Jurisprudence récente: la détermination de profits lorsqu’une contrefaçon est établie

Voir le type d’analyse qui est faite par la cour dans deux décisions récentes de la Cour fédérale:

 Monsanto Canada Inc. v. Janssens, 2009 FC 318, (March 26, 2009)http://decisions.fct-cf.gc.ca/en/2009/2009fc318/2009fc318.html

Monsanto Canada Inc. v. Rivett, 2009 FC 317, (March 26, 2009)http://decisions.fct-cf.gc.ca/en/2009/2009fc317/2009fc317.html

 Voici un exemple du raisonnement de la Cour:

[28]           It was submitted by the plaintiffs that there are three possible approaches to determining the profits of the infringer that are to be paid over to the patentee:

a.      The value based or differential profit approach;

b.      The variable cost or incremental cost or differential cost approach; and

c.      The full absorption or full cost approach.

 

            Differential Profit Approach

[29]           The differential profit approach requires that the Court compare the profits made by the infringer that are attributable to the invention and the profits that the infringer would have made if he had used the best non-infringing option.  Using this approach, the analysis required is as follows:

a.      Is there a casual connection between the profits made and the infringement?  If there is none, then there are no profits that require an accounting.

b.      If there is a causal connection, then what were the profits made by the infringer as a result of the infringement?  This amount I shall describe as the Gross Profits of Infringement.

c.      Is there a non-infringing option that the infringer could have used?

d.      If there is no non-infringing option, then the Gross Profits of Infringement are to be paid over to the patentee.

e.      If there is a non-infringing option, then what profit would the infringer have made, had he used that option?  This amount I shall describe as the Gross Profits of Non-Infringement.

f.        Where there was a non-infringing option available, the amount to be paid over to the patentee is the difference between the Gross Profits of Infringement and the Gross Profits of Non-Infringement.  This sum is the profit that is directly attributable to and that results from the infringement of the invention.

 

            Differential Cost Approach

[30]           The differential cost approach involves no comparison or consideration of what might have been.  The differential cost approach requires that the Court deduct from the gross revenue received by the infringer the variable or current expenses directly attributable to the infringement and any increased, fixed or capital expenses that are directly attributable to the infringement.  Using this approach, the analysis required is as follows:

a.      What is the gross revenue the infringer received as a result of the infringement (the Gross Revenue)?

b.      Did the infringer incur any current expenses in infringing the patent; if so what is the total of those expenses (the Current Expenses)?

c.      Did the infringer incur any capital expenses directly related to infringing the patent; if so what is the total of those expenses (the Capital Expenses)?

d.      The amount to be paid over to the patentee is the Gross Revenue less the sum of the Current Expenses and the Capital Expenses.

 

[31]           A current expense is one that usually reoccurs after a short period.  In the context of this action, current expenses incurred in growing, harvesting, and selling a farm crop could include the expenses incurred in leasing land, hiring contractors to plant, cultivate and harvest the crop, costs incurred in purchasing fertilizers and herbicides, and the costs incurred in purchasing crop insurance.  A capital expense generally gives a lasting benefit or advantage.  In the context of this action, capital expenses incurred in growing, harvesting, and selling a farm crop could include the expense of any machinery that was purchased specifically and only in order to plant, cultivate or harvest the crop.  Where that capital expense has uses other than those directed to the patented invention, then it may be appropriate to deduct only a portion of the expense.

 

            Full Cost Approach

[32]           The full cost approach increases the deductible expenses in the differential cost approach by also deducting from the revenue earned the relevant portion of the common costs incurred by the infringer.  In the context of this action, where the infringer is using a patented seed but is also growing, harvesting and selling other crops from conventional seed, he will have costs that are incurred as a consequence of his farming operations, such as general insurance on his buildings and equipment, capital depreciation of equipment, and expenses for water and electricity.  Using the full costs approach, a portion of these common costs would be deducted from the revenue earned by the infringer.

 

[33]           If the full cost approach has ever been endorsed by this Court, it has not been of late.  It has been rejected in Teledyne Industries Inc. et al. v. Lido Industrial Products Ltd. (1982), 68 C.P.R. (2d) 204 (F.C.T.D.); Diversified Products Corp. et al. v. Tye-Sil Corp. Ltd. (1990), 30 C.P.R. (3d) 324, aff’d on this point (1990), 32 C.P.R. (3d) 385 (F.C.T.D.); Hancor Ltd. et al. v. Les Systèmes de Drainage Modernes Inc. (1991), 38 C.P.R. (3d) 62 (F.C.T.D.); and Wellcome Foundation Ltd. v. Apotex Inc. (1998), 82 C.P.R. (3d) 466.  Neither party advocated using the full cost approach in this case.

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