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22 June 20222 minute read

DLA Piper Canada successfully defends Videotron in patent infringement case before Federal Court

DLA Piper Canada has successfully defended Videotron Ltd. in a patent infringement trial in Federal Court. Videotron is a Quebec-based integrated communications company with well over one million television subscribers. Videotron had been sued for patent infringement by Rovi Guides, Inc. At the time of trial, Rovi was the owner of thousands of patents worldwide and had an extensive patent-licensing program. The decision is reported as Rovi Guides Inc. v Videotron Ltd., 2022 FC 874.

Rovi had asserted multiple claims of patent infringement at trial - all related to interactive program guides for television. In his written reasons, Justice Lafrenière held all four Rovi patents asserted at trial to be invalid. The Court also concluded that, in any event, Videotron’s potential liability would have been limited to “work-around” costs, only. The ultimate conclusion of the Court was that because the patents were all invalid, there was no liability and therefore no damages at all were payable by Videotron. 

Rovi has had a history of patent licensing and has been involved in patent lawsuits in the United States and in Europe. This Federal Court litigation is the first where Rovi has asserted patents in Canada and a judgment after trial has been obtained.  

The proceeding became the Federal Court’s first virtual trial after the in-person trial hearing was interrupted by the Covid pandemic in March 2020. The Federal Court provided technology to permit both expert and fact witnesses to provide evidence remotely, in both official languages. Electronic document management and simultaneous translation over video conferencing systems were heavily used. Justice Lafrenière, in consultation with the parties and their lawyers, developed a virtual trial protocol that has been cited repeatedly since as a model for the conduct of virtual litigation.

DLA Piper’s trial team consisted of Bruce Stratton, Alan Macek, Michal Kasprowicz, Gabriella Levkov and Nicole Nazareth, all based in the Toronto office. DLA Piper (Canada) LLP’s IP litigation team represents clients in all types of intellectual property disputes with a particular focus on patent disputes. As part of a global law firm, the Canadian Intellectual Property and Technology Group belongs to one of the largest groups of IP lawyers in the world, offering international reach on a full range of intellectual property law, privacy, and technology law services for leading businesses worldwide.