Infringement by Common Design - Part IV

May 21 2020

Patent infringement proceedings can be daunting at the best of times, but what does a patentee do when it believes multiple third parties are infringing its process? In this article, we will explore some of the issues that arise in pursuing infringement proceedings relating to a patented process and the hurdles to overcome.

A process patent is a type of utility patent that covers a method (i.e. a series of steps) for performing a function or changing the functionality or characteristics of a material during a specified use to achieve a desired product or result.

In our fourth scenario, a patentee has an issued patent for a process with multiple steps. Multiple third parties are performing the patented steps whereby no single third party infringes the patent, but the concerted collective effort of multiple third parties infringes the patent (this is known as infringement by "common design", "concerted action" or "agreed on common action").1 What recourse is available against these third parties?

While Canadian Courts have yet to hold multiple third parties liable for infringement by common design, they have recognized that the Courts in the United Kingdom have considered and applied infringement by common design.2 At common law in Canada, parties who act in concert to commit a tortious act can each be found liable if all of the parties involved arrived at an agreement to carry out the tort.3

However, if a patentee is going to assert infringement by common design, it is essential that they gather evidence that the third parties agreed to the concerted action. This can be proven, for example, if there is an agreement between the third parties or perhaps if a third party exerts effective control over the other third parties.

Furthermore, Canadian Courts have held that all third parties combining to perform the infringing action do not all need to be added as defendants in the litigation. That is, all potential joint tortfeasors need not be pleaded to sustain a cause of action against one of them.4 This law opens up the possibilities that a party who performs a single step of a patented process may be held liable for infringement for the full process if they were part of a concerted effort to infringe. This is particularly helpful where determining which parties to initiate a claim(s) against for infringement is complicated by the fact that patentee is unaware of the identity of each of the joint tortfeasors or if one of the steps is performed and/or a party is located, overseas.5

This article is for information purposes only and does not constitute legal or professional advice.

Author: Abbas Kassam

1 Bauer Hockey Corp v Easton Sports Canada Inc, 2010 FC 361 at para. 206.
2 Ibid.
3 Packers Plus Energy Services Inc. v. Essential Energy Services Ltd., 2017 FC 1111 at para. 48.
4 Genentech, Inc. v. Celltrion Healthcare Co., 2019 FC 293 at para. 44.
5 For a discussion of importing products produced by an infringing process see our second scenario article here.

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Tags: Abbas Kassam, Patent Infringement, Patents