Pharmascience Sleeping Like A Baby After Sublinox Patent Win
On December 9, 2016 Justice Manson released his Public Judgement and Reasons dismissing Meda’s application for a prohibition order regarding Pharmascience’s zolpidem product and Canadian Patent No. 2,629,988. Zolpidem is used for the treatment of insomnia and is marketed under the trade name SUBLINOX. The 988 Patent is generally directed to pharmaceutical compositions of zolpidem comprising ordered mixtures... Read More
Apotex’ Remedial Claims Based On Pfizer’s Viagra Patent Survive Another Attack
On November 18, 2016, Justice Nordheimer of the Ontario Superior Court of Justice dismissed Pfizer’s motion for leave to appeal a decision that dismissed, with two exceptions, Pfizer’s motion to strike various remedial claims made by Apotex (see our prior blog post here). Pfizer successfully asserted a patent covering sildenafil against Apotex under the PM(NOC)... Read More
API Fails To Remove Excalibre: API’s Torque Anchor Patents Invalid Or Not Infringed
Excalibre Oil Tools Ltd. v. Advantage Products Inc. concerns the validity and infringement of three Canadian patents. Justice Manson held that the three patents (Nos. 2,264,467, 2,373,734 and 2,386,026) asserted by API were either invalid or not infringed by Excalibre’s product. The technology at issue relates to torque anchors for oil pumps. Sufficient pressure is... Read More
Infringement To The Omax: Default Judgement In Real Estate Trade-mark Action
In Maxwell Realty Inc. v. Omax Realty Ltd., Justice McDonald considered an ex-parte motion for default judgement for trade-mark infringement. Maxwell operates a real estate agency in the provinces of Alberta and British Columbia. In 1999, Maxwell registered the the following design in association with the operation of a real estate agency: In 2015, Maxwell... Read More
Motion for Declaration of Software Ownership Dismissed
Justice G. Dow, in One Street Digital Inc. v. Berkeley Payment Solutions Inc., dismissed a motion brought by OSD seeking to have it declared the owner of software that it provided to BPS as part of a consulting agreement. OSD also sought to restrain BPS from using or altering the software and source code. The... Read More
A Quick Proceeding for Quick Couplers – Summary Trial Finding of Patent Non-infringement
On October 6, 2016, Justice Southcott dismissed Cascade’s patent infringement action against Kinshofer in a motion for summary trial. Kinshofer did not contest the validity of the 065 Patent but asserted a defence of non-infringement. Background The 065 Patent is directed to safety locking devices for quick couplers used with machines, like excavators, for quickly... Read More
Speculative Harm Insufficient For Equipment Rental Injunction
HERC Equipment Rentals operates a construction and industrial equipment rental business in Hamilton and Mississauga. HERC and HERTZ (the car rental company) have had business dealings for 15 years and have operations in close proximity to each other. In March 2014, HERTZ announced its plan to make its equipment rental business a stand-alone business and... Read More
Putting Your (Other) Best Foot Forward: Party May Introduce New Evidence or Argument in Subsequent Infringement Action
On September 19, 2016, Prothonotary Tabib granted, in part, Apotex’ motion to amend its statement of defence and counterclaim in an infringement action concerning Apotex’ Apo-Travoprost Z product. Apotex moved to add an allegation of anticipation, a defence of ex turpi causa based on anti-competitive conduct and two defences based on issue estoppel, abuse of... Read More
New Evidence Of License Agreement Unable To Secure ASIA MILES Trade-mark Registrations
On October 12, 2016, Justice Southcott issued his Judgment and Reasons and Cathay Pacific Airways Limited v. Air Miles International Trading B.V., 2016 FC 1125. Background The case originated from a Trade-marks Opposition Board decision refusing five of Cathay’s ASIA MILES trade-mark applications (1,271,320, 1,271,440, 1,271,441, 1,276,725 and 1,276,720) for registration in association with the operation... Read More
Court Orders Corrections To Discovery Answers Be Read-In
Rule 288 permits a party to rely on answers given during examination for discovery of an adverse party as evidence at trial. Rule 289 provides that the Court may order additional portions of the examination for discovery to be included if they should not be omitted. In Mediatube Corp. v. Bell Canada, an action for... Read More
Qualifying Read-Ins Must Be “Reasonably Connected”
In Excalibre Oil Tools Ltd. v. Advantage Products Inc., API sought an order pursuant to Rule 289 of the Federal Courts Rules ordering that Excalibre include, as part of their read-ins, additional portions of the transcripts from the examination for discovery of API on the basis that these qualifying read-ins provide clarity, context and value to... Read More
Conference call transcript sinks TRUVADA combination patent
On August 19, 2016, the Federal Court released the public judgment and reasons by Justice Brown in 2016 FC 856. The case was a prohibition proceeding pursuant to s. 6 of the NOC Regulations where the only patent in issue remained Canadian Patent No. 2,512,475, which expires on January 13, 2024. The 475 Patent relates... Read More
Trial Judges Entitled To Some “Leeway” On Construction
On September 6, 2016, the Court of Appeal dismissed Nova Chemicals Corporations appeal from a judgment finding its SURPASS product infringes Canadian Patent No. 2,160,705 directed generally to polyethylene film products, such as plastic garbage bags and food wrapping. The 705 Patent was previously held valid and infringed Justice O’Keefe (see here). On appeal, Nova... Read More
Mövenpick’s “Marché & Wave” Trade-mark Withstands Richtree’s Opposition Appeal
On September 15, 2016, Justice Boswell dismissed Richtree’s appeal, pursuant to section 56 of the Trade-marks Act, from the decision of the Trade-marks Opposition Board that had rejected Richtree’s opposition to a trade-mark application filed by Mövenpick. In 2005 Richtree purchased the assets of Richtree Markets Inc. after it became insolvent. Prior to its insolvency,... Read More
Prohibition Order Granted Against Generic VIREAD Product
On August 23, 2016, the Federal Court released the public judgment and reasons by Justice Brown in 2016 FC 857. The case was a prohibition proceeding pursuant to s. 6 of the NOC Regulations relating to Canadian Patent No. 2,261,619, which expires on July 25, 2017. The 619 Patent claims tenofovir disoproxil fumarate – a... Read More
Court Refuses to Reconsider Prohibition Order Granted On The Basis of NOA Insufficiency
As previously described here, Justice Brown granted a prohibition application brought by Bayer relating to the drug moxifloxacin hydrochloride and Canadian Patent No. 2,192,418 on the basis of NOA insufficiency notwithstanding also finding that Bayer had not established Fresenius’ allegation of non-infringement was not justified. Fresenius, in addition to appealing the Order of Justice Brown,... Read More
On to the next round: Some of Apotex’s claims for being kept off the sildenafil market survive motion to strike
In Apotex Inc. v. Pfizer Ireland Pharmaceuticals et al., 2016 ONSC 4966, Pfizer was looking to strike out claims brought against it by Apotex under the PM(NOC) Regulations and the Trade-marks Act, as well as claims for unjust enrichment, nuisance, contrary to the principle in Ashby v. White (1703), 2 Raym. Ld. 938 and conspiracy.... Read More
Declaration of Patent Ownership Does Not Crystallize for SALT Canada
On July 20, 2016, Justice Boswell released his Judgment and Reasons in SALT Canada Inc. v. John W. Baker, 2016 FC 830, dismissing SALT’s application for a declaration pursuant to section 52 of the Patent Act that the owner of Canadian patent no. 2,222,058 be changed to SALT. The 058 Patent is entitled “Method of... Read More
Charity not a “public authority” for purposes of official marks
On July 11, 2016 Justice Russell granted Starbucks (HK) Limited’s (not the coffee maker) application to review and set aside the Registrar’s decision to give public notice of the adoption and use of NOWTV as an official mark of Trinity Television Inc. Section 9(1)(n)(iii) of the Trade-marks Act provides that a “public authority” may request... Read More
Code Words Result In NOA Insufficiency
In Bayer Inc. v. Fresenius Kabi Canada Ltd., Justice Brown of the Federal Court granted Bayer’s prohibition application relating to the drug moxifloxacin hydrochloride and Canadian Patent No. 2,192,418. The 418 Patent is listed on the Patent Register against Bayer’s AVELOX I.V. solution. The 418 Patent claims a monohydrate form of moxifloxacin hydrochloride characterized by certain... Read More
AstraZeneca’s Attempt to Vary Judgment Based on Subsequent Finding of Infringment Rejected
In 2012, Justice Hughes held that Apotex was entitled to section 8 damages by reason of AstraZeneca’s unsuccessful prohibition application in respect of Apo-omeprazole and AstraZeneca’s 762 Patent and referred the quantum of Apotex’ damages to a reference. In his reasons accompanying the 2012 Judgment, Justice Hughes held that Apotex’ possible infringement of a different AstraZeneca Patent, the... Read More
NOV Downhole Fails to Pierce the Corporate Veil
In NOV Downhole Eurasia Limited v. TLL Oilfield Consulting Ltd., 2016 FC 685, NOV appealed an Order of Prothonotary Milczynski (acting in her capacity as a case management judge) dismissing NOV’s motion to (i) amend their Statement of Claim which sought to add three individuals as defendants in the underlying patent infringement action, and (ii)... Read More
Dude, That’s Not Your Code: Claim for Computer Authorship Denied
In Andrews v McHale, 2016 FC 624, Justice Southcott dismissed an application for declaratory relief and damages for alleged copyright infringement and infringement of moral rights relating to software systems. The dispositive issue in the case was authorship. Justice Southcott considered case law from the UK and USA but cautioned against its use, instead relying... Read More
Court Re-affirms the Importance of Affidavit Evidence on a Motion for Particulars
On April 5, 2016 Justice LeBlanc released his Order and Reasons in Stryker Corporation v. Umano Medical Inc., 2016 FC 378. The decision stemmed from a motion by the Defendants to: (i) strike portions of the Plaintiffs’ Statement of Claim (or in the alternative, for the Plaintiffs to provide further and better particulars); and (ii)... Read More
Hey Trademark Infringer You’re No Friend of Mine – Mister Transmission obtains injunction against Master Transmission
Responsive Brands operates throughout Canada as “Mister Transmission”. Responsive Brands is the owner of Canadian Trademark 239,868 for MISTER TRANSMISSION registered in association with transmission services for vehicles. 2248003 Ontario has operated in Orillia, Ontario under the trade name “Master Transmission & Driveline” since June 2010, when its principals left a Mister Transmission store to... Read More