Engine valve suit should be heard in Canada, rules Indiana judge
An Indiana federal court has granted an Alberta engine maker’s motion to dismiss a patent infringement suit, on the grounds that the case should be heard in Canada.
In an opinion issued last week, the US District Court for the Northern District of Indiana dismissed Tyler Research Corporation’s patent infringement suit against Envacon.
The court invoked the legal doctrine of forum non conveniens, which allows a federal district court to dismiss a suit over which it would normally have jurisdiction in order to best serve the convenience of the parties.
Tyler Research, also based in Alberta, sued Envacon for patent infringement in February. According to Tyler Research, Envacon attempted to deprive it of its exclusive manufacturing rights under a licensing deal between the two Canadian-based firms.
The patent at the heart of the licensing agreement covers the design of shut off valves, used in engines.
Envacon argued that the lawsuit should be dismissed in Indiana and continued at a Canadian court instead.
Tyler Research put forward several arguments against Envacon’s motion to dismiss, including that the company waived its right to invoke forum non conveniens by not raising it in earlier filings.
But the court disagreed, citing precedent that there is “generally ... no time limit on when a motion to dismiss for forum non conveniens must be made”.
Tyler Research also argued that a Canadian court was unlikely to adjudicate infringement claims based on a US patent.
But the court responded: “The court agrees with the plaintiff’s contention; it is true that a Canadian court is unlikely to adjudicate a claim for the infringement of a US patent. However, the plaintiff could still bring a claim for the infringement of the shut off valve’s Canadian patent in a Canadian court.”
“Furthermore, a Canadian court would certainly adjudicate the plaintiff’s breach of contract claim, which alone would remedy the alleged wrong,” the judgment read.
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