M-SYSTEMS FLASH DISK PIONEERS LTD. Appellant v. THE COMMISSIONER OF PATENTS, 2011 FCA 112

Federal Court of Appeal Cour d'appel fédérale Federal Court of Appeal Cour d'appel fédérale Date: 20110322 Docket: A-196-10 Citation: 2011 FCA 112 CORAM: NOËL J.A. NADON J.A. PELLETIER J.A. BETWEEN: M-SYSTEMS FLASH DISK PIONEERS LTD. Appellant and THE COMMISSIONER OF PATENTS (ATTORNEY GENERAL OF CANADA ) Respondent Heard at Montreal, Quebec , on March 22, 2011. Judgment delivered from the Bench at Montreal, Quebec , on March 22, 2011. REASONS FOR JUDGMENT OF THE COURT BY: NADON J.A. Date: 20110322 Docket: A-196-10 Citation: 2011 FCA 112 CORAM: NOËL J.A. NADON J.A. PELLETIER J.A.

BETWEEN: M-SYSTEMS FLASH DISK PIONEERS LTD. Appellant and THE COMMISSIONER OF PATENTS (ATTORNEY GENERAL OF CANADA) Respondent REASONS FOR JUDGMENT OF THE COURT (Delivered from the Bench at Montréal, Quebec, on March 22, 2011) NADON J.A. [1] In our opinion, notwithstanding Mr.

Grenier’s forceful arguments to the contrary, there is no basis for us to intervene in thismatter. [2] We are satisfied that de Montigny J. made no reviewable error in dismissing the appellant’s judicial review application of theCommissioner of Patents’ refusal to reinstate patent application No. 2,334,113, essentially on the basis that the application wasabandoned by operation of law and not as a result of a decision on the part of the Commissioner. [3] More particularly, we are all agreed that our decision in DBC Marine Safety Systems Ltd. v.

Canada (2008), 2008 FCA 256 , 69 C.P.R. (4th) 189 (DBC Marine), which upheld the decision of Mosley J. of the Federal Court (2008), 2007 FC 1142 , 62 C.P.R. (4th) 279, is determinative of the issue now before us in this appeal.

We would add to this that the fact that theappellant takes the position that Rule 29 of the Patent Rules and the September 2, 2003 Practice Note are invalid, null and void asincompatible with the Patent Act and the Canadian Bill of Rights, does not affect the binding nature of our decision in DBC Marine. [4] To avoid any doubt, the Judge’s determination with respect to the constitutional validity of Rule 29 and, in particular, as towhether the Rule violates

Section 2(

e) of the Canadian Bill of Rights is, in our view, correct. [5] As a result, the appeal will be dismissed with costs. “Marc Nadon” J.A. FEDERAL COURT OF APPEAL NAMES OF COUNSEL AND SOLICITORS OF RECORD

DOCKET: A-196-10 STYLE OF CAUSE: M-SYSTEMS FLASH DISK PIONEERS LTD. v THE COMMISSIONER OF PATENTS (AGC) PLACE OF HEARING: Montréal, Quebec DATE OF HEARING: March 22, 2011 REASONS FOR JUDGMENT OF THE COURT BY: NOËL, NADON, PELLETIER JJ.A. DELIVERED FROM THE BENCH BY: NADON J.A. APPEARANCES : François M. Grenier Alexandra Steele FOR THE APPELLANT Alexander Pless FOR THE RESPONDENT SOLICITORS OF RECORD : Robic, LLP Montréal, Quebec FOR THE APPELLANT Myles J. Kirvan Deputy Attorney General of Canada FOR THE RESPONDENT