This is an informal case summary prepared for the purposes of facilitating exchange during the 2024 WIPO IP Judges Forum.
Session 6
Federal Court of Canada [2016]: Uponor AB v Heatlink Group Inc., et al, 2016 FC 320
Date of judgment: March 16, 2016
Issuing authority: Federal Court of Canada
Level of the issuing authority: First instance
Type of procedure: Judicial (Administrative)
Subject matter: Patents (Inventions); Enforcement of IP and Related Laws
Plaintiff: Uponor AB
Defendants: Heatlink Group Inc.; Pexcor Manufacturing Inc.; Crosslink Finland OY; iNOEX GmbH; iNOEX LLC
Keywords: Patents, Patents infringement, Injunctive relief, Permanent injunction
Basic facts: Uponor AB (the plaintiff) holds Canadian Patent No. 2,232,376 (the 376 Patent), which relates to a method and apparatus for manufacturing crosslinked polyethylene (PEX) pipes. PEX pipes are widely used in the construction industry due to their strength and durability. Uponor claimed that Heatlink Group Inc. and Pexcor Manufacturing Inc. infringed its patent by manufacturing and selling PEX pipes in Canada using the patented process. Uponor AB also alleged that Crosslink Finland OY had indirectly infringed by supplying equipment used by Pexcor to produce the pipes.
In its claim, Uponor AB sought a permanent injunction to prevent the alleged infringement of the 376 Patent. They also sought damages, including lost profits due to the infringement, pre-judgment and post-judgment interest, and costs.
Held: On March 16, 2016, the Federal Court of Canada hold that a majority of the claims in the 376 Patent, owned by the plaintiff, are invalid for inutility in fact, insufficiency, overbreadth, anticipation, and obviousness, but that Heatlink Group Inc and Pexcor Manufacturing Company Inc (Pexcor) infringed the remaining claims.
The Court also held that Crosslink Finland OY, which supplied and serviced the infrared (IR) ovens used by Pexcor, did not induce the infringement.
Uponor AB was granted an injunction against Pexcor Manufacturing Inc. and Heatlink Group Inc., barring them from continuing the infringing activities, while the quantification of damages was reserved for further proceedings.
Relevant holdings in relation to permanent injunctions: After concluding that certain claims of the 376 Patent were valid and infringed by Pexcor Manufacturing Inc. and Heatlink Group Inc., the court addressed the remedies sought by Uponor AB.
Despite Uponor AB not practicing the claimed invention in Canada, the court emphasized the principle that patents confer exclusive rights on the patent holder, including the right to exclude others from making, using, or selling the patented invention without permission. Given that Pexcor Manufacturing Inc. and Heatlink Group Inc. were found to have infringed the valid claims of the 376 Patent, the court ruled that a permanent injunction was the appropriate remedy to prevent further infringement and to preserve the integrity of Uponor AB’s patent rights.
As such, the Court found that Pexcor Manufacturing Inc. and Heatlink Group Inc. are enjoined from manufacturing, using, offering for sale, and/or selling to others for their use the apparatus for heating polymer material that infringes the 376 Patent and the PEX pipe made therefrom until expiry of the 376 Patent.
In addition to the permanent injunction, the court awarded damages.
The Court, however, declined to order the delivery-up of infringing products. In determining that delivery-up was not necessary or appropriate, the Court considered specific circumstances of the case:
· Uponor AB did not sell or produce the infringing products in Canada or North America.
· Although related North American Uponor Group companies sold pipes in Canada, those pipes were not made in accordance with the patented process, and none of the North American companies were involved in the proceedings.
· Uponor AB’s patented process had not been significantly commercialized, with only limited use of the technology in its European facilities.
Based on these facts, the court concluded that delivery-up of the infringing products was not warranted.
Relevant legislation: