In the latest chapter of the Adeia Guides Inc. (formerly “Rovi”) (“Adeia”) and Videotron Ltd. (“Videotron”) patent infringement battle, Adeia alleged that Videotron infringed four patents within the same family related to digital entertainment technologies. Videotron denied infringement and counterclaimed for invalidity on the basis of anticipation, obviousness, and in the case of one patent, “double patenting”.
On November 14, 2025, the Federal Court (per Gagné J) (“FC”) held that two of the four patents were valid and infringed by Videotron, and two were invalid on the basis of obviousness and anticipation.
Adeia Guides Inc. v. Videotron Ltd, 2025 FC 1725
This was a long and complex decision, and as such, we have highlighted some of the more interesting elements of the decision, namely: (1) infringement by common design (the first Canadian patent case to find liability on this basis); (2) damages for infringement of two patents within a larger portfolio; and (3) the substitution of one expert witness for another prior to trial.
- Infringement by Common Design
Adeia argued that Videotron could not escape liability for patent infringement by subcontracting aspects of its system architecture to third parties, including Comcast and Brightcove.
Adeia argued, amongst other things, that Videotron was liable for infringement by “common design” because it allegedly worked in concert with other companies to misappropriate Adeia’s rights. The common design doctrine attributes liability where two parties agree on a common action, and in carrying out the action together, infringe the plaintiff’s rights. While no patent infringement case had ever turned on “common design”, Canadian courts had acknowledged the possibility of liability on this basis in several cases.
For the first time in Canada, the FC found a party, in this case Videotron, liable for patent infringement on the basis of common design. The Court held that “one cannot escape liability for patent infringement by virtue of subcontracting out a portion of the infringing act, or by being but one party to an overall harm towards another.” The fact that one actor (Comcast) was not a party to the litigation did not preclude the Court from finding liability on this basis, as Videotron was engaged in the infringement and was not a docile party.
On the other hand, the FC found there was insufficient evidence of a contractual relationship between Videotron, a redacted party, and Brightcove for a finding of infringement based on the theory on common design.
- Damages
Adeia sought damages for lost licensing income in an amount equal to the royalty that Videotron would have paid on Adeia’s entire patent portfolio in 2017.
The FC rejected this claim on the facts because there was an insufficient connection between the wrongdoing (infringement of two patents) and the remedy sought (royalty on a portfolio of 200 patents).
The FC found that the appropriate remedy for the infringement of the two patents should be based on the formula provided by Videotron’s expert based on a rate “per subscriber/per month” in a hypothetical licensing negotiation between the parties, including the following factors:
- The per subscriber license fees in the most recent actual negotiation between the parties;
- The lack of evidence that incremental revenues were generated or incremental profits were earned due to the inclusion of functionality allegedly claimed by the patents;
- The “minor benefits” of the patented inventions compared to prior art methods;
- The existence of potentially non-infringing alternatives that could have been implemented; and
- The minor contribution of the patents compared to the value of Videotron’s technical and commercial contributions and Pay-TV content.
3. Substitution of an Expert Witness
Videotron learned a few months before trial that one of its expert witnesses would be unable to testify for medical reasons. The trial was delayed to give Videotron’s remaining expert time to familiarize himself with the patents addressed in the other expert’s report.
Videotron’s remaining expert adopted the opinions and conclusions expressed in the withdrawn expert report, but in the end the FC preferred the evidence of Adeia’s expert where there was a disagreement between the witnesses.
In the intervening period prior to trial, Videotron’s new expert repeated experiments that had been conducted previously by the withdrawn expert. Videotron did not invite Adeia to attend the additional testing, virtually or otherwise, and did not disclose any photos or videos of it. Adeia argued that the additional testing should not be admitted into evidence because Videotron had not complied with the notice provisions in the FC “Case and Trial Management Guidelines for Complex Proceedings”. The FC held that parties must normally invite each other to any experimental testing that will be relied upon at trial; however, in the unusual circumstances of this case, the FC allowed Videotron to rely on the additional testing because the same tests had been performed previously on an inter partes basis, the new expert did not make any changes to the withdrawn expert’s report, and Videotron had very little time in the period leading up to trial.
Conclusion:
The action and counterclaim were both granted in part. Adeia was awarded damages at a “per subscriber/per month” set of rates and was granted a permanent injunction restraining Videotron from infringing the one patent that was infringed and had not expired.
Adeia has 30 days from the date of judgment to file an appeal in the Federal Court of Appeal.