Date: 20060824
Docket: T-262-06
Citation: 2006 FC 1021
BETWEEN:
GENENCOR
INTERNATIONAL, INC.
Appellant
and
COMMISSIONER OF PATENTS
and NOVOZYMES A/S
Respondents
REASONS FOR ORDER
PINARD J.
[1]
This
is a motion on behalf of the appellant for an Order setting aside the Order of
Me Richard Morneau, Prothonotary, dated July 13, 2006, with costs. Upon
hearing counsel for the parties and upon reviewing all the material filed, I am
of the view that the Prothonotary erred in the application that he made of Rule
338(1)(a) of the Federal Courts Rules, SOR/98-106, in the context
of sections 48.1 to 48.5 of the Patent Act, R.S.C. 1985, c. P-4, as
amended. In that regard, I am in general agreement with paragraphs 14 to 31 inclusive
of the Appellant’s Written Submissions, which read:
a)
A
Right of Appeal is a Statutory Right
14.
It is
respectfully submitted that Prothonotary Morneau errs in stating the “central
issue is whether Novozymes should be considered such a party “in the first
instance” within the meaning of rule 338(1)(a)” (para. 27 of decision).
Appellant’s Motion Record to Appeal the
decision of Prothonotary Morneau dated July 13, 2006, Order of Prothonotary
Morneau dated July 13, 2006, Tab B, Page 18
15.
The appeal
instituted by Genencor International, Inc. (hereinafter “Genencor”) from the
decision of the Re-Examination Board is a statutory recourse. It is only
possible if provided for by statute. As stated by the Supreme Court of Canada:
[…] there are no words in the statute
which would give this court jurisdiction to hear the appeal. We think that an
appeal, which is unknown to the common law, must be given by statute in such
clear and explicit language that the right to appeal cannot be doubted.
Chagnon v. Normand, [1989] 16 S.C.R. 661 at 662
(Appellant’s Book of Authorities, Tab 5)
See also Restaurants Panini Inc. c.
Pachino’s Pizza Ltd., [1994] A.C.F. no 1607, at 8 (Appellant’s Book of
Authorities, Tab 6)
The right of appeal is an exceptional
right. That all the substantive provisions relating to it must be regarded as
exhaustive and exclusive, need not be expressly stated in the statute. That
necessarily flows from the exceptional nature of the right.
Welch v. The King, [1950] S.C.R. 412 at 428
(Appellant’s Book of Authorities, Tab 7)
16.
Rule
338(1)(a) of the Federal Courts Rules cannot afford any right of appeal
to Novozymes. Similarly, in the absence of Novozymes having any right of appeal
accorded to it by statute, it cannot be a party respondent. The Federal
Courts Rules codify the procedure before the Federal Court but cannot in
the present circumstances give rights to Novozymes which the Patent Act
has not granted.
17.
In the
present case, Section 48.5 of the Patent Act is the relevant statutory
provision. It gives a right of appeal to the patentee only.
48.5 (1) Any decision of a re-examination
board set out in a certificate issued under subsection 48.4(1) is subject to
appeal by the patentee to the Federal Court. (emphasis added)
Patent Act, R.S. 1985, c. P-4 (Appellant’s Book of
Authorities, Tab 1)
18.
It is respectfully
submitted that Prothonotary Morneau erred in law in concluding that Novozymes
should be added as a respondent since Novozymes is accorded no right of appeal
under the Patent Act.
19.
At
paragraph 34, Prothonotary Morneau states that a “re-examination request
creates a lis or quasi lis between the requester and the patentee”. As
submitted above, rights of appeal can only be given by statute and it is
submitted that Prothonotary Morneau errs in law in relying on the concept of lis
or quasi lis to make Novozymes a party to the appeal.
Appellant’s Motion Record to Appeal the
decision of Prothonotary Morneau dated July 13, 2006, Tab B, Page 20
b)
Improper
Construction of the Statutory Framework
20.
It is
respectfully submitted that Prothonotary Morneau erred in law in failing to
properly consider and construe the statutory framework, namely Sections 48.1 to
48.5 of the Patent Act, in determining the rights of Novozymes, if any,
in the present appeal proceeding. In order to properly construe Rule 338(1)(a)
of the Federal Courts Rules, one must first construe sections 48.1 to
48.5 of the Patent Act to ascertain what was the “first instance”
referred to in the Rules.
21.
It is well
settled that a statute is to be interpreted to make its whole coherent.
Every component contributes to the
meaning as a whole, and the whole gives meaning to its parts” (P.A. Côté
writing about statutory interpretation in The Interpretation of Legislation in Canada (1984), at page 236.
R. v. Dubois [1985] 2 S.C.R. 350 at 365 (para. 40)
(Appellant’s Book of Authorities, Tab 8)
22.
The words
of a statute are to be interpreted in their ordinary grammatical sense.
In the construction of statutes their
words must be interpreted in their ordinary grammatical sense, unless there be
something in the context, or in the object of the statute in which they occur,
or in the circumstances with reference to which they are used, to show that
they were used in a special sense different from their ordinary grammatical
sense.
Corporation of the City of Victoria v. Bishop of Vancouver Island, [1921] 2 A.C. 384 at 387
(P.C.) (Appellant’s Authorities, Tab 9)
Today there is only one principle or
approach, namely, the words of an Act are to be read in their entire context,
in their grammatical and ordinary sense harmoniously with the scheme of the
Act, the object of the Act, and the intention of Parliament.
Sullivan and Driedger on the Construction
of Statutes, Toronto, Butterworths, 2002 at page 1
(Appellant’s Book of Authorities, Tab 10)
Re Rizzo & Rizzo Shoes Ltd. [1998] 1 S.C.R. 27 at 41
(Appellant’s Authorities, Tab 11)
23.
Re-examination
is provided by Sections 48.1 to 48.5 of the Patent Act . It is
respectfully submitted that a re-examination of a patent as provided for in the
Patent Act is a two-stage process and that both stages do not involve
the same parties. The first stage involves the filing of a request by a
requester (s. 48.1), the establishment of the Re-Examination Board by the
Commissioner in response to this request (s. 48.2(1)) and the preliminary decision
by the Board as to whether the request raises a substantial new question of
patentability (s. 48.2(2) to (4)). The second stage begins when the Board
determines that a substantial new question of patentability is raised. Then
begins the re-examination proceeding per see (s. 48.3).
Patent Act, R.S. 1985, c. P-4 (Appellant’s Book of
Authorities, Tab 1)
24.
It is also
to be noted that section 48.3 commences with the heading “Re-examination
proceeding”. This heading forms an integral part of the statute and can be used
in its interpretation.
Headings in a statute can properly be
taken into account in determining the intentions of Parliament.
R. v. Lucas [1998] 1 S.C.R. 439, para. 47 (Appellant’s Book of Authorities Tab
12)
R. v. Skoke Graham [1985] 1 S.C.R. 106, paras. 38-41 (Appellant’s Book of Authorities,
Tab 13)
25.
The Patent
Act is very specific and clearly provides which parties are involved, the
nature of the contents of the communications between the parties and the Board,
who is entitled to receive copies of correspondence in the course of the
re-examination and the rights of appeals of the parties, if any. In this
regard, the involvement of the requester in the re-examination is limited to
the filing of relevant prior art and an explanation of the relevance of the
prior art to the patentability of the claims. The Patent Act provides at
section 48.2(3) that the decision of the Board as to whether a substantial new
question of patentability is raised is final for all purposes and is not
subject to appeal or to review by any court. This is further reflected in
section 48.3 to 48.5 of the Patent Act where the only party mentioned is
the patentee and further confirmed by the fact that only the patentee is given
the right to appeal the final decision of the Board (s. 48.5). There is no
mention of the requester in section 48.3 and following and no mention of the
requester having any right to file further communications with the Board or
having the right to even receive a copy of the decision of the Board (s. 48.4(2)).
26.
At
paragraph 30 of his decision, Prothonotary Morneau acknowledges that s. 48.2(4)
of the Patent Act “appears to indicate that the active involvement of
the…requester ceases once the Board has made a determination…that a substantial
new question of patentability has been raised by the requester”. However, at
paragraph 31 of his decision, Prothonotary Morneau states as follows: “However,
subsection 48.3(1) by still referencing at this phase the request for
re-examination submitted under subsection 48.1(1) demonstrates that the
requester is not shut out from the process and that its presence and
participation is nevertheless there through its re-examination request. At the
re-examination proceeding phase under section 48.3, the involvement of
Novozymes might be considered more limited than the active participation
Genencor may enjoy, but one cannot consider that Novozymes and its adverse
interest demonstrated at the beginning of the process are not present at the
re-examination proceeding phase”.
Appellant’s Motion Record to Appeal the
decision of Prothonotary Morneau dated July 13, 2006, Tab B, Page 19
27.
It is
respectfully submitted that Prothonotary Morneau errs in law in concluding as
he does as his decision defeats the plain meaning of the Patent Act.
28.
As a
result of the interpretation made by Prothonotary Morneau, Novozymes is
afforded rights of appeal which are not provided to it by the Patent Act.
General rules of statutory interpretation provide a presumption against
intending what is inconvenient or unreasonable. It is respectfully submitted
that the decision of Prothonotary Morneau leads to a strange result in that
section 48.5 of the Patent Act would have to be read to give Novozymes
limited appeal rights, although the statute is silent to that effect. The end
result would be that the patentee and the requester would have different
rights, with Genencor having a right of appeal and Novozymes having only a
right to be a respondent, in the event of an appeal by Genencor. It is
submitted that this result points to an incorrect interpretation of the
statute. If the Patent Act is given its ordinary meaning, the
re-examination proceeding under Section 48.3 of the Patent Act and
following involves only the Re-Examination Board and the patentee. It is then
logical that only the patentee has a right of appeal (Section 48.5). This also
accords with the fact that only the patentee is mentioned in section 48.3 and
following and not the requester.
An intention to produce an unreasonable
result is not to be imputed to a statute if there is some other construction
available.
Artemiou v. Procopiou [1966] 1
Q.B. 878 at 888 (Appellant’s Book of Authorities, Tab 14)
Gordon v. Cradock
[1994] 1 Q.B. 503 at 506 (Appellant’s Book of Authorities, Tab 15)
c)
Extrinsic
Aids and Error of Fact and Law
29.
Prothonotary
Morneau finds support for the proposition that Novozymes is a party to the
re-examination proceeding in the wording of the decision of the Re-Examination
Board which references the request for re-examination (paras. 32 and 33 of the
decision) as well as the filing with the Board of two further submissions by
Novozymes (see paras. 11 and 14 of decision). Having regard to the latter, it
is of importance to note that Genencor had no knowledge of such submissions as
it had not received copies of same and those only came to its attention upon
receipt of Novozymes’ motion record. As a result of this, Genencor has amended
its proceeding to allege breach of natural justice. It is submitted that
Prothonotary Morneau errs in law in placing any reliance on the wording of the
decision or the conduct of the parties in interpreting the Patent Act.
It is well settled that until recently, Canadian Courts were reluctant to allow
the use of extrinsic materials as an aid to interpretation. While extrinsic
aids are now allowed in some circumstances, these usually take the form of
legislative history, academic publications and the like. It is submitted that
the wording of the decision of the Board, which is the subject of the appeal or
the conduct of Novozymes during the re-examination, which is also the subject
of the appeal cannot be used as aids in the interpretation of the Patent Act
and that Prothonotary Morneau erred in putting any reliance thereon.
Sullivan and Driedger, supra, c. 19 (Appellant’s Book of
Authorities, Tab 16)
30.
Prothonotary
Morneau holds that Novozymes should be a party respondent in the present appeal
on the ground that it was a party in the “first instance” within the meaning of
Rule 338(1) of the Federal Courts Rules. It is submitted that the “first
instance” in the Federal Courts Rules can only be a reference to the
proceeding which leads to the appeal. Under the present circumstances, such a
proceeding is the re-examination proceeding under s. 48.3 of the Patent Act,
which involves only the Board and the patentee and is the proceeding which only
the patentee has a right to appeal from.
31.
In
summary, it is submitted that Prothonotary Morneau erred in law finding that
Novozymes was a party in the first instance since this clearly defeats the
statutory scheme. Furthermore, Prothonotary Morneau errs in having regard to
the language used in the decision of the Re-Examination Board or in the conduct
of the requester Novozymes (in the filing of additional communications with the
Board in the absence of statutory provisions allowing such communications) to
accord to Novozymes greater rights than are accorded to it by statute.
[2]
Consequently,
the appellant’s motion is granted and the Order of Prothonotary Morneau, dated
July 13, 2006, is set aside, with costs.
[3]
Counsel
for the parties have agreed before me that in the event that the appellant’s
motion would so be granted, the respondent Novozymes A/S ought to be allowed to
formally re-apply to seek leave to intervene pursuant to Rule 109 of the Federal
Courts Rules, in the appellant’s appeal made pursuant to section 48.5 of
the Patent Act. Accordingly, such permission to bring a fresh motion
seeking leave to intervene is granted. The respondent Novozymes A/S is allowed
ten (10) days from the date of this Order to do so.
“Yvon
Pinard”
Ottawa, Ontario
August
24, 2006
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