Third time’s a charm? Court of Appeal again remits Weatherford’s induced infringement claim

On October 17, 2012, the Federal Court of Appeal issues it’s Reason for Judgment in Corlac Inc. et al v. Weatherford Canada et al. related to the infringement of Claim 17 of Weatherford’s Canadian Patent No. 2,095,937.


The Patent at issue, CA 2,095,937 is generally directed to a seal assembly used to fix problems of leaking stuffing boxes on rotary pumps used to protect against leakage and loss of oil at the surface of a producing oil well.  In 2010, Justice Phelan held that claims 1,6,9,11,14,15,16 and 17 were infringed and that these claims were not anticipated, obvious, or invalid pursuant to subsections 53(1) of 73(1) of the Patent Act. The Court of Appeal , finding the analysis of the issue of induced infringement deficient, subsequently granted the appeal only in respect of the infringement of Claim 17 and remitted the issue back to Justice Phelan.  Paragraphs 170 and 171 of the Court of Appeal’s Reasons provide:

[170]   Here, the judge’s analysis with respect to inducement is deficient. However, the analysis must be read in light of the other findings that he came to elsewhere in his reasons. Regrettably, having completed the exercise, I am not satisfied that the judge seized the substance of the critical issue in respect of inducement. His conclusion appears to be derived from his earlier finding of direct infringement.

[171]   I agree with the appellants that, in view of the test for inducement, the judge’s reasons do not provide for meaningful appellate review. Consequently, given the judge’s intimate familiarity with the record, I would return the issue of infringement of claim 17, that is inducement, to the judge to be determined in accordance with the established test.

On remand, Justice Phelan held that the Defendant’s submissions that their manuals do not teach the method of claim 17 was an attempt to re-argue a point he previously had decided against them at trial and was not overturned on appeal. As such, this issue was res judicata and Justice Phelan again found that Corlac had induced infringement of Claim 17.  Corlac again appealed.

Scope of issue remitted for redetermination

The Court held that the single issue to be decided was whether Justice Phelan had, in light of the Court of Appeal’s earlier instructions, improperly relied on the doctrine of res judicata,  the application of which the Court of Appeal characterized as  a question of law. The Court of Appeal held that Justice Phelan had incorrectly construed the scope of the issue remitted to him.  As the Court of Appeal had previously impugned the legal and factual components of whether the defendant induced infringement of Claim 17, Justice Phelan was required to re-determine whether the instruction manual directed the method claimed in this claim. Finding that Justice Phelan had failed to do so, the Court granted the appeal and again remitted the matter to the trial judge with the following instructions:

[D]oes the appellants’ instruction manual, properly understood, instruct the practice of the method of claim 17? Once this issue is determined, on the basis of the Judge’s findings at the prior redetermination hearing (which have not been challenged on this appeal), the Judge will decide whether the appellants have infringed claim 17.

A copy of the Court of Appeal’s Reasons for Judgment may be found here.