Apotex receives divided success on its motion to amend on the eve of trial
With only a few days remaining before trial, Apotex brought a motion to amend its Further Amended Statement of Defence to include references to the parent application (the 574 Application) related to a divisional patent (the 851 Patent) originally pleaded in support of its Gillette Defence. In pleading its Gillette Defence, Apotex relied on the... Read More
Not Trading Places: Federal Court Clarifies the Role of the Attorney General on Judicial Review Applications
The Federal Court recently clarified the role of the Attorney General of Canada (AGC) on applications for judicial review. The AGC has frequently participated as respondent on applications from international trade decisions under the Special Import Measures Act, generally opposing the application and arguing in support of the underlying tribunal decision. A group of exporters... Read More
FCA Clarifies Threshold for Soundly Predicting Utility
Justice Locke, writing a unanimous decision for the Federal Court of Appeal in Sandoz v Janssen, 2023 FCA 221, dismissed Sandoz’s appeal of 2022 FC 715, agreeing in particular with the Trial Judge that the 770 Patent, for the use of macitentan in combination with a PDE5 inhibitor for treating pulmonary arterial hypertension (“PAH”), does... Read More
No Entitlement to Punitive Damages for Infringing Compatible Products
Angelcare Canada Inc v Munchkin, Inc, 2023 FC 1111 deals with the Plaintiffs’ entitlement to remedies arising from a successful patent infringement action relating to diaper pail cassettes (2022 FC 507). In the prior decision, the Federal Court found the Defendants’ cassettes and assemblies of cassettes and diaper pails had infringed the Plaintiffs’ patents. One... Read More
Vacuum Wars and Trademark Troubles: VPC Fails to Obtain Interlocutory Injunction
In 2572495 Ontario Inc. v. Vacuum Specialists (1985) Ltd., Justice Pentney of the Federal Court dismissed a motion for an interlocutory injunction in a trademarks case. Background 2572495 Ontario Inc., otherwise known as Vacuum Parts Canada, is the owner of the trademark “VPC” and the tradename “Vacuum Parts Canada”. VPC’s primary business is online sales... Read More
Leave Granted to Amend Statement of Defence and Includes Bases of Invalidity not Contained in Notice of Allegation
In Boehringer Ingelheim (Canada) Ltd v JAMP Pharma Corporation, 2023 FC 1414, Associate Judge Cotter of the Federal Court granted JAMP’s motion for leave to serve and file an amended statement of defence. In the underlying proceeding under subsection 6(1) of the Patented Medicines (Notice of Compliance) Regulations, Boehringer asserts JAMP’s products would infringe or induce... Read More
Associate Judge Allows Extension of Time to Complete Inter Partes Testing
In Gilead Sciences, Inc v JAMP Pharma Corporation, 2023 FC 1141, Associate Judge Crinson of the Federal Court granted a motion for an extension of time for inter partes testing brought by JAMP Pharma. The underlying two proceedings under subsection 6(1) of the Patented Medicines (Notice of Compliance) Regulations concern patents relating to the drug... Read More
Federal Court of Appeal Strikes Down “Test” for Patentability of Computer-Implemented Inventions
Attorney General of Canada v Benjamin Moore & Co., 2023 FCA 168 concerned the appeal of Federal Court decision 2022 FC 923. The underlying Federal Court decision had set out binding instructions in the form of a test for CIPO to follow to when determining the patentability of computer-implemented inventions. The FCA allowed the Appeal... Read More
But-For Result in Prohibition Proceeding Does Not Give Rise to Section 8 Claim for Damages
The Ontario Superior Court recently dismissed a claim for damages brought by Apotex under section 8 of the Patented Medicines (Notice of Compliance) Regulations. The Ontario Court held that the circumstances of Apotex’s claim did not entitle it to compensation, and further found that even if the circumstances had given rise to compensation, Apotex did... Read More
Lack of Success is Not Evidence of Bias
Christopher Johnson, a self-represented Plaintiff, commenced a copyright infringement action in November 2021 against several defendants, including the Canadian Tennis Association (“Tennis Canada”). Madam Associate Judge Coughlan was appointed as case management judge. The action had stalled due to several “unnecessary and duplicative” motions brought by Mr. Johnson. Mr. Johnson brought a motion under Rule... Read More
Infringers held accountable with the springboard profits and accounting for profits remedies
The SCC dismissed Nova Chemical’s appeal of Dow Chemicals’ accounting of profits and springboard profits award in an 8:1 (Côté J. dissenting) split and provided a guide for quantifying the remedy as well as further explaining what a non-infringing option entails. The SCC also confirmed that spring-boarding profits may be awarded as part of an... Read More
Slips of the pen do not restore Janssen’s Zytiga Monopoly
In Janssen Inc v Apotex et al., 2022 FCA 184, the Federal Court of Appeal affirmed the invalidity of Canadian Patent No. 2,661,422 (the “422 Patent”). The underlying actions (commenced against Apotex, Pharmascience and Dr. Reddy’s) were heard concurrently by Justice Phelan (Janssen Inc et al v Apotex Inc., 2021 FC 7). Justice Phelan held... Read More
Is Divided Infringement on the Horizon in Canada?
In the companion decisions Rovi Guides v. Videotron, 2022 FC 981 and Rovi Guides v. Bell, 2022 FC 979, the Federal Court propped the door open to patent infringement by common design and infringement by attribution in Canada. Neither doctrine has been adopted into Canadian patent law but they are established in UK and US... Read More
Strike Two: CIPO’s Problem Has a Solution
The Canadian Intellectual Property Office has taken another hit in Benjamin Moore in which two decisions of the Commissioner of Patents rejecting claims to computer-implemented inventions were successfully appealed. Benjamin Moore holds the line on a path set in 2020 when the Federal Court ruled that CIPO’s “problem-solution” approach to claim construction was the wrong... Read More
An Expiring Patent Will Get Its Day in Court under Section 6 of the PM(NOC) Regulations
Should an action under section 6(1) of the Patented Medicines (Notice of Compliance) Regulations be rendered moot if the asserted patent will expire before the trial date and the 24-month mandatory stay? This was the issue before Justice O’Reilly, whom had to determine whether AstraZeneca’s was entitled to a declaration that its infringement action was... Read More
Birds of a Feather Will Not Flock Together: Section 6.02 of PM(NOC) Regulations Prohibits Trials of Common Issues Absent Consent
The Federal Court of Appeal set aside a Federal Court order requiring a trial of common issues from two separate actions initiated by Bayer against four pharmaceutical generics companies. It found that a trial of common issues cannot be ordered under section 6.02 of the PM(NOC) Regulations without consent of all implicated parties. Bayer, the... Read More
Degree of Care is a Relevant Consideration in Assessing Javelo Likelihood of Confusion
On April 20, 2020, the Federal Court of Appeal dismissed Clorox’s appeal from a decision of Justice Grammond of the Federal Court upholding the Trademarks Opposition Board’s decision rejecting Clorox’s opposition to two trademark applications filed by Chloretec. In January 2012, Chloretec filed trademark applications to register the trademark JAVELO and the design trademark on... Read More
Federal Court Dismisses Action for Patent Infringement by Summary Trial
In February 2018, the Plaintiffs, ViiV Healthcare Company, Shionogi & Co Ltd, and ViiV Healthcare ULC filed a lawsuit against the Defendant, Gilead Sciences Canada, Inc for infringement of Canadian Patent No. 2,606,282 by making, using, selling, or offering to sell bictegravir as a component in its BIKTARVY product. Gilead denied all allegations of infringement,... Read More
Reality Check for s. 8 Damages: But-For World Should Reflect Real World
The Federal Court of Appeal recently pronounced from the bench that damages claimed under section 8 of the PM(NOC) Regulations for lost profits incurred in the but-for world will not be reduced under section 8(5) if the patentee would not have asserted its patent rights in the but-for world. Pharmascience sought to market a generic... Read More
Patentee may file its own reply in PM(NOC) action
In August 2019, Allergan commenced an action under section 6(1) of the PM(NOC) Regulations against Apotex and HRA Pharma in which it seeks a declaration of infringement in respect of Canadian Patent No. 2,723,254. Apotex filed a Statement of Defence in which it argued that the 254 Patent was invalid. The United States, the co-owner... Read More
Round and Round: Ajit Trademark Litigation 10 Years In
Background Hamdard Trust and Navsun Holdings have engaged in a longstanding litigation over the use of the term “Ajit” in their trade-marks and advertisements. Both parties own and publish newspapers. The Hamdard Trust newspaper is sold under the name “Ajit Daily”, while Navsun publishes under the name “Ajit Weekly”. In the initial decision, Navsun was... Read More
Pass the Scalpel: “Surgical” Reply Report Responding to New Evidence Held Admissible
On the eve of trial, the Federal Court accepted filing of a reply report responding to new evidence but did not allow filing of a sur-reply report deemed confirmatory in nature. This decision further entrenches the principles governing admissibility of reply evidence recently examined in Teva paliperidone and highlights the evolving Hryniak-inspired “litigation culture change” in the... Read More
Federal Court of Appeal: A Leaf Blower is not Enough
In this case, the Federal Court of Appeal upheld the decision of Justice Locke, who found that two patents pertaining to the drug bortezomib were invalid for obviousness, and explained that the palpable and overriding error is a high bar to meet for litigants. Background In 2015, Janssen Inc. and Millennium Pharmaceuticals Inc. were unsuccessful... Read More
Product Monographs Given Flexible Reading Informed by Patent Analysis
In Janssen Inc. v. Apotex Inc., 2019 FC 1355, the Federal Court granted Janssen’s application for an order prohibiting the Minister of Health from issuing a Notice of Compliance to Apotex for its proposed abiraterone acetate product until the expiry of Janssen’s patent listed for ZYTIGA. Canadian Patent No 2,661,422 claims a combination of abiraterone... Read More
Court Says No to Reply Evidence, Yes Please to Prior Art
In another nod to the Supreme Court’s “litigation culture change” in Hryniak, the Federal Court rejected expert reports tendered in a motion to file reply evidence as case-splitting and improper but allowed the filing of documents attached to the reports in Janssen Inc. v. Teva Canada Limited, 2019 FC 1309. In an action under s.... Read More