Insights on Canadian Technology and Intellectual Property Law

PM(NOC) Proceedings: Teva defeats VELCADE cancer treatment patent

Posted in Patents
Bart NowakDavid Tait

In reasons dated February 26, 2015, Justice Barnes dismissed Janssen’s application for an order prohibiting the Minister of Health from issuing a Notice of Compliance to Teva for the compound bortezomib until the expiry of Canadian Letters Patent 2,203,936 (the ‘936 Patent). The ‘936 Patent relates to bortezomib and its use to treat cancer.

The fatal finding for the ‘936 Patent was its characterization by the Court as a selection patent. Justice Barnes held that bortezomib falls within a genus of compounds claimed by an earlier patent, all of which are said to be highly potent in the treatment of cancer. He explained that although a compound falling within a previously claimed genus may be reclaimed as a valid selection, it must not have been made previously and must possess a special property of an unexpected character from those comprising the genus. Continue Reading

FIPA Report Calls For Unnecessary Regulation of Auto Sector Privacy: Are Other Sectors of the Economy Next?

Posted in Privacy
Helen FotinosGeorge S. TakachKirsten Thompson

On March 24, the BC Freedom of Information and Privacy Association (FIPA) released a report titled, The Connected Car: Who Is In the Driver’s Seat (the “Report”). The 123-page Report describes the increasing use of digital features and services in today’s automobiles and, among other things, recommends that the federal government enact data protection regulations aimed specifically at the auto sector. The Report is authored principally by Phillippa Lawson, formerly the Executive Director of the Canadian Internet Policy and Public Interest Clinic.

There is more and more software being used in vehicles, and there are a growing number of digital services available to owners of cars and trucks, often provided by companies not affiliated with the original equipment manufacturer (OEM) of the vehicle. This trend towards enhanced digitization in the auto sector is not new, and we at McCarthy Tétrault have chronicled it as well, most recently in a comprehensive paper titled: “The Networked Automobile and Legal Liability” (for a copy of this paper, please email us at

Both our paper and the Report discuss the use of in-vehicle digital technologies to support telematics, infotainment services, on-board system and engine monitoring, and other features and services that bring owners of vehicles great benefits. However, these digital trends raise issues with respect to data management and consumer privacy. These concerns are highlighted in the Report, which recommends, as does our paper, that organizations active in the auto sector must, as a consequence of these emerging technologies and as a function of good corporate practice, regularly review their privacy policies to ensure they reflect these new technologies and are compliant with Canadian privacy law.

The Report recommends that OEMs and others in the auto industry establish a Privacy Management Program within their respective organizations that addresses privacy compliance in a meaningful and systematic way. This is all good, common sense, and industries throughout the Canadian economy have been doing this since Canada’s federal privacy law (PIPEDA) came into force in 2000. We wholeheartedly agree with this recommendation of the Report, and have been working with industry players for years in helping to craft, implement and periodically review privacy practices and procedures.

However, the Report seriously overreaches when it recommends that the federal government enact data-protection regulations under PIPEDA, aimed specifically at the auto sector. There are many reasons why industry specific regulation under PIPEDA is a very bad idea.

Before turning to some of those reasons, it should be noted there are serious flaws in the Report that presumably lead it to make this misguided recommendation for industry sector privacy regulation. For example, the Report’s description of Canada’s current privacy laws is not evenhanded and balanced.

As well, and most importantly, in order to make its case in favour of a separate regulatory regime under PIPEDA for the auto sector, the Report analyzes a so-called Automakers Pledge, which is a privacy code established by the US automakers for use in the US. A reader of the Report is led to believe that this Pledge is intended for use in Canada, when it is not.

We are of the view that auto sector specific privacy legislation – indeed any sector specific privacy legislation – is a bad idea, in large part because of the compelling rationale of having a single federal privacy law that is applied uniformally and equally across all provinces and all industries and communities to ensure that everyone is subject to the same rules. This is particularly relevant when considering digital, and especially networked technologies, because the inexorable trend, and consumer demand, is seamless connectivity across a multitude of services and devices, with the result that we increasingly do not have “sectors” any more in our business landscape or in our personal environments. Put another way, the economy’s sectors and consumer practices now overlap through a broad and constantly evolving range of networked connections and services – attempting to regulate that space on a sector or industry basis with overlapping, potentially conflicting standards would create a web of confusion, unnecessarily frustrate business, and likely all without achieving the desired benefit of greater protection for consumers.

For example, the owner of a vehicle may be using an infotainment system operated by a digital music company; the car’s GPS system is supplied by an electronics company; the owner’s telephone contacts and in-home security system sync to and are accessible through the vehicle; the vehicle’s telematic system is installed on behalf of an insurance company; etc. The overwhelming technology trend is to have convergence of all types of service providers on all digital platforms, whether on your phone, or laptop, or, increasingly, your car.

As a result, industry specific privacy legislation makes no sense and would simply create an incredibly complex environment with no appreciable benefit.

Rather, the benefit of our current PIPEDA is that (with some exceptions) it applies to everyone and all businesses, regardless of their digital activity. Thus, you get consistency of regulation, and a common, workable privacy law framework for all organizations.

Presumably, if FIPA is successful convincing the federal government on the merits of auto sector specific privacy laws, then other sectors will be next. The Report itself admits that the same digital, network connectivity trends impacting the auto sector are being experienced by the economy generally. If auto specific rules are enacted, we anticipate a similar process will be proposed for the banks, the telcos, the retailers, etc.

Therefore, not only automakers – but all business and other organizations – should be very concerned about how the Report is received in Ottawa and by provincial privacy regulators.

McCarthy Tétrault launches CyberLex blog

Posted in Consumer Protection, Data Breach, Privacy

McCarthy Tétrault has just launched its twelfth blog, CyberLex, at This blog discusses trends and developments in cybersecurity, privacy and data protection law in Canada and internationally; offers practical suggestions and insights on how these issues affect companies in a wide variety of industries; and provides guidance on how to address various challenges and opportunities created by technology and legislative developments.

Please visit the blog!

PlentyOfFish Hooked by Anti-Spam Legislation

Posted in Anti-Spam
Roland Hung

Canada’s Anti-Spam Legislation (“CASL”) came into force on July 1, 2014, creating new requirements for sending commercial electronic messages (“CEM”).[1] A non-compliant business risks having “administrative monetary penalties” (or “AMPs,”, which are essentially fines) levied against it by the CRTC.   However, until recently, there has been no guidance on how aggressively CASL would be enforced, the scope of Notices of Violations, or how AMPs would be determined, and the scope of such. Businesses were stuck in a murky regulatory regime.

With the recent $48,000 AMP imposed on PlentyOfFish, as part of an undertaking entered into between the company and the CRTC, the water is becoming clearer. Continue Reading

Safari workaround claimants to get their day in UK court against Google: Google Inc v Vidal-Hall

Posted in Privacy
Barry Sookman

The ‘Safari workaround’ has cost Google millions. In 2012, it paid a civil penalty of US$22.5 million to settle charges brought by the US FTC that Google misrepresented to users of the Safari browser that it would not place tracking cookies or serve targeted advertisements to those users. In 2013 it paid US$17 million to settle US state consumer-based actions brought by State AGs.

Google was also sued over the Safari workaround in the UK by individuals claiming that Google was liable for the tort of misuse of private information and for breach of the UK Data Protection Act 1998 (the DPA). Google tried to deny the plaintiffs their day in court, arguing, among other things, the court should not bother with the claims because they were not serious enough and because the damages claimed by the three claimants were too insignificant for the court to take the time to address it. Continue Reading

Federal Court Judge Dismisses Final Prohibition Application in CIALIS PM(NOC) Proceeding

Posted in Intellectual Property, Patents
Bart NowakDavid Tait

On February 23, 2015, the Federal Court released its judgment in the latest of three PM(NOC) proceedings relating to Eli Lilly’s CIALIS (tadalafil) patents. The previous two decisions were discussed in snIP/ITs posted on January 26, 2015 and March 30, 2015.

In the latest decision, Eli Lilly Canada Inc. v. Mylan Pharmaceuticals ULC, 2015 FC 178, Justice de Montigny found that Mylan’s allegations of non-infringement and obviousness were justified, and dismissed Lilly’s application for an order prohibiting the Minister of Health from issuing a Notice of Compliance to Mylan until expiry of Canadian Patent No 2,379,948 (the “’948 Patent”). The ‘948 Patent claims a tadalafil tablet formulation and its use to treat erectile dysfunction (“ED”).

Justice de Montigny’s decision emphasizes the critical role experts and expert reports play in PM(NOC) proceedings. As counsel for Lilly stated during his submissions, “a lot of it just comes down to which expert the Court is going to go with”. Justice de Montigny ultimately preferred the evidence of Mylan’s experts, finding that Lilly’s evidence on several key issues was incomplete or speculative. Continue Reading

Canada PM(NOC) Decision: Federal Court Judge Criticizes “Very Sketchy” Disclosure in a CIALIS Patent

Posted in Intellectual Property, Patents
Bart NowakDavid Tait

On February 2, 2015 Justice de Montigny of the Federal Court released his judgment and reasons in Eli Lilly Canada Inc. v. Mylan Pharmaceuticals ULC, 2015 FC 125, dismissing Lilly’s application for an order prohibiting the Minister of Health from issuing a Notice of Compliance to Mylan until the expiry of Canadian Patent No. 2,371,684 (the “‘684 Patent”). The ‘684 Patent claims a dosage form of tadalafil and its use to treat erectile dysfunction (“ED”). This decision is the second in a series of three prohibition applications by Lilly relating to its tadalafil patents.

The use of tadalafil for the treatment of ED was claimed in the earlier ‘784 Patent which was the subject of a prohibition application summarized in a January 26, 2015 post on snIP/ITs. In contrast to that decision, Justice de Montigny took a harder stance on the promised utility of the ‘684 Patent. He noted that the patent made several explicit statements promising particular results, and that this promised utility was neither disclosed nor soundly predicted on the filing date. Justice de Montigny ultimately found that Mylan’s allegations of invalidity on the basis of lack of utility, anticipation and obviousness were justified. Continue Reading

AMF Now Requires Quebec Virtual Currency ATMs and Trading Platforms to be Licensed

Posted in M&A/Finance
Claire GowdyAna BadourMarjolaine Hémond Hotte

In Quebec, a business that operates a virtual currency automated teller machine, such as a bitcoin ATM, or that provides a platform for trading virtual currencies, will now be required to obtain a license under the Money-Services Businesses Act (the “Act”). On February 12th, 2015, the Autorité des marchés financiers (the “AMF”) announced this change in a news release and published amendments to the Policy Statement to the Act, which clarified that “making available to the public a means of purchasing, with cash, virtual money from an automated distributor, without the intervention of a natural person” constitutes operating an automated teller machine for the purposes of the Act.

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Defamation in the Blogosphere: Baglow v Smith

Posted in Defamation
Roland HungKevin Stenner


In introduction to Baglow v. Smith, 2015 ONSC 1175 [“Baglow”], an action for defamation involving political bloggers, Madam Justice Polowin described political debate in the Internet blogosphere as, “rude, aggressive, sarcastic, hyperbolic, insulting, caustic and/or vulgar.” She further stated that, “it is not for the faint of heart.” Baglow is a case around the alleged defamation of the plaintiff through a blog post by one of the defendants. The plaintiff felt that the blog post went “too far” and sought to hold the blog post author, and the moderators of the message board, liable for defamation.

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Canadian Courts Refuse to Settle for Weak Privacy Rights: “Imperial Oil Limited v Alberta”

Posted in Privacy
Roland HungKimberly Macnab


Last week, the Supreme Court of Canada (“SCC”) dismissed leave to appeal the Alberta Court of Appeal (“ABCA”) decision in Imperial Oil Limited v Alberta., thereby endorsing the ABCA’s approach to settlement privilege in the context of applications under the Freedom of Information and Protection of Privacy Act (“FOIPP”).[1] Settlement privilege is alive, well, and strongly protected in Alberta, even in the more public regulatory context, as long as parties fall within the exceptions set out in ss. 16 and 27 of FOIPP. Continue Reading