Date: 20070815
Docket: T-262-06
Citation: 2007
FC 843
Ottawa, Ontario, August 15, 2007
PRESENT: The Honourable Madam Justice Hansen
BETWEEN:
GENENCOR
INTERNATIONAL, INC.
Appellant
and
COMMISSIONER OF PATENTS and
ATTORNEY GENERAL OF CANADA
Respondents
and
NOVOZYMES A/S
Proposed Intervener
REASONS FOR ORDER AND ORDER
[1]
Novozymes A/S
(Novozymes) appeals from a decision of Prothonotary Tabib dismissing its
application for leave to intervene in these proceedings.
[2]
Genencor
International, Inc. (Genencor) is the owner of Canadian Patent 2,093,422 (’422 Patent).
Novozymes’ request for a re-examination of all claims of the ’422 Patent
pursuant to section 48.1 of the Patent Act, R.S.C. 1985, c. P-4 (Act)
ultimately resulted in the Re‑examination Board (Board) concluding that
all of the claims of the ’422 Patent were anticipated by Canadian patent
application 2,082,279 (Rasmussen) owned by Novozymes and tendered as prior art.
[3]
Genencor appealed the
decision of the Board to this Court naming the Commissioner of Patents as the
sole Respondent. Novozymes brought a motion to be named as a party Respondent,
or, in the alternative, that it be named as an intervener in the proceedings.
By order of a Prothonotary, Novozymes was added as a party Respondent. This decision
was overturned on appeal with leave granted to Novozymes to reapply for
intervener status. The Federal Court of Appeal upheld this latter decision.
[4]
In dismissing the
appeal, the Court of Appeal explained that the re-examination procedure
provided in sections 48.1 to 48.5 of the Act is a two-stage process and that
the same parties are not involved in both stages. At the second stage, only the
patentee is given notice of the Board’s determination that a substantial new
question of patentability is raised, is entitled to make submissions, and has a
right of appeal from the Board’s decision. The requester is not a party to the
second stage of the process.
[5]
Pursuant to the leave
granted by this Court, Novozymes applied for leave to intervene in this proceeding.
Prothonotary Tabib dismissed the motion. Novozymes now appeals from this
decision.
[6]
The standard of
review applicable to a prothonotary’s discretionary order is well established.
The order should not be disturbed unless it is based on a misapprehension of
the facts or a wrong principle or if the questions raised in the motion are
vital to the final issue in the proceeding (Merck & Co. v. Apotex Inc.,
2003 FCA 488 at para. 19).
Although Novozymes did not address the question of the appropriate standard of
review, it did not take issue with Genencor’s submission that the grant of
intervener status was not a question vital to the final issue in the case.
[7]
Novozymes submits
that the Prothonotary’s decision is underpinned by her finding that since
Novozymes did not have standing on Genencor’s appeal it should not have standing
as an intervener.
[8]
Novozymes maintains
the jurisprudence establishes that the central focus of the analysis is whether
the participation of the proposed intervener will assist the Court in resolving
the dispute. Despite having recognized and acknowledged that the participation
of Novozymes would assist the Court in determining the merits of Genencor’s
appeal, the Prothonotary nonetheless dismissed the motion on the basis that the
Court could decide the appeal without the active participation of a party
defending the Board’s decision.
[9]
Further, in reaching
the conclusion that Novozymes should not be granted intervener status, the
Prothonotary misconstrued and misapplied the factors relevant to the analysis
identified in the jurisprudence.
[10]
Novozymes argues that
Prothonotary Tabib erred by failing to recognize that its legal rights and
interests would be affected by the construction of the ’422 Patent claims and,
potentially, the Rasmussen claims within the context of Genencor’s appeal on
its merits. Since claims construction is a question of law, any construction
of the ’422 Patent claims or those of Rasmussen adopted by the Court on the
Genencor appeal, would be viewed as conclusive in any later proceeding in which
Novozymes may be involved.
[11]
Novozymes submits
that the Prothonotary erred in finding that it was both reasonable and efficient
for a fresh proceeding to be commenced to address a question already before the
Court. That is, Novozymes could institute an impeachment action to invalidate
the ’422 Patent.
[12]
Novozymes submits
that Prothonotary Tabib erred in law by finding that the Commissioner was the
appropriate party to oppose Genencor’s appeal on the merits, to defend the
decision of the Board, and to adequately defend the position of the proposed
intervener.
[13]
As well, having found
that there is no public interest at stake in Genencor’s appeal and that the
appeal relates only to private economic interests, the Prothonotary erroneously
concluded that Novozymes’ participation would not assist the Court in Genencor’s
appeal.
[14]
In my opinion,
Novozymes has grounded certain of its arguments on a misinterpretation or
misstatement of the Prothonotary’s reasons. Contrary to Novozymes’ submission,
the Prothonotary did not find that since Novozymes did not have party status it
should not be granted intervener status.
[15]
On the motion before
the Prothonotary, Novozymes premised its argument on its contention that the
re-examination provisions of the Act provide a summary procedure for third
parties to seek revocation of some or of all of the claims of a patent similar
to the summary expungment procedure found in section 45 of the Trade-marks
Act, R.S.C. 1985, c. T-13. Based on the Court of Appeal’s reasons in
relation to Novozymes’ standing as a party, the Prothonotary rejected Novozymes’
characterization of the re-examination provisions. In particular, given that
third parties did not have a role beyond the first stage in the re-examination
procedure, she concluded that Parliament did not intend to give third parties a
summary process to directly challenge a patent. The Prothonotary went on to
consider the factors identified in the jurisprudence to determine whether
Novozymes should be granted leave intervene in the proceedings.
[16]
Further, contrary to
Novozymes’ assertion, the Prothonotary did not find that the presence of
Novozymes would assist the Court in deciding the merits of the appeal.
Instead, the Prothonotary observed that an active respondent would make the
Court’s work easier but that it was not necessary for the Court to fulfill its
role in the matter.
[17]
As noted earlier,
Novozymes argues that the Prothonotary erred in finding that Novozymes’
interest was only economic and that it did not have a legal interest. First,
with respect to the consequences to Novozymes flowing from a construction of
the ’422 Patent claims on the appeal of the re-examination decision, it remains
open whether in these circumstances the principle of judicial comity would be
applicable in subsequent proceedings in which the construction of the ’422 Patent
claims would arise. However, even if it did apply, such a construction would
have general application and would not be limited to Novozymes.
[18]
Second, Novozymes’
submission that a construction of the Rasmussen claims within Genencor’s appeal
will directly affect its legal interest is also flawed. On appeal, the Court
will have to determine whether the Board erred in concluding that the ’422 Patent
claims are anticipated by the Rasmussen application. Given the nature of the
question, I am not persuaded that it will be necessary for the Court to engage
in a construction of the Rasmussen claims. Instead, the Court will have to
consider what the Rasmussen application discloses as a piece of prior art.
[19]
As to Novozymes’
assertion that the Prothonotary erred in relation to the factor as to whether
there is a lack of any other reasonable or efficient means of submitting the
question to the Court, Novozymes frames the question as the correctness of the
Board’s decision to revoke the ’422 Patent. Novozymes argues that there is no
other avenue to determine the “correctness” of this decision. Alternatively,
Novozymes argues that if the “question before the Court” is framed as whether
the ’422 Patent is anticipated by Rasmussen, then the Prothonotary’s finding
that it would be both reasonable and efficient for a fresh proceeding to be
commenced to address the identical issue already before the Court runs contrary
to the principle that a multiplicity of proceedings should be discouraged.
[20]
I accept the
submission that there is no other means to review the Board’s decision other
than by way of the statutory appeal. However, for the purpose of resolving
whether intervener status ought to be granted, the “question before the Court”
is whether the ’422 Patent claims are anticipated by Rasmussen. The
Prothonotary found that in terms of Novozymes’ interest in the patentability of
the claims, an impeachment action under section 60 of the Act was the
appropriate vehicle to submit the same question to the Court. I agree. In my
view, taking Novozymes’ argument to its logical conclusion would in effect
create a summary impeachment procedure through the re-examination process. As
Prothonotary Tabib concluded, this was not Parliament’s intent when the
re-examination provisions were enacted.
[21]
As to Novozymes
argument concerning the role of the Commissioner of Patents in Genencor’s
appeal, on my reading of the Prothonotary’s reasons she did not find that the
Commissioner was best placed to defend the decision on its merits. In fact,
the Prothonotary observed that the Commissioner quite properly did not intend
to defend the substantive issue on its merits. In terms of a potential dispute
with respect to the completeness of the record on appeal, the Prothonotary
noted that the Commissioner is in the best position to ensure that a complete
and accurate record is before the Court on the appeal in the event a dispute
should arise.
[22]
Regarding the
argument that there is no other party in a position to defend Novozymes’
position, it follows from the earlier discussion regarding the nature of
Novozymes’ interest that Novozymes does not have a legal interest requiring
representation in the proceedings.
[23]
Turning to the last
argument advanced, Novozymes submits that the Prothonotary erroneously
concluded that the interests of justice would be better served without the
presence of a “counterweight” to the position advanced by Genencor. As to the
role of the Attorney General of Canada, Novozymes takes the position that the
Attorney General may be reluctant to participate in a proceeding where he is
defending the private interests of one party over those of another particularly
in the absence of a public interest issue. On this latter point, at the
present time there is nothing before the Court to support this view.
[24]
With regard to
whether the interests of justice would be better served by the intervention of
the third party, the only argument advanced before the Prothonotary by
Novozymes centres on the difficulties for a judge on appeal when no party
appears to defend its merits. As the Prothonotary pointed out, while the
participation of an active respondent may make the task easier, this alone does
not justify the granting of intervener status.
[25]
For these reasons, I
conclude that Prothonotary Tabib’s decision was not based on a misapprehension
of the facts or a wrong principle. Accordingly, the appeal is dismissed with
costs to Genencor.
ORDER
THIS COURT ORDERS that: the appeal is dismissed with
costs payable by Novozymes to Genencor.
“Dolores
M. Hansen”
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