper limit to the term “at least approximately 85%” soil volume in Claim 1 of the Patents. The claims included a “100% soil volume”, which Greenblue argued would have been impossible.

The FCA rejected this argument. The Court found that the “the bulk – if not the totality” of Greenblue’s overbreadth submissions were that the claims were broader than the invention made. The Federal Court had dealt with Greenblue’s arguments, as Greenblue eventually conceded in its reply submissions.

The FCA further found that in reading the patents with a mind willing to understand, “an upper limit sufficient to allow for the structure of a cell must be understood to be part of Claim 1 in the two Patents.” The Court further stated that “a patent is not invalid merely because it leaves open to the skilled person to avoid unsuitable choices.”

The FCA therefore dismissed the motion with costs. A copy of the decision can be found here.