snIP/ITs

Insights on Canadian Technology and Intellectual Property Law

Canadian Patent Damages – Mitigation and Person Claiming Under the Patentee

Posted in Intellectual Property, Litigation, Patents
Kaitlin SoyeJames S.S. HoltomDavid Tait

Not long after its decision in Apotex Inc. v. Bayer Inc (2018 FCA 32 – see our blog), the Federal Court of Appeal released another important decision on the subject of remedies for patent infringement (full decision here: Teva Canada Limited v. Janssen Inc., 2018 FCA 33).

The Court of Appeal confirmed that whether a plaintiff has reasonably mitigated its loss in a patent case is a question of fact. The burden lies with the defendant to establish the plaintiff failed to take reasonable steps that were available to mitigate. Further, the Court of Appeal reiterated that a person claiming under the patentee in patent infringement actions is to be broadly defined. Continue Reading

Canadian Patent Litigation: Five Things to Watch in 2018

Posted in Intellectual Property, Litigation, Patents
James S.S. HoltomSanjaya MendisDavid Tait

2017 was a significant year for Canadian patent law — one marked by the Supreme Court abolishing the so-called ‘Promise Doctrine’ of utility, as well as several other significant changes. Here’s a look at five things to watch for in patent litigation in the coming year.

1. Promise Doctrine Abolished

On June 30, 2017, the Supreme Court of Canada, released a landmark patent decision AstraZeneca Canada Inc. v. Apotex Inc., 2017 SCC 36, abolishing Canada’s so-called ‘Promise Doctrine’ (our commentary here). Under the Promise Doctrine, patents could be invalidated if various heightened utilities construed from the patent were not demonstrated or soundly predicted by the Canadian filing date. The new two-part test for assessing utility in Canada requires: (i) identifying the subject-matter of the invention as claimed in the patent, and (ii) determining whether that subject-matter is useful — is it capable of a practical purpose (i.e. an actual result) on a mere scintilla standard? Continue Reading

Canada’s Federal Court of Appeal Says Infringers Cannot Dictate the Remedy

Posted in Intellectual Property, Litigation, Patents
James S.S. HoltomDavid Tait

When a patent is infringed in Canada, a successful plaintiff can elect damages, or an accounting of the profits the defendant made by infringing. Unless there is an equitable reason to refuse an accounting of profits, the choice belongs to the plaintiff.[1]

In Apotex Inc. v. Bayer Inc., 2018 FCA 32, the Federal Court of Appeal ruled in no uncertain terms that the infringer does not get to dictate the remedy. The infringer, Apotex, raised a novel argument that it could impose an accounting of profits on Bayer. In the Court below, Justice Fothergill rejected Apotex’s argument, holding that it would “turn the doctrines of equity and parliamentary sovereignty on their heads”.[2] Continue Reading

Artificial Intelligence: The Year in Review

Posted in Big Data, Fintech, Privacy, Regulatory Compliance
Carole PiovesanKirsten ThompsonSuzie Cusson

By all accounts, “Maple Valley” is thriving.

2017 saw Canada, home to the second largest tech sector outside Silicon Valley,[i] solidify its position as a leader in the field of artificial intelligence (“AI”).

Based on available data to date, it is estimated that funding raised by Canadian AI companies in 2017 will exceed US$250 million, representing an almost two-fold increase from the previous record historical high of US$143 million in 2015.[ii] This healthy injection of private-sector funding has been accompanied by significant public investment. Notably, the 2017 federal budget provided for C$125 million in research and development funds earmarked for AI initiatives and nearly C$1 billion over 5 years to promote innovation superclusters.[iii]

Access to unprecedented levels of capital, a strong network of academic institutions, improving infrastructure and availability of talent facilitated by open immigration rules have fuelled the development of a burgeoning industry north of the border. Joining dozens of growing start-ups in AI cluster cities such as Toronto or Montreal, global tech giants such as Google, Facebook and Samsung have invested in or opened Canadian AI labs in 2017.[iv]

The regulatory landscape impacting AI continues to evolve both domestically and abroad. As we begin the new year, we pause to reflect on some of 2017’s most notable developments in AI and prepare for new trends to watch out for in 2018. Continue Reading

Technology Law Highlights: 2017 Year in Review

Posted in Anti-Spam, Copyright, Fintech, Intellectual Property, Litigation, Regulatory Compliance, Telecommunications, Virtual Currency
Maureen Gillis

2017 was an eventful year in technology law both in Canada and abroad. From a surprise late reprieve from the year’s most anxiously anticipated anti-spam legislative provisions to a decision from the country’s top court upholding a Canadian-issued global order against Google, legislators, regulators and the courts made moves with important implications for technology lawyers, companies and departments in the course of the year.

Here, in no particular order, are some of the year’s highlights as chronicled by McCarthy Tétrault’s bloggers: Continue Reading

Fintech Regulatory Developments: 2017 Year in Review

Posted in Fintech, Regulatory Compliance
Ana BadourHeidi GordonKirsten ThompsonLaure FouinShane C. D'SouzaShauvik ShahEriq Yu

As predicted in our 2016 year-end report, 2017 proved to be a busy year for Fintech in Canada, with a number of important regulatory developments. With the dawn of 2018, we look back to summarize some of 2017’s most notable Fintech regulatory developments in Canada, as well as developments to watch for in 2018. Continue Reading

SEC issues Cease and Desist Order for ICO and Statement on Cryptocurrencies

Posted in Fintech, Regulatory Compliance
Sonia StruthersShane C. D'SouzaLaure FouinShauvik ShahArie van Wijngaarden

On December 11, 2017, Munchee Inc., a California-based developer of a restaurant app, shut down its initial coin offering (“ICO”) after the Securities and Exchange Commission (“SEC”) issued a Cease and Desist order. SEC Chairman Jay Clayton subsequently issued a statement highlighting the SEC’s general concerns with cryptocurrencies and ICOs. The order and Chairman Clayton’s statement shed new light on whether a token issued in the context of an ICO is a security. Continue Reading

No Interlocutory Injunction—How About “Terms” Instead?

Posted in Copyright, Intellectual Property, Litigation, Technology License Agreement
David TaitMartin Brandsma

Some would say keeping a software license alive by an injunction is like requiring specific performance of a contract – something courts don’t like to do. However, a recent Ontario decision appears to have done about just that, by relying on its discretion to grant “terms” according to Ontario Rule 37.13(1) in extending an interim injunction for six months, despite the plaintiff failing to justify its request for an interlocutory injunction to trial. Continue Reading

SCC To Weigh In On Fees For Identifying ISP Subscribers: Rogers v. Voltage

Posted in Copyright, Litigation
Keith Rose

One of the essential and recurring challenges of regulating unlawful conduct on the Internet—be it child pornography, harassment, fraud, data theft, content piracy, or otherwise—is identifying who is responsible.

Frequently, one can identify an IP address that is (or may be) a target of interest. IP addresses can be traced to responsible organizations, through publicly accessible registries.  However, to complete the chain back to a person generally requires the cooperation of the organization.

Commercial ISPs are in the business of providing IP addresses (and network connectivity) to their customers. So, inevitably, they find themselves on the receiving end of many requests to identify their subscribers.

ISPs in Canada have contractual, regulatory, and legal duties of confidentiality that restrict the disclosure of their customer information. However, these duties are not absolute.  Because this information can be necessary to uphold legal rights or to enforce obligations, courts can and do order ISPs to disclose this information.  In civil matters, this usually involves a Norwich order.

The case of Rogers v. Voltage deals with the issue of who is liable for the cost to comply with such an order. In particular, the case asks whether historical common law rules providing for reimbursement of third party costs have been displaced by the statutory “Notice and Notice” regime under the Copyright Act. Continue Reading

Canada’s Federal Court of Appeal Unsettles Obviousness Law

Posted in Uncategorized
James S.S. HoltomDavid TaitSteven Tanner

Ciba Specialty Chemicals Water Treatments Limited v. SNF Inc., 2017 FCA 225, is the Federal Court of Appeal’s latest word on obviousness in patent law. The decision appears to unsettle established approaches to assessing obviousness. For what may be the first time since the Supreme Court’s endorsement of the “inventive concept” approach to evaluating obviousness in 2008, the Federal Court of Appeal by-passed the inventive concept inquiry entirely. The court also held that all dependent claims in the patent were invalid because the independent claim was obvious without reconciling previous Federal Court of Appeal jurisprudence holding that this was legally wrong. Finally, the court split 2-1 on the issue of whether the prior art in an obviousness attack must satisfy the “reasonably diligent search” test, with one judge declining to comment. Continue Reading