Rovi Guides, Inc. v. Telus Corporation

Rovi Guides, Inc. v. Telus Corporation
Court (s) Database
Federal Court of Appeal Decisions
Date
2024-08-06
Neutral citation
2024 FCA 126
File numbers
A-231-22, A-233-22
Decision Content
Date: 20240806
Dockets: A-231-22(Lead)
A-233-22
Citation: 2024 FCA 126
CORAM:
STRATAS J.A.
GLEASON J.A.
MONAGHAN J.A.
BETWEEN:
ROVI GUIDES, INC. and TIVO SOLUTIONS INC.
Appellants
and
TELUS CORPORATION, TELUS COMMUNICATIONS INC., TELUS COMMUNICATIONS COMPANY and BELL CANADA
Respondents
Heard at Toronto, Ontario, on November 29, 2023.
Judgment delivered at Ottawa, Ontario, on August 6, 2024.
PUBLIC REASONS FOR JUDGMENT BY:
GLEASON J.A.
CONCURRED IN BY:
STRATAS J.A. MONAGHAN J.A.
Date: 20240806
Dockets: A-231-22 (Lead)
A-233-22
Citation: 2024 FCA 126
CORAM:
STRATAS J.A
GLEASON J.A.
MONAGHAN J.A.
BETWEEN:
ROVI GUIDES, INC. and TIVO SOLUTIONS INC.
Appellants
and
TELUS CORPORATION, TELUS COMMUNICATIONS INC., TELUS COMMUNICATIONS COMPANY and BELL CANADA
Respondents
PUBLIC REASONS FOR JUDGMENT
This is a public version of confidential reasons for judgment issued to the parties. The two are identical, there being no confidential information disclosed in the confidential reasons.
GLEASON J.A.
[1] The appellant, Rovi Guides Inc. (Rovi), appeals from the judgment of the Federal Court in Rovi Guides, Inc. v. Bell Canada, 2022 FC 1388 (per Lafrenière J.). In that judgment, the Federal Court dismissed Rovi’s actions against the respondents, Bell Canada (Bell) and Telus Corporation, Telus Communications Inc., and Telus Communications Company (collectively, Telus) for patent infringement and granted the respondents’ counterclaims for declarations of invalidity and non‑infringement in respect of several claims in Rovi’s Canadian Patents Nos. 2,339,629, and 2,425,482, 2,336,870 (the 870 Patent), and 2,514,585 (the 585 Patent).
[2] Like the patents at issue in the companion appeal that is being released simultaneously with this one, Rovi v. Videotron, 2024 FCA 125 (A-186-22) [Videotron], all four patents in this appeal involve interactive television program guide (IPG) technology: see Videotron at para. 2 for a summary of that technology. The companion appeal deals with claims in one of the same Patents in issue on this appeal, the 870 Patent, and with a different patent (Canadian Patent No. 2,730,344).
[3] In the present case, like in Videotron, the Federal Court dismissed Rovi’s actions against the respondents for infringement and granted the respondents’ counterclaims for declarations of invalidity. The Court held that all of the asserted claims were invalid because they were either anticipated and/or obvious, having regard to the prior art and the common general knowledge of the person skilled in the art to which the Patents were directed (the Skilled Person). It also held that some of the claims in suit were not infringed. While this was sufficient to dismiss Rovi’s actions and to grant the respondents’ counterclaims, like in Videotron, the Federal Court went on to reach conclusions about the appropriate remedy for completeness sake. The Court concluded that, had the claims in suit been valid and infringed, Rovi would not have been entitled to an accounting of profits or to an injunction.
[4] Rovi appeals some of the Federal Court’s findings with respect to the 870 Patent and the 585 Patent, but not the findings in respect of the other two patents that were at issue before the Federal Court. Before us, Rovi argues that the Federal Court made reviewable errors in its obviousness analysis in respect of the 870 Patent and the 585 Patent and in its anticipation analysis in respect of the 585 Patent. It also asserts that the Federal Court made reviewable errors in its remedial analysis.
[5] For the reasons that follow, I find that the Federal Court did not make any reviewable errors in its obviousness analysis in respect of the 870 Patent or in its anticipation analysis concerning the 585 Patent. Therefore, it is unnecessary to address its findings on the obviousness of the 585 Patent. However, like in Videotron, some of the Federal Court’s provisional findings regarding remedy require correction by this Court. The required correction does not affect the disposition of this appeal, which I would dismiss with costs.
I. The 870 Patent and the 585 Patent [6] Details about the 870 Patent are provided in Videotron, starting at paragraph 7 of that decision.
[7] At trial in the present case, Rovi asserted that the respondents infringed two groups of claims in the 870 Patent, Claim 346, which was referred to by the parties as the “870A Claim”, and Claims 456, 721, and 724, which were referred to by the parties as the “870C Claims”. Only the Federal Court’s findings with respect of the 870C Claims are being appealed.
[8] The 870C Claims relate to peer-to-peer transmission. The 870C Claims in the 870 Patent, along with the additional claims that some of them depend on, are set out in the Appendix to these Reasons. Two of the 870C Claims, Claims 456 and 721, were at issue in Videotron, which upheld the Federal Court’s finding that these Claims are obvious.
[9] The 585 Patent was filed on January 30, 2004, expired on January 30, 2024, and claims a priority date of January 30, 2003, which the Federal Court accepted as appropriate. Entitled “Interactive Television Systems with Digital Video Recording and Adjustable Reminders”, the 585 Patent relates to operator-initiated recordings and the ability to restart a program that a user is currently watching or a program that was previously broadcast.
[10] There are four claims at issue on appeal in the 585 Patent—Claims 34, 36, 87 and 127. These Claims include both system and method claims. They, too, are reproduced in the Appendix to these Reasons, along with the additional claims on which some of them depend.
II. The Reasons of the Federal Court [11] In reviewing the Federal Court’s Decision, I focus only on those portions that are relevant to the issues that Rovi has raised on this appeal that are considered in these Reasons.
A. The Federal Court’s Validity Findings [12] I commence with the Federal Court’s consideration of obviousness of the 870C Claims in the 870 Patent. In undertaking its obviousness analysis, the Federal Court set out the following test for assessing obviousness at paragraph 151 of its Decision:
a) Identify the notional Skilled Person and the relevant [common general knowledge] of that person;
b) Identify the inventive concept of the claim, or if that cannot readily be done, construe it;
c) Identify what, if any, differences exist between the matter cited as forming part of the “state of the art” and the inventive concept of the claim or the claim as construed; and
d) If the differences constitute steps which would have been obvious to the Skilled Person, the claim is obvious and invalid.
[13] This wording is slightly different from that used by the Supreme Court of Canada in Apotex Inc. v. Sanofi-Synthelabo Canada Inc., 2008 SCC 61, [2008] 3 S.C.R. 265 [Sanofi], at paragraph 67, where the Supreme Court described the test for assessing whether a patent is obvious as follows:
(1) (a) Identify the notional “person skilled in the art”;
(b) Identify the relevant common general knowledge of that person;
(2) Identify the inventive concept of the claim in question or if that cannot readily be done, construe it;
(3) Identify what, if any, differences exist between the matter cited as forming part of the “state of the art” and the inventive concept of the claim or the claim as construed;
(4) Viewed without any knowledge of the alleged invention as claimed, do those differences constitute steps which would have been obvious to the person skilled in the art or do they require any degree of invention?
[14] As will soon become apparent, in my view, nothing turns on the slightly different wording used by the Federal Court in this case to describe the test for obviousness.
[15] Like in the companion appeal, Rovi does not challenge the Federal Court’s findings under the first step of the Sanofi analysis regarding the attributes of the Skilled Person for the two Patents at issue in this appeal. As a result, no more needs to be said about the first step in the obviousness analysis.
[16] On the second step in the Sanofi analysis, the Federal Court held that the common general knowledge of the Skilled Person prior to the filing dates applicable to all of the patents in suit included knowledge of the following:
a) A television system typically includes a headend (a central location run by the operator, which collects multimedia from content providers and processes it for distribution), and customer premises equipment (such as a television sometimes with a STB [or set top box], which receives the television content and displays it to the user).
b) EPGs [or electronic program guides, a term that was used by the parties interchangeably with IPGs] and their provision to and storage of information of television program data by an STB.
c) The STB could be controlled by the user by way of a remote control.
d) Up to the mid-1990s, most television content was transmitted to users in analog format.
e) The development and widespread adoption of digital transmission, compression and storage techniques in the mid-1990s changed the ability to provide a richer interactive television experience to users.
f) The Internet digitally connected users across the globe, allowing them to exchange messages, play games, and view various types of multimedia (including pictures, music, and video).
g) In March 1998, DAVIC released version 1.3.1 of its specification, which consists of 14 parts.
[Federal Court Decision at para. 168].
[17] I note, parenthetically, that the dates for assessing obviousness in respect of the 870 Patent and the 585 Patent are their respective priority dates in accordance with sections 28.1 and 28.3 of the Patent Act, R.S.C., 1985, c. P-4 [Patent Act]. However, nothing turns on the Federal Court’s apparent focus in paragraph 168 of its reasons on the Skilled Person’s common general knowledge prior to the filing dates of the patents in suit.
[18] DAVIC 1.3.1, mentioned by the Federal Court as forming part of that common general knowledge, was a document published by the Digital Audio-Visual Council (the Council) in 1998, entitled “DAVIC 1.3.1 Specification Part 1” (DAVIC). As summarized in Videotron:
… the Council was a non-profit organization based in Switzerland. To quote from the Foreword of DAVIC, the Council’s objective was “…to promote the success of interactive digital audio-visual applications and services through the specification of open interfaces and protocols”. DAVIC was the culmination of a multi-year consultation process with equipment manufacturers, service providers, government organizations, and non-members of the Council. As stated in its introduction, DAVIC “… defines the minimum tools and dynamic behaviour required by digital audio-visual systems for end-to-end interoperability across countries, applications, and services”.
[Videotron at para. 12].
[19] With respect to the Claims in suit in the 870 Patent, more particularly, the Federal Court found that the 870 Patent, itself, admits that “IPGs were known” and that “IPGs that have digital storage devices were known”: Federal Court Decision at para. 239. Further, the Federal Court found that, by July 1998, the common general knowledge of the Skilled Person included:
A. how to integrate an IPG into an interactive television system that allows users to store programs on an independent storage device;
B. digital storage devices such as hard disk drives and recordable DVD’s could be used to record broadcast TV; and
C. use of a digital storage device to record broadcast programs by connecting the device to a STB using an appropriate interface.
[Federal Court Decision at para. 240].
[20] The Federal Court also found that although home networking was not widespread, the parties’ experts generally agreed that home networking was known by 1998: Federal Court Decision at para. 267.
[21] As concerns the third part of the Sanofi test, relating to the inventive concept of the claims in the 870 Patent, the Federal Court made several claim-specific findings. According to the Federal Court, the inventive concept of Claim 456 comprised three elements, namely: (1) generating a request to playback a broadcast program with a first user equipment; (2) wherein the broadcast program was recorded on a second user equipment in response to a record request generated at the second user equipment; and (3) in response to the playback request from the first user equipment, receiving with the first user equipment the broadcast program from the second user equipment, and generating for display the received program: Federal Court Decision at para. 270.
[22] The Court found the inventive concept of Claims 721 and 724 included the same foregoing three elements, as well as the following additional three features: (4) both the transmitting and receiving user equipment be connected to a display; (5) the program recorded and transmitted be a broadcast program; and (6) recording the program on the first user equipment with media guidance data associated with the program: Federal Court Decision at para. 271.
[23] After undertaking a comparative analysis between the 870C Claims in the 870 Patent and the state of the art under the Sanofi framework, the Court found the inventive concept of all the Claims in suit was obvious in light of the common general knowledge of the Skilled Person and the home networking references in DAVIC, and in particular, section 7.2 of DAVIC. Section 7.2 of DAVIC provided:
As multiple digital services begin to penetrate the consumer market, the need will arise for an in-home digital network that will provide selectable access to these services from multiple in-home devices. Furthermore, the introduction of digital storage devices in the home will expand this need. Home networks for DAVIC must support the functions required to link digital consumer devices so that information may be exchanged among these devices in a simple and direct manner.
[Federal Court Decision at para. 265].
[24] According to the Federal Court, DAVIC “explicitly describe[d]” home networking: Federal Court Decision at para. 277. The Court accepted the evidence of the respondents’ expert, Mr. Kerr, that DAVIC recognized that “home networks for DAVIC must support the functions required to link digital consumer devices so that information may be exchanged among these devices in a simple and direct manner”: Federal Court Decision at para. 277. This included comprehensive requirements for any communications between two user devices like STBs to transfer recorded broadcast programs from one STB to another and to display requested programs on the receiving user’s device.
[25] More specifically, the Federal Court found that the common general knowledge and DAVIC rendered all of the 870C Claims obvious, as follows:
(a) Elements 1 and 2 were obvious: DAVIC 1.3.1 taught the Skilled Person how to implement a home network, and required that DAVIC systems support connections between user equipment such that information such as video could be exchanged between them.
(b) Element 3 was obvious: DAVIC 1.3.1 taught a method that allowed a user to transmit requests for and then receive recorded broadcast programs. DAVIC 1.3.1 also taught that the requested programs can be displayed on a receiving user’s television.
(c) Element 4 was obvious: DAVIC 1.3.1 taught that this communication could include transmission of video between devices and that the devices connected in the network could include multiple displays.
(d) Element 5 was obvious: DAVIC 1.3.1 taught recording broadcast programs to a local digital storage device – for example, DAVIC 1.3.1 described a STB coupled to a “digital video recorder” which was a display.
(e) Element 6 was obvious: DAVIC 1.3.1 taught that if a program was stored in the user’s equipment, the user must be able to locate and view information about the program to select the item and play it back.
[Federal Court Decision at para. 286].
[26] The Federal Court ultimately concluded that the 870C Claims “provide nothing more than an idea that was already being targeted by DAVIC”: Federal Court Decision at para. 282.
[27] The Federal Court went on to find that another piece of prior art, “System for Transmitting Desired Digital Video or Audio Signals” (U.S. Patent No. 5,675,734) (Hair), when considered together with the common general knowledge of the Skilled Person, also rendered all of the 870C Claims obvious: Federal Court Decision at paras. 287-295. There is no need to review the Federal Court’s findings in respect of Hair as I have concluded, for many of the same reasons as in Videotron, that the Federal Court did not make a reviewable error in finding that DAVIC rendered the claims in suit in the 870 Patent obvious.
[28] Turning now to the 585 Patent, the Federal Court noted that, with one exception, the parties agreed on the construction of Claims 34, 35, 87, and 127 of the 585 Patent. Accepting the parties’ agreement, the Federal Court found that the essential elements of the claims in suit were as follows:
Claims 34 and 36 both depend on Claim 33. The essential elements of Claim 33 are:
Element 1: Providing users access to recordings of broadcast television programs having scheduled start-times and end-times;
Element 2: Selectively recording, based on retention criteria, a subset of the plurality of broadcast programs on storage of a server remote to the users;
Element 3: Providing a first user with access to at least a portion of a first recorded broadcast program during a retention-period; and
Element 4: Removing the recorded first broadcast program at the end of the retention-period.
Claim 34 depends on Claim 33, and adds the following elements:
Element 5: Tuning the first user device to the first broadcast program at a tune-time, wherein the tune-time is after the scheduled start-time of the first broadcast program;
Element 6: Determining that the start-time of the first broadcast program has elapsed; and
Element 7: In response to determining, accessing the portion of the recorded first broadcast program provided by the remote server at the first user device, wherein the portion corresponds to a portion of the first broadcast program that was broadcasted by the facility prior to the tune-time;
Claim 36 also depends on Claim 33 and only adds the following elements:
Element 8: Receiving a request to access the recorded first broadcast program; and
Element 9: Transmitting the portion of the recorded first broadcast program upon receiving the request.
Both parties agree that Claim 87 (which depends on Claim 85) has the same essential elements as Claim 33, but Claim 87 is a system claim, whereas Claim 33 is a method claim.
Both parties also agree that Claim 127 (which depends on Claim 125) has the same essential elements as Claims 33 and 87. While Claim 127 uses the word “access-period,” as opposed to “retention period” (as found in Claim 33), the Skilled Person would understand that there is no difference between an “access-period” and a “retention-period.”
[Federal Court Decision at paras. 384-388].
[29] The one construction issue in dispute concerned the meaning to be given to “accessing” in element 7 of Claim 34. The Federal Court accepted the interpretation advanced by Rovi’s expert, Mr. Wahlers, finding that “accessing” meant “establishing a connection in preparation for transmission”: Federal Court Decision at para. 394.
[30] After discussing the construction issues, the Federal Court moved to validity and, among other things, held that a patent entitled “Digital Interactive Delivery System for TV/Multimedia/Internet with On-Demand Applications” (the iMagic Patent), published approximately a year before the priority date of the 585 Patent, anticipated the 585 Patent. The iMagic Patent was owned by iMagic, a Canadian television company, and described an Internet Protocol Television [IPTV] that “include[d] various on-demand applications, each of which are accessible on an integrated IPG, and each of which use the same remote video server. Two of those on-demand applications were TimelessTV and VDVR [Virtual Digital Video Recording]”: Federal Court Decision at para. 404.
[31] The Federal Court found that Rovi failed to identify anything inventive about the claims in suit in the 585 Patent over the iMagic Patent, and more particularly TimelessTV. Although the respondents initially pled that both of the TimelessTV and VDVR applications anticipated the 585 Claims, the Federal Court limited its findings on anticipation to TimelessTV, which was the focus of the respondents’ submissions at trial: Federal Court Decision at para. 406.
[32] The Federal Court applied the two-part test to show that prior art anticipates a claimed invention: there must be a prior disclosure of the essential elements of the claim in a single piece of prior art and the prior disclosure must enable the claimed subject-matter to be practised by a Skilled Person without any inventive skill: Federal Court Decision at paras. 149, 320, 407-438.
[33] The Federal Court found that the respondents had established, on a balance of probabilities, that the iMagic Patent disclosed all of the essential elements of the 585 Claims in suit: Federal Court Decision at para. 432. At paragraph 418 of the Decision, the Federal Court set out a chart, listing each of the essential elements of the claims in suit in the 585 Patent and showing how each of these elements was found in the iMagic Patent. In so holding, the Federal Court relied on the evidence from one of the respondents’ experts, Dr. Robinson, which it found was “unshaken on cross-examination on key matters or left unchallenged”: Federal Court Decision at para. 417. Conversely, it gave little to no weight to the evidence on anticipation from Rovi’s expert, Mr. Wahlers, whom the Federal Court found “took astonishing positions in his reports on the 585 Patent and continued to maintain those positions at trial, only to give them up without a fight in cross-examination”: Federal Court Decision at para. 413. In addition, several key paragraphs in Mr. Wahlers’ report were shown to have been copied from the report of another of Rovi’s experts in the companion appeal, which the Federal Court found substantially undercut Mr. Wahlers’ credibility.
[34] The Federal Court also found that iMagic was enabling. According to the Court, all the experts agreed that “iMagic is far more technical and detailed than the 585 Patent”: Federal Court Decision at para. 433.
[35] The Federal Court accordingly concluded that iMagic anticipated the claims in suit in the 585 Patent.
B. The Federal Court’s Findings on Remedy [36] I turn next to summarize the Federal Court’s findings regarding remedy.
[37] As already noted, even though the Federal Court dismissed Rovi’s action and granted the respondents’ counterclaims, it went on to make findings on remedy for the sake of completeness. The Federal Court held that, had the Patents been valid, Rovi would not have been entitled to an accounting of profits or to an injunction and that damages would have been the appropriate remedy: Federal Court Decision at paras. 643, 654.
[38] The Federal Court found that the factors relevant to denying an award of an accounting of profits in this case included: (i) the complexity and the practical difficulties of an accounting of profits; (ii) Rovi’s conduct; (iii) the good faith of the respondents; and (iv) whether Rovi did not compete with the respondents or routinely licenced its patents: Federal Court Decision at para. 587.
[39] The Federal Court first assessed the factor of complexity and noted that “…serious practical difficulties can be encountered by the Court in the determination of profits, and it is desirable that a trial judge consider the practical consequences of ordering this remedy in a particular case […]”: Federal Court Decision at para. 591, quoting AlliedSignal Inc. v. Du Pont Canada Inc., [1995] F.C.J. No. 744, 61 C.P.R. (3d) 417 (C.A.) at para. 81, leave to appeal to SCC refused, 24781 (30 November 1995).
[40] In this case, the Federal Court found that “IPTV is an enormously complex product, requiring complex software, extensive hardware, a massive network of fibre-optic cable, and teams of thousands of people to develop, launch and maintain. The asserted patented features are a small part of the software, which in itself is a small part of the overall product of the [respondents’] services”: Federal Court Decision at para. 597. Given this, the Court further found that “isolating the impact of the individual features at issue in this case, while not impossible, would prove extremely challenging”: Federal Court Decision at para. 598. This complexity, according to the Court, did not militate in favour of granting the remedy of an accounting of profits: Federal Court Decision at para. 602.
[41] On the factor of Rovi’s conduct, like in Videotron, the Federal Court found that the length of time that Rovi took to prosecute the Patents before the Patent Office and Rovi’s dealings with the respondents both militated against awarding an accounting of profits: Federal Court Decision at paras. 605-627.
[42] In this appeal, however, the Federal Court went further and found that this case exemplified a “patent holdup” problem: Federal Court Decision at para. 627. According to the Court:
When considered as a whole, the clear pattern of delay and the late amendments to some of its patents leads inexorably to the conclusion that delay in prosecution of the Patents was a deliberate and integral part of Rovi’s business strategy. Notably, over the course of the licensing negotiation, Rovi did not mention the 482 Patent or the 585 Patent to Bell or TELUS. Nor did it mention the 870 Patent to Bell, and only raised claims of the 629 Patent, which are not asserted in these proceedings. Rovi’s delay in issuing the Patents and its sly conduct during negotiations allowed Bell and TELUS to fully integrate the allegedly patented technology into their IPTV systems, and gain millions of customers, before many of the asserted claims existed, let alone before the Patents were issued.
A similar strategy is employed by patent assertion entities (PAEs), businesses that acquire patents from third parties and seek to extract more than the inherent value of the supposed invention. That is because, in an ex-ante negotiation, a potential licensor will pay only the value of the patented technology. However, in an ex-post negotiation, once the technology has been integrated, the licensor can extract not only the value of the invention, but all of the additional costs that stem from redesigning a system to remove the technology.
By failing to prosecute their Patents diligently, Rovi left the [respondents] in the invidious position of not knowing which patents were allegedly infringed, while they attempted to maximize the value of their patented technology. During that period when the Patents were pending, because the letters patent were not issued, the [respondents] were unable to take any action to have the Patents declared invalid pursuant to subsection 60(1) of the Patent Act. Rovi's attempt to “game the system” goes against the restitutionary purpose of an accounting of profits. The goal of the Patent system, through a grant of a temporary monopoly, is to “encourage invention and to regulate the issuance of patents in Canada” (Genecor International Inc v Canada (Commissioner of Patents), 2008 FC 608 at para 39; Pope Appliance Corp v Spanish River Pulp and Paper Mills Ltd, [1929] A.C. 269 cited in CertainTeed Corp v Canada (Attorney General), 2006 FC 436 at para 25. An unreasonable and unexplained delay in prosecuting the Patents prejudices the public and stifles the innovation envisioned by the patent system.
Dr. Bazelon agreed that “patent holdup” occurs when a patent owner takes advantage of the potential infringer’s reduced flexibility after they have launched a product and opportunistically tries to extract a larger unreasonable licensing fee, especially using the threat of an injunction. This strategy has been described as engaging in “pre-litigation conduct […] designed to place the infringer in the most disadvantageous bargaining position”; and delaying “so that the infringer’s dependency on the patent is maximized, as is the proportion of profits claimed.”: Jeff Berryman, Comment on Norman Siebrasse, Business Method Patents and PatentTrolls, 54 CAN. Bus. L.J. 58 (2013) Vol. 54, 58-67, at 66.
The case before me exemplifies the “patent holdup” problem. Rovi’s conduct in this case militates strongly against granting the equitable remedy of an accounting of profits as it would create an incentive for licensing entities to imitate Rovi’s conduct.
[Federal Court Decision at paras. 623-627].
[43] The Federal Court stated that Rovi’s conduct, alone, was a compelling reason to deny the right to elect an accounting of profits: Federal Court Decision at para. 643.
[44] On the respondents’ conduct, the Federal Court found that there was no evidence of any wilful infringement by the respondents in this case that would call for deterrent measures: Federal Court Decision at para. 636. According to the Court, the respondents behaved responsibly in their dealings with Rovi and their conduct was beyond reproach: Federal Court Decision at para. 635.
[45] Overall, after weighing the above factors, the Federal Court found that it would not have been inclined to exercise its discretion in favour of Rovi. The Federal Court accordingly determined that, had the patents in suit been valid and infringed, it would not have been appropriate to award an accounting of profits.
[46] The Federal Court held that it also would have declined to exercise its discretion in favour of Rovi to grant injunctive relief. Although the Court acknowledged that an injunction is presumptively available where a plaintiff’s patents have been infringed, the Court found that it was within the discretion of the Court to decline or to grant: Federal Court Decision at paras. 645-646, citing Eurocopter v. Bell Helicopter Textron Canada Ltée, 2012 FC 113, [2012] F.C.J. No. 107 at paras. 397-398, 410 [Eurocopter]; JM Voith GmbH v. Beloit Corp., [1997] 3 FC 497, [1997] F.C.J. No. 486 (C.A.) at para. 108; Patent Act, s. 57. According to the Court, certain factors may limit the availability of injunctions, including delay, lack of clean hands, unconscionability and triviality, relying on Eurocopter at para. 397; Janssen-Ortho Inc. v. Novopharm Ltd., 2006 FC 1234, [2006] F.C.J. No. 1535 at para. 132, aff’d 2007 FCA 214, [2007] F.C.J. No. 809, leave to appeal to SCC refused, 32200 (6 December 2007).
[47] The Federal Court held that patent holdup is also relevant when a court is considering whether to award an injunction. The Court stated that “an opportunistic patent holder can try and extract a larger, unreasonable licensing fee especially in light of a potential injunction” and that “the abusive nature of this strategy has been recognized by Canadian commentators, United States commentators, and the Supreme Court of the United States”: Federal Court Decision at para. 648.
[48] The Court went on to consider a U.S. case, eBay Inc. v. Merc-Exchange, LLC, 547 US 388 (2006) [eBay] and Canadian doctrine that suggested that there were lessons in the eBay case for Canadian courts. In eBay, Justice Anthony M. Kennedy issued a concurring opinion in which he discussed the emergence of a new industry in the United States, in which firms use patents not as a basis for producing and selling goods but, instead, primarily for obtaining licensing fees. Justice Kennedy expressed the view that for firms that use patents primarily for obtaining licensing fees, damages may well be sufficient to compensate for the infringement in certain cases, and that injunctions may not always be in the public interest. According to him, “the potential vagueness and suspect validity of some of these patents may affect the calculus under the four-factor test”: see Federal Court Decision at para. 649 for an excerpt of Justice Kennedy’s concurring opinion.
[49] Citing to a 2012 paper by Professor Jeff Berryman, the Federal Court found that there were similarities to the context set out in Justice Kennedy’s opinion and the instant case. The Federal Court found:
In his paper entitled “When Will a Permanent Injunction be Granted in Canada for Intellectual Property Infringement? The Influence of eBay v. Merc-Exchange” (2012) 24 Intellectual Property Journal 159, Professor Jeff Berryman argues that there are lessons to be learned from the eBay decision at page 175.
eBay demonstrates that it is possible to have a consistent test across all spectrums of intellectual property concerning the availability of permanent injunctions. That test is openly a balancing one and contemplates that an injunction can be declined even if it means that the plaintiff is left to a damages remedy amounting to a form of compulsory license. U.S. experience also demonstrates that abandoning categorical tests does not dramatically change the landscape. The U.S. approach has the advantage that it provides flexibility toward the granting of one of the court’s most coercive remedies: a permanent injunction. The need for flexibility is demonstrated with the advent of patent trolls. Under the U.S. approach, the power to use an injunction to maximize exploitative advantage is weakened. (Citation omitted)
I agree with Professor Berryman’s comments and consider it appropriate to adopt the US approach here. As I stated earlier, the present case exemplifies the patent holdup problem. To grant an injunction on the particular facts of this case would be signalling that this Court finds Rovi’s business practice to be acceptable and create an incentive for licensing entities to imitate Rovi’s conduct.
[Federal Court Decision at paras. 650-651, emphasis added].
[50] After finding that the U.S. approach should be adopted, the Federal Court made two key findings as to why an injunction would not be appropriate in this case:
The evidence before me is that Rovi does not compete with Bell and TELUS. Rovi admits that it cannot deliver IPTV to Canadian customers and routinely licences its patents in Canada. It is effectively a non-practising entity in Canada. In my view, it would be inequitable to prevent Bell and TELUS from providing IPTV products which do not compete with Rovi and it is not in the public interest to deny millions of their customers access to features they previously enjoyed. The imminent expiry of the 585 Patents is a further reason to not impose the costs of modifying Bell and TELUS’ systems to comply with an injunction, when such modifications would be for a short period of time.
In this case, good policy and the equities are aligned. Engaging in patent holdup is a business practice this Court should not condone and the Canadian patent system should not be creating incentives for such unfair practices to occur. There was no improper conduct on the part of Bell and TELUS which requires sanction, while to grant an injunction would run a very serious risk of rewarding Rovi’s delay through overcompensation.
[Federal Court Decision at paras. 652-653].
III. Analysis [51] I turn next to evaluate the various arguments that Rovi advances before this Court that are necessary for this Court to consider.
A. Did the Federal Court Err in its Handling of Mr. Wahlers’ Evidence? [52] It is convenient to first deal with Rovi’s arguments regarding the Federal Court’s treatment of Mr. Wahlers’ evidence as the Federal Court’s findings on anticipation and obviousness at issue in this appeal rely in part on the Federal Court’s decision to give little weight to Mr. Wahlers’ evidence.
[53] Rovi makes a number of arguments challenging the Federal Court’s findings that: (1) portions of Mr. Wahlers’ report had been written by counsel because they were identical to sections in the report tendered by another expert on behalf of Rovi in the companion appeal; and (2) the failure to acknowledge this undercut Mr. Wahlers’ credibility.
[54] Rovi first argues on this point that the summary document showing the identical sections in the two reports, relied on by the respondents in their cross-examination of Mr. Wahlers, was premised on an expert report in Videotron that was not in evidence at trial in this case. Rovi contends that the summary document was therefore hearsay and that it was improper for counsel for the respondents to have used it in his cross-examination of Mr. Wahlers.
[55] Rovi next says that the respondents failed to provide any notice of their objection to Mr. Wahlers’ evidence in advance of his oral testimony, which they assert is in contravention of Rule 52.5(1) of the Federal Courts Rules, S.O.R./98-106. This provision requires a party to raise any objection to an opposing party’s proposed expert witness that could disqualify the witness from testifying as early as possible in the proceeding. Rovi alleges that this meant that the respondents were required to give Rovi advance notice of their line of questioning regarding the copying.
[56] Rovi further argues that the Court failed to invite any submissions on the propriety of the allegation of copying and failed to conduct a voir dire, which it says the Federal Court was required to do prior to allowing the line of questioning to proceed.
[57] There is no merit whatsoever to any of these arguments for the simple reason that Rovi raised no objection to this line of questioning at trial. It is trite law that evidentiary objections should be made at trial to give the opportunity to other parties to call additional evidence or adjust examinations and so evidence can be scrutinized “at the time it is proffered”: Pfizer Canada v. Apotex, 2014 FCA 54, [2014] F.C.J. No. 224 at para. 9; see also Teva Canada v. Pfizer Canada, 2017 FC 526, 147 C.P.R. (4th) 126 at para. 39; Eli Lilly Canada v. Teva Canada, 2018 FCA 53, 292 A.C.W.S. (3d) 146 at para. 108, leave to appeal to SCC refused, 38077 (8 November 2018). Thus, in a civil case, an objection on appeal will not usually succeed unless the objection was made at the trial: Lam v. Chiu, 2014 BCCA 32, 237 A.C.W.S. (3d) 408 at para. 47; Sidney N. Lederman et al., Sopinka, Lederman & Bryant: The Law of Evidence in Canada, 6 th ed. (Markham: LexisNexis, 2014), § 2.124.
[58] I also note parenthetically that, even if an objection had been raised, it would not have been necessary for the Federal Court to have conducted a voir dire or for advance notice to have been given by the respondents as to their intended line of questioning. In a civil case, a voir dire is rare, and, especially in the absence of a jury, there appears to be little reason to conduct one. As for Rule 52.5(1), it applies only where a party seeks to disqualify a witness as opposed to raising issues as to the credibility of that witness in cross-examination. It was largely Mr. Wahlers’ steadfast (and unreasonable) refusal to admit that the paragraphs in question in his report had been wordsmithed by counsel that caused the Federal Court to doubt his credibility. Counsel for the respondents had no way of knowing that such a response would have been given and thus did not know that he would succeed in undercutting Mr. Wahlers’ credibility.
[59] As an aside, on the practice of counsel assisting in writing or editing sections in expert reports, I endorse the comments of the Federal Court at paragraphs 104-110 of its Decision.
[60] Rovi next argues that there are “only” twenty examples of copying in Mr. Wahlers’ written evidence, which represented approximately 4% of Mr. Wahlers’ evidence. According to Rovi, this is a critical fact that was not co