The Canada Federal Court plans to update its COVID guidelines by May to mandate that most cases be held in person again, after which it’s expected that the majority of intellectual property matters will be litigated in courtrooms, according to the court’s senior IP judge.
The Federal Court, where most IP cases are first litigated in Canada, has required its judges to manage most matters virtually and only hold in-person proceedings in exceptional circumstances since January 2021.
Judge Michael Manson told Managing IP this week that the court would update its practice direction, which was first issued on March 17 2020 and last updated on January 18 2021, sometime between late April and early May to make in-person proceedings the default once more.
The court decided to make this change in light of declining COVID cases and the subsequent removal of pandemic-based restrictions such as vaccine, travel testing and mask mandates from public life, he added.
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Manson emphasised, however, that judges would still have the discretion to hold virtual or hybrid proceedings if they were requested by counsel under the new guidelines.
“All three versions of hearings – in-person, hybrid and virtual – are the future of the Federal Court,” he said.
But he added that he expected most IP cases to go back to being in person over the coming months.
“Virtual will probably continue to be the dominant format for some areas of the law, such as immigration, where economics is a factor, hearings are short, and counsel tend to request virtual instead of in-person hearings.
“In IP cases, by contrast, hearings are often long and require lots of expert witnesses. They’re generally better done in person, and, based on my experience as an IP litigator, I suspect most IP counsel would agree.”
Remote possibility
Manson, who was appointed in 2012 and is based in Vancouver, pointed out that judges could use their discretion differently once the new guidelines were published, and that some might decide to hold cases in person regardless of input from counsel.
But he suggested that in practice, most judges would leave it to the parties to decide.
“If both parties and counsel want to do cases virtually, I’m pretty sure most if not all of us judges will accommodate that,” said Manson.
He added that judges might choose to hold hybrid proceedings as a compromise in cases in which one side wanted to litigate virtually and another wanted to go to the courthouse.
The senior IP judge said his preference was to litigate in person.
“Some judges think virtual litigation is OK, but I suspect they weren’t litigators when they practised.
“As a litigator for 30 years, I liked the courtroom experience. As a judge, I like to watch what’s going on in the courtroom – seeing the mannerisms and credibility issues. You’re much more able to gauge those things by having parties and counsel in the room than looking at faces on a screen,” he said.
He pointed out that stakeholders could still watch proceedings virtually once the new guidelines were introduced.
Virtual workload
Since March 1 2020, the Federal Court has held 35 virtual trials for IP matters, including 14 patent infringements, one patent impeachment, one patent conflict, four trademark infringements and two copyright infringements.
Two more fell into an ‘other’ category and 12 were related to Canada’s Patented Medicines Notice of Compliance Regulations (PMNOCs), which are similar to the US Hatch-Waxman Act.
There have also been 17 virtual motions for summary trial or judgment in IP matters in the same time, including three patent infringements, seven trademark infringements, one trademark passing off, three copyright infringements, one ‘other’ and two PMNOCs.
The court held its first virtual patent trial between Rovi and Videotron in June 2020. The case was managed by Judge Roger Lafrenière, who has since semi-retired from the court and is credited with establishing the court’s virtual trial protocol.
The protocol set out directions for matters such as document sharing, documents to be put to witnesses, and loss of internet connection.
Lafrenière was recognised by Managing IP in its Top 50 Most Influential People in IP list in 2020 for that reason.
Like most courts across North America, Canada’s Federal Court severely limited the number of people that could enter its facilities and suspended most hearings when the pandemic first struck.
It had considered introducing its new in-person-default practice direction in late 2021 but held off because of rising Omicron variant infections.
The announcement of these new guidelines is the latest development in a growing trend of courts lifting COVID restrictions and reopening across North America.
The US Court of Appeals for the Federal Circuit similarly announced that it would resume in-person arguments in February.
