Court of Appeal dismisses Pfizer’s motion to strike PM(NOC) action as abusive
The Court of Appeal recently determined that the institution of proceedings under the “new” PM(NOC) Regulations, is not re-litigation or an abuse of process where the same issues were already considered in proceedings under the “old” PM(NOC) Regulations. Background Amgen had previously unsuccessfully asserted the 537 patent against generic pharmaceutical manufacturer Apotex under the former... Read More
Different Approaches for Assessing the Likelihood of Confusion of ZARA Word and Design Marks Held Unreasonable
Zara Natural Stones Inc. sought to register the design trademark in association with paving blocks, paving stones, and paving tiles. At the time of the application, Industria de Diseno Textil, S.A. held several registered trademarks that included the word “ZARA”, as well as a pending application for the trademark “ZARA HOME” in association with floor... Read More
Supreme Court of Canada Refuses to Hear Mining Patent Obviousness Appeal
On June 14, 2018, the Supreme Court of Canada dismissed Ciba’s application for leave to appeal the decision of the Federal Court of Appeal holding Canadian Patent 2,515,581 invalid for obviousness (see our previous post here). This a final decision with no other available avenues of appeal. Appellants from the Federal Court of Appeal do... Read More
Bauer Hockey Helmets Avoid Infringement Injury
On May 7, 2018 the Federal Court granted MIPS action in part, findings its patent valid but not infringed by Bauer’s RE-AKT and RE-AKT 100 helmets while invalidating a single claim from the four Bauer patents at issue. Background MIPS, a global leader in sports helmet technology, alleged that Bauer’s RE-AKT and RE-AKT 100 hockey... Read More
Formalities for Confidentiality Orders Not Required for Trial Materials
On March 29, 2018 the Federal Court dismissed MediaTube’s motion challenging the confidentiality designations made by Bell Canada during and following the trial of its patent infringement action alleging Bell’s FibeTV services infringe Canadian Patent No. 2,339,477. During trial, Bell requested that certain documents be treated as confidential and MediaTube did not object. The Federal... Read More
Circumstances Not Sufficiently Special To Allow Pleading Amendment
On February 6, 2018, Justice Dunphy dismissed Sanofi’s motion for leave to amend their statement of defence in light of “special circumstances”, namely the Supreme Court of Canada overturning the “promise doctrine” (AstraZeneca). The underlying action, started more than 7 years ago, was Apotex’s claim in the Ontario Superior Court of Justice, the Statute of... Read More
Some Degree Of Expected Confusion With A Weak Trademark Not Enough To Prevent Registration
On February 5, 2018, Justice LeBlanc released his Judgment and Reasons in 2018 FC 121 involving the applicant, Assurant, Inc. and the respondent, Assurancia, Inc. He dismissed Assurant’s appeal brought under section 56 of the Trade-marks Act and upheld a decision of the Trade-marks Opposition Board rejecting Assurant’s opposition to the registration of the trade-mark... Read More
Patent Infringers Cannot Elect Patentee’s Remedy
The Federal Court of Appeal dismissed Apotex’ appeal from a decision in which Apotex sought to elect the remedy that Bayer was entitled too after Apotex was found liable for patent infringement. The Decision Below Following a finding that Apotex infringed Bayer’s 426 Patent, Apotex argued that it should be entitled to elect Bayer’s remedy... Read More
Court of Appeal Clarifies Costs Framework in Copyright Class Action
On November 15, 2017, the Federal Court of Appeal issued its Reasons for Judgment in an appeal from an order that (1) granted the respondent’s motion for security for costs for a pending certification motion, (2) set the quantum of security at $75,000.00 and (3) awarded the respondent lump sum costs of $750.00 on the... Read More
Shilajit Inventor Has No Rights To Assert After Patent Assignment
In Rowland v. Stephen, Justice Petersen struck Mr. Rowland’s statement of claim and denied his leave to amend on the basis that Mr. Rowland, having assigned the full and exclusive rights to his invention including any patent that may be granted in respect thereof, no longer had any proprietary rights to the invention to assert. ... Read More
First Use, Not Registration, Confers Exclusive Right To A Trade-mark
On November 2, 2017, Justice Roussel allowed Micro Matic’s application under section 57 of the Trade-marks Act and struck Taizhou’s trade-mark registration for MICRO MATIC & Design (No. TMA 942,000) from the register of trade-marks: Micro Matic is a Danish company that has supplied beverage dispensing systems, including draught beer systems, in Canada for over twenty... Read More
Court of Appeal Jettisons Uncertain “Inventive Concept” in Obviousness Analysis
The Federal Court of Appeal released its decision in the appeal from the successful patent impeachment action by SNF challenging the validity of a Ciba Specialty Chemicals Water Treatments patent related to a process of employing flocculants to recycle water from dispersed particulate matter in the mining industry. At trial, Justice Phelan held that Canadian... Read More
Entirety Of The Patent Must Be Considered When Determining If A Patent Pertains To A Medicine
Galderma had two patents for Differin which contained 0.1% adapalene (Canadian patent nos. 1,266,646 and 1,312,075 (expired 2007 and 2009, respectively). In 2009, Galderma obtained Canadian patent no. 2,478,237 for Differin XP which contained 0.3% adapalene. Representative claim 7 of the 237 Patent provides: A pharmaceutical composition comprising, in a physiologically acceptable medium, 6-[3-(1-adamantyl)-4-methoxyphenyl]-2-naphthanoic acid... Read More
Apotex Seeks Rehearing of NEXIUM Patent Validity Following Supreme Court’s Decision
On August 29, 2017 Apotex filed a motion with the Supreme Court of Canada, requesting a rehearing of the appeal and an amendment of the corresponding judgment in which the Supreme Court held that the promise doctrine is not the appropriate standard for assessing utility and that AstraZeneca’s 653 Patent is valid (2017 SCC 36;... Read More
Triple Multiplier Applied to Lump Sum Tariff Award to Dow in Patent Infringement Action against Nova
On August 8, 2017, Justice Fothergill issued his Order and Reasons awarding Dow lump sum costs in excess of $4.3 million dollars for the remedies phase of a patent infringement action. Background In the liability phase, Dow’s Canadian Patent No. 2,160,705 was found valid and infringed by Nova (2014 FC 844; aff’d 2016 FCA 216).... Read More
Should I Stay Or Should I Go? Federal Court Stays Re-Examination In Light Of Invalidity Action
On October 6, 2016, Justice Roy granted Camso’s motion to stay the re-examination of Camso’s 562 Patent until final judgment is rendered in an action in which the validity of the 562 Patent is being challenged on the same grounds as those raised in the re-examination. Re-examination Patent re-examination is provided for in sections 48.1... Read More
Notice and Notice: ISPs May Only Charge Reasonable Fees For Disclosing Identities Of Suspected Copyright Infringers
Sections 41.25 and 41.26 of the Copyright Act allow copyright owners to send notices of infringed copyright to ISPs, such as Rogers. These sections, introduced in 2015, require that ISPs maintain records in a manner that allows for the identification of suspected infringers, send notices to suspected infringers and keep the records in a manner... Read More
Teva Successful In Pregabalin Section 8 Damages Case Against Pfizer
On March 30, 2017 Justice Phelan issued his Public Reasons for Judgment awarding Teva damages under section 8 of the PM(NOC) Regulations after Pfizer prevented Teva from selling its pregabalin product. Pregabalin is used for the management of neuropathic pain and is sold by Pfizer under the trade name Lyrica. Justice Phelan applied what is... Read More
What Do You Really Get When You Acquire Copyrighted Materials Through Foreclosure?
AAAI is an architecture firm that developed plans for a building project called “Murray’s Walk” for MWDL. In April 2009, AAAI filed a builder’s lien on the project over unpaid fees. In May 2011, the project was restarted after AAAI was paid $190,000 and released the lien. AAAI submitted the plans to the city of... Read More
Nintendo Wins $12.7M+ Damages for Digital Lock Circumvention
On March 1, 2017, Justice Campbell released his Judgment and Reasons in Nintendo v. Go Cyber Shopping. Nintendo was wholly successful in its claim against GCS for technological protection measures and copyright infringement pursuant to the Copyright Act. Broadly, the application concerned the pirating of games on Nintendo’s DS, 3DS and Wii game consoles. This... Read More
Ordinary Actions Of Corporate Officers Not Sufficient To Pierce Corporate Veil In Oilfield Patent Infringement Action
On February 13, 2017 the Federal Court of Appeal dismissed an appeal by NOV Downhole Eurasia Limited and Dreco Energy Services ULC who sought to amend their statement of claim in a patent infringement action by adding individuals as parties and adding a claim for joint and several liability. Two of the individuals sought to... Read More
First Impression for Internet Confusion Occurs At Search Results Page – BCCA
On January 26, 2017, the BCCA granted Vancouver Community College’s appeal and held that it’s passing off claim against Vancouver Career College had been established. The BCCA also remitted Vancouver Community College’s claim of breach of official marks to the trial court for fresh determination. Vancouver Community College alleged passing off by Vancouver Career College... Read More
Patentee’s Conduct in Impeachment Action Warrants 50% Elevation Of Tariff B Costs
In Pollard Banknote Limited v. Babn Technologies Corp. and Scientific Games Products (Canada) ULC (2016 FC 1193), Justice Locke dealt with the issue of costs following his finding that the claims of Canadian Patent No. 2,752,551 were invalid or, in the alternative, not infringed (see our previous post here). In his Judgment, Justice Locke provided... Read More
Federal Court Prohibits Approval Of Generic ADHD Drug
In Janssen Inc. v. Actavis Pharma Company, 2016 FC 1361, Janssen sought an order prohibiting the Minister of Health from issuing a Notice of Compliance to Actavis for a generic version of the ADHD drug CONCERTA. Justice O’Reilly held that Actavis’s allegations of invalidity and non-infringement of Canadian Patent No 2,264,852 were not justified. The... Read More
Decision To Not File Evidence On Motion To Dismiss Sinks Prohibition Application
On December 8, 2016 Prothonotary Aalto dismissed Valeant’s prohibition application against Apotex regarding metformin as an abuse of process. Apotex’s Notice of Allegation alleged, among other things, non-infringement and Apotex brought a motion under paragraph 6(5)(b) of the PM(NOC) Regulations to have the application dismissed for being an abuse of process. In support of its... Read More