Justice Rothstein Finds US Patent Standard Neither Clear Nor Convincing

Brent Randall is a JD candidate at the University of Ottawa.

Justice Marshall Rothstein of the Supreme Court of Canada recently spoke at the American Bar Association’s Intellectual Property Law Luncheon held on August 6, 2011, in Toronto. His speech was largely focused on how the Supreme Court of Canada may arrive at different conclusions in patent cases, as compared to its American counterpart, mainly due to differing standards of proof.  In addition to this contrast, Justice Rothstein also gave his thoughts on the patentability of higher life forms.  The full text of his remarks will be published in an upcoming edition of the Intellectual Property Journal.

In Microsoft v. i4i LP, the United States Supreme Court ruled that the standard of proof for rebutting the presumption of a patent’s validity was “clear and convincing evidence” instead of the usual civil standard of a “preponderance of evidence”.  Although Justice Rothstein explicitly stated, in the future, he may decide that the opinions he expressed in his speech are wrong, he went on to offer his view on why Microsoft v. i4i likely would have been decided differently in Canada based on differing standards of proof.
Justice Rothstein began by referencing Canada’s Patent Act, specifically section 43(2), and noted that like the US Patent Act, once a patent is granted by the Patent Office, it is presumed to be valid in the absence of any evidence to the contrary, with no mention of a standard of proof.  From Justice Rothstein’s perspective, this means that patent cases should be decided with the same standard as any other civil case.

Also troubling for Justice Rothstein was the similarity that the “clear and convincing evidence” standard has to the criminal standard of proof “beyond a reasonable doubt”.  Based on the precedents that the United States Supreme Court referred to in Microsoft v. i4i (including Cantrell v. Wallick and Radio Corporation of America v. Radio Engineering Laboratories, Inc.), Justice Rothstein stated that if he interpreted the strong wording in those cases correctly, “the clear and convincing standard is to all intents and purposes equivalent to proof beyond a reasonable doubt.”

Justice Rothstein voiced his concern with the difficulty for both judges and juries to understand what “clear and convincing evidence” really means in terms of how much evidence is necessary to rule in the favour of one side over the other.  While it is fairly easy to understand the idea of a balance of probabilities, it is more difficult to understand the concept of beyond a reasonable doubt, at least for some juries and the judges who explain it to them (as in the Supreme Court of Canada case of R. v. Lifchus).  “Clear and convincing evidence” appears to be an even more unclear concept – falling somewhere between the traditional civil and criminal standards.  But where? This uncertainty can be avoided by only having one standard for civil cases, and feeling confident that a judge or jury’s decision was based on evidence that was sufficiently clear and convincing.

To close, Justice Rothstein spoke about subject matter patentability, with reference to two frequently-cited Supreme Court of Canada decisions: Harvard College v. Canada (Commissioner of Patents), also known as the “Harvard Mouse” case, and Monsanto Canada Inc. v. Schmeiser.  Justice Rothstein authored a judgment in the Harvard Mouse case while sitting on the Federal Court of Appeal, where he ruled that a genetically altered mouse for research purposes was patentable.  This judgment was eventually overturned by the Supreme Court of Canada, due largely to concerns of what patenting complex and sentient life forms could lead to.  In his disagreement with that decision, Justice Rothstein set out six key points that should guide the approach to subject matter patentability:

1. the context of the Canadian Patent Act is expansive, meaning it should encourage innovation even if it is unsure what it may be,
2. patents will not be granted indiscriminately, as they still must be new, useful and non-obvious,
3. since Parliament repealed a provision prohibiting inventions with potentially illicit objectives, this further strengthens the expansive interpretation of the Patent Act from 1.,
4. courts cannot deny patents based on potential social, cultural or economic impacts of an invention,
5. furthermore, what is patentable should not be confused with what should be regulated.  An invention may need be regulated for the sake of public policy, but this does not mean it is not patentable,
6. as per the Harvard Mouse case, if a distinction between higher and lower life forms is to be made, that is a distinction for Parliament, and not the courts to make.

It is important to remember, as Justice Rothstein mentioned, that he disagreed with the ruling in Harvard Mouse, and felt that the decision was all but overruled by the Supreme Court of Canada in Monsanto.  Certainly, there may be differing opinions from the other Supreme Court of Canada Justices if they were to give a speech on the same topic.  Nevertheless, Justice Rothstein’s voice is often heard in the Court’s decisions on intellectual property cases (most recently in Masterpiece Inc. v. Alavida Lifestyles Inc., IP Osgoode coverage found here) and as such, speeches like this recent one to the American Bar Association members may provide insight into future intellectual property decisions made by Canada’s highest court.