BETWEEN:
and
and NOVOZYMES A/S
REASONS FOR ORDER
[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.
Ottawa, Ontario
August 24, 2006
FEDERAL COURT
SOLICITORS OF RECORD
DOCKET: T-262-06
STYLE OF CAUSE: GENENCOR INTERNATIONAL, INC. v. COMMISSIONER OF PATENTS and NOVOZYMES A/S
PLACE OF HEARING: Montréal (Quebec)
DATE OF HEARING: August 21, 2006
APPEARANCES:
|
Ms. Hélène D’Iorio
|
|
|
Ms. Susan D. Beaubien
|
SOLICITORS OF RECORD:
|
GOWLING LAFLEUR HENDERSON LLP Montréal, Quebec
|
|
|
MACERA & JARZYNA LLP Ottawa, Ontario
|
Date: 20060824
Docket: T-262-06
Ottawa, Ontario, this 24th day of August 2006
PRESENT: The Honourable Mr. Justice Pinard
BETWEEN:
GENENCOR INTERNATIONAL, INC.
Appellant
and
COMMISSIONER OF PATENTS
and NOVOZYMES A/S
Respondents
Motion on behalf of the appellant for:
a) an Order setting aside the Order of Me Richard Morneau, Prothonotary, dated July 13, 2006;
b) costs of this motion;
c) such further and other relief as counsel may advise and this honourable Court may permit.
ORDER
The appellant’s motion is granted. The Order of Me Richard Morneau, Protnonotary, dated July 13, 2006, is set aside, with costs.
The respondent Novozymes A/S is allowed ten (10) days from the date of this Order, to formally re-apply before this Court 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.
“Yvon Pinard”
Judge