Date: 20060713
Docket: T-262-06
Citation: 2006 FC 876
BETWEEN:
GENENCOR INTERNATIONAL, INC.
Appellant
and
COMMISSIONER OF PATENTS
Respondent
and
NOVOZYMES A/S
Proposed Respondent/Intervener
REASONS FOR ORDER
MORNEAU P.
[1] This is a motion by the proposed respondent Novozymes A/S (Novozymes) under rules 104(1)(b), 338(1)(a) and 339 of the Federal Courts Rules (the rules) for an order to be added as a party respondent or, in the alternative, as an intervener under rule 109.
[2] The proceeding to which Novozymes wishes to be so added is an appeal issued by the appellant Genencor International, Inc. (Genencor) pursuant to section 48.5 of the Patent Act, R.S.C. 1985, c. P-4, as amended (the Patent Act) against a certificate or decision issued by a re-examination board established under the authority of the Commissioner of Patents (the Board) on November 16, 2005 wherein the Board concluded that all claims of the patent number 2,093,422 issued to Genencor on April 3, 2001 (the patent in suit) were anticipated by a prior art patent application, to wit the Rasmussen application as referred to between the parties.
Factual and Statutory Background
[3] On April 15, 2004, Novozymes, through its agent, requested a re-examination of the patent in suit under subsection 48.1(1) of the Patent Act. Pursuant to subsection 48.1(3) of the same act, a copy of this request was forwarded to Genencor.
[4] Section 48.1 of the Patent Act reads as follows:
| 48.1 (1) Any person may request a re-examination of any claim of a patent by filing with the Commissioner prior art, consisting of patents, applications for patents open to public inspection and printed publications, and by paying a prescribed fee.
(2) A request for re-examination under subsection (1) shall set forth the pertinency of the prior art and the manner of applying the prior art to the claim for which re-examination is requested.
(3) Forthwith after receipt of a request for re-examination under subsection (1), the Commissioner shall send a copy of the request to the patentee of the patent in respect of which the request is made, unless the patentee is the person who made the request.
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48.1 (1) Chacun peut demander le réexamen de toute revendication d'un brevet sur dépôt, auprès du commissaire, d'un dossier d'antériorité constitué de brevets, de demandes de brevet accessibles au public et d'imprimés et sur paiement des taxes réglementaires.
(2) La demande énonce la pertinence du dossier et sa correspondance avec les revendications du brevet.
(3) Sur réception de la demande, le commissaire en expédie un double au titulaire du brevet attaqué, sauf si celui-ci est également le demandeur.
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[5] Novozymes underlines that, in addition to having paid the important prescribed fee of $2,000 for its request, said request contained detailed written submissions explaining how the subject matter of the claims of the patent in suit were either anticipated or obvious in view of the prior art it tendered to the Commissioner of Patents (the Commissioner).
[6] Pursuant to subsection 48.2(1) of the Patent Act, the Commissioner convened the Board to assess the questions of patentability that had been raised by Novozymes.
[7] Section 48.2 reads:
| 48.2 (1) Forthwith after receipt of a request for re-examination under subsection 48.1(1), the Commissioner shall establish a re-examination board consisting of not fewer than three persons, at least two of whom shall be employees of the Patent Office, to which the request shall be referred for determination.
(2) A re-examination board shall, within three months following its establishment, determine whether a substantial new question of patentability affecting any claim of the patent concerned is raised by the request for re-examination.
(3) Where a re-examination board has determined that a request for re-examination does not raise a substantial new question affecting the patentability of a claim of the patent concerned, the board shall so notify the person who filed the request and the decision of the board is final for all purposes and is not subject to appeal or to review by any court.
(4) Where a re-examination board has determined that a request for re-examination raises a substantial new question affecting the patentability of a claim of the patent concerned, the board shall notify the patentee of the determination and the reasons therefor.
(5) A patentee who receives notice under subsection (4) may, within three months of the date of the notice, submit to the re-examination board a reply to the notice setting out submissions on the question of the patentability of the claim of the patent in respect of which the notice was given.
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48.2 (1) Sur dépôt de la demande, le commissaire constitue un conseil de réexamen formé d'au moins trois conseillers, dont deux au moins sont rattachés au Bureau des brevets, qui se saisissent de la demande.
(2) Dans les trois mois suivant sa constitution, le conseil décide si la demande soulève un nouveau point de fond vis-à-vis de la brevetabilité des revendications du brevet en cause.
(3) Le conseil avise le demandeur de toute décision négative, celle-ci étant finale et ne pouvant faire l'objet d'un appel ou d'une révision judiciaire.
(4) En cas de décision positive, le conseil expédie un avis motivé de la décision au titulaire du brevet.
(5) Dans les trois mois suivant la date de l'avis, le titulaire en cause peut expédier au conseil une réponse exposant ses observations sur la brevetabilité des revendications du brevet visé par l'avis.
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[8] On September 3, 2004, pursuant to subsection 48.2(4), the Board determined that Novozymes' request for re-examination raised a substantial new question of patentability and, pursuant to the same provision, Genencor, the patentee, was so notified.
[9] Pursuant to subsection 48.2(5), Genencor was given a period of three months to respond to the Board's findings. Although subsections 48.2(4) and (5) provide a notification and a reply period in favour solely of the patentee, the September 3, 2004 notification of the Board was nevertheless copied by it to Novozymes.
[10] On December 3, 2004, Genencor, through its agents, filed with the Board a reply (or response) under subsection 48.2(5) arguing that the claims were both novel and non-obvious in view of the art cited. Said response by Genencor was not copied to or served on Novozymes as subsection 48.2(5) does not contemplate so.
[11] Having been copied by the Board of its notification and having most likely accessed the Genencor's response of December 3, 2004, Novozymes saw fit on March 14, 2005 to submit to the Board written submissions in reply to the aforementioned documents. Novozymes did not copy Genencor of said correspondence with the Board.
[12] On May 9, 2005, the Board issued to Genencor a further notification holding that the request for re-examination still raised a substantial new question of patentability, particularly in respect of the novelty of the Genencor patent in view of the Rasmussen patent application. Again, said notification was copied to Novozymes.
[13] As allowed by said notification and still pursuant to subsection 48.2(5), Genencor on August 9, 2005 filed (without sending, as done previously, a copy to Novozymes) with the Board a further response.
[14] As done previously on March 14, 2005, Novozymes submitted to the Board on September 29, 2005 further submissions.
[15] It would appear that sometime after August 9, 2005, and pursuant to section 48.3 of the Patent Act, the Board caused what subsection 48.3(2) identifies as a re-examination proceeding wherein it proceeded to re-examine the patent in suit.
[16] Section 48.3 of the Patent Act reads as follows:
| 48.3 (1) On receipt of a reply under subsection 48.2(5) or in the absence of any reply within three months after notice is given under subsection 48.2(4), a re-examination board shall forthwith cause a re-examination to be made of the claim of the patent in respect of which the request for re-examination was submitted.
(2) In any re-examination proceeding under subsection (1), the patentee may propose any amendment to the patent or any new claims in relation thereto but no proposed amendment or new claim enlarging the scope of a claim of the patent shall be permitted.
(3) A re-examination proceeding in respect of a claim of a patent shall be completed within twelve months of the commencement of the proceedings under subsection (1).
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48.3 (1) Sur réception de la réponse ou au plus tard trois mois après l'avis mentionné au paragraphe 48.2(4), le conseil se saisit du réexamen des revendications du brevet en cause.
(2) Le titulaire peut proposer des modifications au brevet ou toute nouvelle revendication à cet égard qui n'ont pas pour effet d'élargir la portée des revendications du brevet original.
(3) Le réexamen doit être terminé dans les douze mois suivant le début de la procédure.
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[17] As indicated previously (see paragraph 2, supra), on November 16, 2005, the Board issued its decision under section 48.4 (the Board's decision) wherein it found all claims of the patent in suit to be anticipated by the Rasmussen application, and the Board issued accordingly a certificate. Here also, the Board copied Novozymes with its decision.
[18] Section 48.4 reads:
| 48.4 (1) On conclusion of a re-examination proceeding in respect of a claim of a patent, the re-examination board shall issue a certificate
(a) cancelling any claim of the patent determined to be unpatentable;
(b) confirming any claim of the patent determined to be patentable; or
(c) incorporating in the patent any proposed amended or new claim determined to be patentable.
(2) A certificate issued in respect of a patent under subsection (1) shall be attached to the patent and made part thereof by reference, and a copy of the certificate shall be sent by registered mail to the patentee.
(3) For the purposes of this Act, where a certificate issued in respect of a patent under subsection (1)
(a) cancels any claim but not all claims of the patent, the patent shall be deemed to have been issued, from the date of grant, in the corrected form;
(b) cancels all claims of the patent, the patent shall be deemed never to have been issued; or
(c) amends any claim of the patent or incorporates a new claim in the patent, the amended claim or new claim shall be effective, from the date of the certificate, for the unexpired term of the patent.
(4) Subsection (3) does not apply until the time for taking an appeal has expired under subsection 48.5(2) and, if an appeal is taken, subsection (3) applies only to the extent provided in the final judgment on the appeal.
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48.4 (1) À l'issue du réexamen, le conseil délivre un constat portant rejet ou confirmation des revendications du brevet attaqué ou, le cas échéant, versant au brevet toute modification ou nouvelle revendication jugée brevetable.
(2) Le constat est annexé au brevet, dont il fait partie intégrante. Un double en est expédié, par courrier recommandé, au titulaire du brevet.
(3) Pour l'application de la présente loi, lorsqu'un constat :
a) rejette une revendication du brevet sans en rejeter la totalité, celui-ci est réputé, à compter de la date de sa délivrance, délivré en la forme modifiée;
b) rejette la totalité de ces revendications, le brevet est réputé n'avoir jamais été délivré;
c) modifie une telle revendication ou en inclut une nouvelle, l'une ou l'autre prend effet à compter de la date du constat jusqu'à l'expiration de la durée du brevet.
(4) Le paragraphe (3) ne s'applique qu'à compter de l'expiration du délai visé au paragraphe 48.5(2). S'il y a appel, il ne s'applique que dans la mesure prévue par le jugement définitif rendu en l'espèce.
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[19] By way of a notice of appeal dated February 14, 2006, Genencor appealed the Board's decision.
[20] Genencor's appeal was brought pursuant to section 48.5 of the Patent Act. This section reads:
| 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.
(2) No appeal may be taken under subsection (1) after three months from the date a copy of the certificate is sent by registered mail to the patentee.
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48.5 (1) Le titulaire du brevet peut saisir la Cour fédérale d'un appel portant sur le constat de décision visé au paragraphe 48.4(1).
(2) Il ne peut être formé d'appel plus de trois mois après l'expédition du double du constat au titulaire du brevet.
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[21] On Genencor's notice of appeal, the one respondent named is the Commissioner. Novozymes was not also served with the notice of appeal.
[22] Hence the instant motion by Novozymes to be added as a respondent or as an intervener.
Analysis
[23] By virtue of rule 335(c), Genencor's appeal is governed by Part 6 of the rules which deals with "Appeals". Rule 335(c) reads:
| 335. This Part applies to
(...)
(c) appeals to the Court under an Act of Parliament, unless otherwise indicated in that Act or these Rules.
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335. La présente partie s'applique aux appels suivants :
(...)
c) les appels interjetés devant la Cour en vertu d'une loi fédérale, sauf disposition contraire des présentes règles ou de cette loi.
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[24] Rule 338 indicates whom an appellant such as Genencor shall include as a respondent party. It provides:
| 338. (1) Unless the Court orders otherwise, an appellant shall include as a respondent in an appeal
(a) every party in the first instance who is adverse in interest to the appellant in the appeal;
(b) any other person required to be named as a party by an Act of Parliament pursuant to which the appeal is brought; and
(c) where there are no persons that are included under paragraph (a) or (b), the Attorney General of Canada.
(2) On a motion by the Attorney General of Canada, where the Court is satisfied that the Attorney General is unable or unwilling to act as a respondent in an appeal, the Court may substitute another person or body, including a tribunal whose order is being appealed, as a respondent in the place of the Attorney General of Canada.
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338. (1) Sauf ordonnance contraire de la Cour, l'appelant désigne les personnes suivantes à titre d'intimés dans l'appel :
a) toute personne qui était une partie dans la premère instance et qui a dans l'appel des intérêts opposés aux siens;
b) toute autre personne qui doit être désignée à titre de partie aux termes de la loi fédérale qui autorise l'appel;
c) si les alinéas a) et b) ne s'appliquent pas, le procureur général du Canada.
(2) La Cour peut, sur requête du procureur général du Canada, si elle est convaincue que celui-ci est incapable d'agir à titre d'intimé ou n'est pas disposé à le faire, désigner en remplacement une autre personne ou entité, y compris l'office fédéral dont l'ordonnance fait l'objet de l'appel.
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[25] Novozymes' first contention is to the effect that by virtue of rule 338(1)(a), Genencor should have named it as a respondent to the appeal since Novozymes considers that it was a party in the first instance who was adverse in interest to the appellant Genencor.
[26] For the following reasons, I believe that Novozymes is correct in its approach.
[27] There appears to be no debate between the parties that Novozymes is a party adverse in interest to Genencor. The central issue is whether Novozymes should be considered such a party "in the first instance" within the meaning of rule 338(1)(a).
[28] Although I can agree to a large extent that the re-examination of a patent under sections 48.1 to 48.5 of the Patent Act contemplates a two-step process, I cannot agree however with Genencor that, for the purpose of determining what the expression "first instance" means under rule 338(1), this scenario is determinative.
[29] Genencor sustains essentially that "first instance" at rule 338(1)(a) shall be limited to a party who took an active role at the re-examination proceeding contemplated by section 48.3 of the Patent Act.
[30] It is true that the wording of subsection 48.2(4) appears to indicate that the active involvement of the subsection 48.1(1) requester ceases once the Board has made a determination, as here, that a substantial new question of patentability has been raised by the requester. In that regard, subsection 48.2(4) indicates that the Board is to notify the patentee and does not provide for a similar notification to the requester. In the same direction, subsection 48.2(5) affords to the patentee only a right to file a reply.
[31] 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.
[32] That implication of Novozymes throughout the process of sections 48.1 to 48.4 is reinforced by the way the Board expressed itself at the beginning of its decision:
In accordance with Subsection 48.2(2) of the Patent Act, the Re-examination Board has further reviewed the request for re-examination of claims 1 to 21 of Patent number 2,093,422 as well as the patentee's comments put forward in the responses dated December 3, 2004 and August 9, 2005. The Board has determined that the request still raises a substantial new question of patentability with regard to these claims.
[33] One would be hard-pressed to deny that the outcome reflected in the Board's decision must be based to a large extent on the position expressed by Novozymes in its request for re-examination.
[34] In that regard, one can consider that Novozymes has participated and has been heard by the Board at first instance. Even though Novozymes' participation might not stand on the same scale as a party involved in a trade-mark expungement proceeding before the Trade Mark Registrar, I would venture that a re-examination request creates a lis or quasi lis between the requester and the patentee (see Mayborn Products Ltd. v. Canada (Registrar of Trade Marks) 1983 CarswellNat 49).
[35] For these reasons, I agree with Novozymes that it must be seen within rule 338(1)(a) as a party in the first instance who is adverse in interest to Genencor in the within appeal. I shall therefore issue an order adding Novozymes as a respondent party in the within appeal. The style of cause and other consequential procedural aspects will also be dealt with in the accompanying order.
[36] Given this conclusion, there is no need to consider adding Novozymes under rule 104(1)(b) or as an intervener under rule 109.
[37] The addition of Novozymes as a respondent ensures in addition here that the Court will benefit from an active respondent. On that point, counsel for the existing respondent, the Commissioner, indicated at the hearing of the motion at bar that in accordance with the letter he filed with the Court on March 6, 2006, shortly after the filing of his notice of appearance, the Commissioner does not oppose Novozymes' motion to be added as respondent and that he, the Commissioner, does not intend to defend the merits of the Board's decision. In his letter the Commissioner, rightly so, pointed to the following extract from Genex Communications Inc. v. Canada (Attorney General), 2005 FCA 283:
[66] Whether in judicial review or appeal proceedings, the federal agency that made a decision is not authorized to come and defend the decision it made, still less to justify itself. As Mr. Justice Estey said in [1979] 1 S.C.R. 684">Northwestern Utilities Ltd. et al. v. Edmonton, [1979] 1 S.C.R. 684, at page 709 (where the agency had presented on appeal detailed and elaborate arguments in support of its decision), "[s]uch active and even aggressive participation can have no other effect than to discredit the impartiality of an administrative tribunal either in the case where the matter is referred back to it, or in future proceedings involving similar interests and issues or the same parties." The agency is entitled to be represented on appeal, but its submissions must in principle be limited to an explanation of its jurisdiction, its procedures and the way in which they unfolded.
[38] Consequently, similarly to the opinion of the Commissioner which is shared by Novozymes, I do not consider that the Commissioner is a proper party respondent to the appeal. Short of removing him as a party since I was not seized with a motion to that effect, I believe that all shall expect that he will remain a non active respondent at the merits of the appeal.
[39] As for costs of this motion, they go in favour of Novozymes.
[40] An order shall issue accordingly.
"Richard Morneau"
Montréal, Québec
July 13, 2006
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