Don’t Touch That Dial—a cautionary note to patentees

  • March 04, 2023
  • Andrew Shaughnessy, Torys LLP

In Rovi Guides, Inc. v. Bell Canada, 2022 FC 1388, Justice Lafrenière adjudicated a trial involving the infringement and invalidity of four patents relating to interactive television programming guides—the kind of technological features that many of us rely on to enhance our television viewing. However, this decision may have dramatic effects on the prosecution of patents before the patent office. While in the past it may well have been the case that ‘what goes on in the patent office, stays in the patent office,’ that rule may no longer be the case.

Following a lengthy trial, Justice Lafrenière found the patents to be invalid and consequently not infringed. However, he also went on to consider two remedial aspects, in case he was wrong in his assessment of the merits: whether the plaintiffs/patentees, assuming that the patents had been valid and infringed, were entitled to an accounting of profits and/or a permanent injunction. Lafrenière J. would have denied the plaintiffs an award of an accounting of profits and he would have exercised his discretion in denying them an injunction because of what the Court considered to be unfair practices in prosecuting the patent applications before the patent office.