Non-Infringing Alternatives: Moving Beyond Condemnation to Arrive at Compensation

Abstract:

Judgments on remedies for patent infringement are rare, and contested judgments even rarer. Among these contested judgments, none are more controversial than those reducing monetary remedies on the basis of non-infringing alternatives (acceptable substitutes for a claimed invention that do not infringe the claimed invention).



In Canada, both of the monetary remedies available for patent infringement, damages and accounting of profits, consider non-infringing alternatives at the causation stage of analysis. The causal analysis requires the construction of a hypothetical “but for” world where the infringement did not occur, for comparison with the actual position of the parties. Infringers assert that “but for” the infringement, a legal noninfringing alternative would have been used, and the patentee would be in the same or similar position as the patentee is in now—thereby reducing the monetary remedies.



As the law in Canada now stands, a non-infringing alternative is relevant to the quantification of remedies only insofar as such an alternative is actually available. Put another way, a non-infringing alternative that is theoretical, but feasible, is irrelevant. This article argues that feasible non-infringing alternatives should be included in the quantification of remedies because their inclusion is more consistent with the objective of the Patent Act—namely, appropriate compensation and appropriate disgorgement.