Patent listing under 4(2)(b) – perfect match not required
In Eli Lilly Canada Inc v Attorney General of Canada, 2015 FCA 166, Justice Nadon allowed an appeal from Justice Bédard affirming the Ministers refusal to list Canadian Patent No. 2,379,329 on the Patent Register. In 2011, an NOC was issued for a precise formulation of medicinal ingredients, spinosad and milbemycin oxime. The 329 Patent’s... Read More
Competition Bureau Launches Public Consultation on IP Enforcement Guidelines
The Competition Bureau has released draft and updated Intellectual Property Enforcement Guidelines for public consultation, and is seeking comments and feedback by August 10, 2015. The draft guidelines largely mirror those originally released back in September 2014 with a few notable changes. Specifically, the updated draft guidelines go into much more detail about how the... Read More
Sound Prediction: Self-evident Elements Need Not Be Explicitly Disclosed
On June 3, 2015, the Federal Court of Appeal held that elements that would be self-evident to the skilled person need not be explicitly disclosed in the patent for the purpose of predicting utility. In the decision under appeal, 2014 FC 567, Justice O’Reilly had found that Apotex’s allegations were not justified and accordingly granted... Read More
Supreme Court dismisses ramipril section 8 damages appeal
On April 20, 2015, the Supreme Court of Canada dismissed from the bench Pfizer’s appeal arising from Apotex Ramipril FCA. The Supreme Court took the rare approach of granting leave to appeal only to endorse the majority of the Federal Court of Appeal’s view in Apotex Ramipril FCA, which we previously wrote about here. In summary, section 8 damages... Read More
“URBAN PLANET” and “PLANET”: A trade-mark dispute that was out of this world
On December 19, 2014, Justice Boswell of the Federal Court released the judgment and reasons in Jacques Vert Group Limited (“JVG”) v. YM Inc. (Sales). The case was an appeal from a decision of the Trade-Marks Opposition Board, in which the Board refused to allow JVG’s request for an extension of its trade-mark. On August... Read More
An Invitation to Attend (From the land of 10,000 lakes)
On January 7, 2015, Justice Stewart of the Ontario Superior Court of Justice, released her endorsement in Arctic Cat Inc. et al. v. Peter Watson. In this case Arctic Cat applied for an Order to give effect to a Letter of Request issued by a Court in Minnesota. The request arose in the context of... Read More
Tobacco packaging trade-mark goes up in smoke
On December 18, 2014, Justice Bédard of the Federal Court, released her judgment and reasons in Philip Morris Products S.A. v. Imperial Tobacco Canada Ltd. This case was an appeal pursuant to section 56 of the Trade-marks Act, from the Trade-marks Opposition Board’s refusal to register Philip Morris application for the “FLIP-TOP” trade-mark used in... Read More
Seeking to Intervene? Proceed Quickly with Unique and Valuable Insights or Else
On February 2, 2015, Justice Stratas released his reasons for dismissing Canada’s Research Based Pharmaceutical Companies (“Rx&D”) motion for leave to intervene in an appeal from the judgment of the Federal Court (see our previous blog post here). In that decision Justice Hughes held that Canadian Patent No. 2,289,753 was not eligible to be listed on... Read More
Duelling dentists: to invalidate a trade-mark you need evidence
Ocean Park is a neighbourhood in South Surrey, British Columbia. Dr. Cragg’s business had used the trade-name “Ocean Park Dental Centre” in Ocean Park since 1974. In March 2012, Dr. Lum opened “Ocean Park Dental Group” less than one block from Dr. Cragg’s clinic. A dispute ensued between the parties and a few months later,... Read More
That is Going to Cost You: Willful Infringement of Trade-mark and failure to participate in Court proceeding results in cost sanctions
On October 24, 2014, Justice Noël of the Federal Court, released the Reasons for Judgment on a motion for default judgment in Source Media Group Corp. v. Black Press Group. Source Media sought relief under the Trade-marks Act for infringement of the Plaintiff’s registered trade-mark, NEW HOME LIVING. Both the Plaintiff and the Defendants were... Read More
Threatening sanctions without a legal basis
The Denturist Association of Canada’s (“DAC”) five digit procedure codes are licensed to its provincial associations (including the Denturist Association of Ontario (“DAO”)), and these provincial associations are authorized to use and reproduce portions of their fee guides which incorporate DAC’s procedure codes. The procedure codes and related descriptions of services are used to identify... Read More
Overrun by nettles: Government to prune the PM(NOC) Regulations
Industry Canada has announced its intention to amend the Patented Medicines (Notice of Compliance) Regulations. These proposed changes focus on the issue of “combination drugs”, which are therapies using multiple medicinal ingredients in combination. Under current jurisprudence, for a patent to be properly listed on the Government’s patent register, all medicinal ingredients in a combination... Read More
A Promise Made…A Promise Kept: Federal Court of Appeal rejects claims that the Celecoxib patent lacks utility
On October 30, 2014, Justice Noël of the Federal Court of Appeal, released the Reasons for Judgment in Apotex Inc. v. Pfizer Canada Inc. stemming from two separate NOC hearings in respect of Pfizer’s CELEBREX product and Canadian Patent No. 2,177,576. Judgments Below In January and April 2014, Justice Harrington of the Federal Court allowed... Read More
Apotex barred from raising validity issues during assessment of damages
On September 16, 2014 Prothonotary Lafrenière dismissed Apotex’s motion for leave to file an amended Responding Statement of Issues. Apotex sought to argue, among other things, that the Plaintiffs are not entitled to any damages for patent infringement because following the finding of validity and infringement the Supreme Court of Canada rendered a decision in... Read More
Forgetting Someone? Court of Appeal orders Hospira to add Sanofi to oxaliplatin judicial review
On September 9, 2014, Justice Gauthier of the Federal Court of Appeal, released the Reasons for Judgment in Hospira Healthcare Corporation v. Canada (Health) stemming from Hospira’s judicial review Application challenging the Minister’s refusal to issue a NOC to Hospira until the expiration of the the data protection period for Sanofi’s ELOXATIN product. On October 27, 2006, before... Read More
Cancel the Date: Federal Court Vacates Novel Bifurcation for Section 8 Start Date
On September 15, 2014 Prothonotary Aalto granted Pfizer’s motion to amend its pleadings and in doing so vacated a bifurcation order that bifurcated the start date issue from the rest of Apotex’s section 8 claim. This motion arose in the context of Apotex’s claim for section 8 damages relating to Pfizer’s atorvastatin product, marketed under... Read More
Court denies self-represented litigant leave to adduce new evidence of trade-mark use on appeal
Medos Services Corporation, its principal Alexander Vlasseros, and a related corporation, Marathon Medical Inc., appealed the judgment of the Federal Court that upheld the decision of the Registrar of Trade-Marks to expunge a trade-mark for the mark MEDOS for non-use pursuant to section 45 of the Trade-Marks Act. The mark MEDOS was for services being... Read More
Janssen prima facie in contempt of STELARA injunction
After finding that Janssen’s STELARA products infringed AbbVie’s (formerly Abbott) Canadian Patent No. 2,365,281 (see here), Justice Hughes subsequently granted a permanent injunction against Janssen (see here). Since AbbVie’s own psoriasis medication, HUMIRA, does not fall within the claims of the 281 Patent, Justice Hughes tailored an injunction allowing the sale of STELARA to existing... Read More
Receiver in Bankruptcy Permitted to Sell Trademarked Goods Despite Opposition from Trademark Owner
On August 25, 2014, Justice Gouin of the Quebec Superior Court released his Reasons for Judgment in 185107 Canada Inc. (Groupe de companies Bennett Little ltee—Bennett Little Group of Companies). As part of a bankruptcy proceeding, the receiver in bankruptcy, Ernst & Young Inc. brought a motion before the Quebec Superior Court, seeking permission to sell certain... Read More
Apotex’ US Patent Unenforceable for Inequitable Conduct
In a relatively rare finding, the Court of Appeal for the Federal Circuit affirmed that Apotex’s U.S. Patent No. 6,767,556 is unenforceable due to inequitable conduct. The 556 Patent is directed to a process for manufacturing moexipril magnesium tablets. Moexipril, an angiotensin converting enzyme inhibitor used to treat hypertension, was known to be prone to... Read More
Court of Appeal further clarifies section 8 damages framework
When a generic drug company is held off the market by an improper prohibition application, that generic is entitled to damages under s. 8 of the Patented Medicines (Notice of Compliance) Regulations. These damages are meant to compensate the generic for the sales it would have made but for the prohibition application. In determining these damages, the Court... Read More
Non-infringing alternative defence rejected in lovastatin infringement damages trial
On July 16, 2013, Justice Snider released her public Reasons for Judgment in the damages phase of the bifurcated lovastatin infringement action. Justice Snider granted Merck over $119 million plus interest, the largest award of damages for patent infringement in Canadian history. The patent at issue, Canadian Patent No. 1,161,380, is a product–by–process patent claiming lovastatin... Read More