Case information

Intellectual property — Patents — Invalidity — Motion for extension of time to appeal finding of invalidity — Extension of time denied — Whether patent claim that omits element that goes to core of invention is invalid as overbroad — Proper approach for assessing overbreadth — Proper method for determining that unclaimed element is essential — Proper method for determining that absence of unclaimed element renders claim invalid as overbroad — Where overbreadth is apparent, whether claim should be cured by reading language capturing unclaimed element into claim.<br>

Case summaries are prepared by the Office of the Registrar of the Supreme Court of Canada (Law Branch). Please note that summaries are not provided to the Judges of the Court. They are placed on the Court file and website for information purposes only.

DeepRoot Green Infrastructure LLC alleged that GreenBlue Urban North America Inc.’s “RootSpace” product infringed various claims of their Canadian Patents 2,552,348 (“348 Patent”) and 2,829,599 (“599 Patent”). It sought a declaration that the patents had been infringed, a permanent injunction, and monetary damages in the form of an accounting for profits or a reasonable royalty.

DeepRoot’s action for patent infringement was allowed and GreenBlue’s counterclaim alleging that the patents were invalid was dismissed. An injunction enjoining GreenBlue from infringing Claims 1-5, 7-8, 11-14, 16-20, and 22-24 of the 348 Patent and Claims 1-4 of the 599 Patent until their expiry was issued. DeepRoot was awarded compensation to account for reasonable royalties. Greenblue appealed the findings on validity and infringement and requested an order dismissing the action and granting its counterclaim. The appeal was dismissed. DeepRoot cross-appealed, asking that the compensation for royalties be set aside and that an accounting for profits be awarded instead. The cross-appeal was granted and the appropriateness of awarding an accounting of profits was remitted to the Federal Court for redetermination. GreenBlue sought an extension of time to allow it to move for variation of the disposition of the appeal. The Court of Appeal denied the extension of time and dismissed the motion.