Western Oilfield Equipment Rentals Ltd. v. M-I LLC, 2019 FC 1606

Justice O'Reilly - 2019-12-23

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M-I maintains that Western has infringed the ‘173 patent directly and has also induced infringement by others, and seeks damages and compensation. In response, Western asserts that the ‘173 patent is invalid on numerous grounds, including inutility, insufficiency, anticipation, obviousness, and overbreadth. I find that M-I has made out its infringement claim. I also conclude that none of the defendants’ invalidity allegations are supported by the preponderance of the evidence. M-I is, therefore, entitled to damages and compensation. ... The parties agree that damages should be calculated on a reasonable royalty basis ... Western argues that M-I is not entitled to a reasonable royalty because it had available non-infringing alternatives to the patented technology that it could have used instead of paying a royalty to M-I. Western also submits that no compensation should be payable for the period between October 2, 2013 and August 27, 2014 because the patent’s claims during that timeframe [differ from those of the granted patent]. ... The evidence does not show that Western had a non-infringing alternative to the VSS. ... I have already concluded that subsequent amendments to the patent did not introduce new subject matter. ... I am satisfied that, for strategic purposes, Western failed to discharge its responsibility to produce relevant documents on which it intended to rely. ... Western is liable to M-I for compensation and damages based on a royalty [rate].

Decision relates to:


Canadian Intellectual Property