Insights on Canadian Technology and Intellectual Property Law

B.C. Court Grants Ex Parte Injunction Against Google and GoDaddy and Awards $1.2 in Damages in Internet Defamation Case

Posted in Defamation
Amanda Iarusso

On May 6, 2016, the Supreme Court of British Columbia handed down its decision in Nazerali v. Mitchell, 2016 BCSC 810, ordering $1.2 million in damages in favour of the plaintiff, Natel Nazerali, who claimed he was defamed by Mark Mitchell, the principal author and publisher of (the “Website”).

This case highlights numerous interesting nuances about defamation law when the Internet is involved; but notably, this case appears to suggest that the Court will not hesitate to grant a permanent injunction, even against big players like Google and, for permitting online searches that lead to defamatory content when the defendant publisher is foreign and likely to resist enforcement of a monetary judgment against them. Continue Reading

Competition Bureau to Study Fintech Market

Posted in Regulatory Compliance
Ana BadourDiego Beltran

The Competition Bureau announced on May 19, 2016 that it will launch a market study focused on how innovation in the fintech sector is impacting consumers and businesses, with the results intended to be published in the spring of 2017, seeking to determine whether there is a need for “regulatory reform to promote greater competition while maintaining consumer confidence in the sector.”

The announcement cites a report indicating that Canada appears to be lagging other countries in adoption of fintech as one of the reasons for deciding to study the financial services industry. Continue Reading

CIALIS® Patent Survives Validity Challenge on Appeal

Posted in Intellectual Property, Patents
Bart NowakDavid Tait

Last year we wrote about a trilogy of Federal Court decisions relating to Eli Lilly’s erectile dysfunction (ED) drug CIALIS® (tadalafil).  While Lilly was successful in obtaining a prohibition order in the first proceeding, its latter two applications were dismissed. Mylan appealed the first order, and the Federal Court of Appeal (FCA) recently released its decision in Mylan Pharmaceuticals ULC v. Eli Lilly Canada Inc., 2016 FCA 119 dismissing Mylan’s appeal.

The FCA’s decision affirms the view that obviousness and obviousness-type double patenting validity challenges require distinct analyses, and that a patent’s disclosure cannot be referenced to vary the scope or ambit of its claims where those claims are unambiguous. Continue Reading

Recent Ruling Regresses the Federal Court’s Stance on Expert “Blinding” in Canadian Patent Cases

Posted in Intellectual Property, Litigation, Patents
Martin BrandsmaDavid Tait

A recent decision of the Federal Court in Allergan Inc. v. Apotex Inc. et al. (2016 FC 344), relating to the drug Gatifloxacin, appears to have regressed the issue of expert “blinding” in patent cases. Expert “blinding” is a relatively recent trend in patent litigation where a litigant intentionally “blinds” its expert witness to certain issues and materials in an effort to afford their opinions a higher degree of credibility. In the Gatifloxacin decision, the Court appears to have endorsed expert “blinding” in patent cases as not only de rigueur but, perhaps necessary; while other recent decisions of the very same Court have seriously questioned the value of the recent trend.

In the Gatifloxacin case, the Federal Court was persuaded by Apotex that Allergan’s expert evidence was flawed by not being properly “blinded”. Allergan’s experts had reviewed Apotex’s Notice of Allegation, as well as the patent-in-suit, prior to preparing their opinions. The Court agreed that the opinions of Apotex’s experts should be preferred over those of Allergen as they were “blinded” from the patent when giving evidence on the common general knowledge, and “blinded” from the parties’ positions throughout.

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From Broadcasting to Telecommunications and Everything in Between: Reflections on the Recent New Developments in Communications Law and Policy Conference

Posted in Privacy, Regulatory Compliance, Telecommunications
Keith RoseJulia Johnson

We recently attended the 18th Biennial National Conference: New Developments in Communications Law and Policy, a national symposium of the Law Society of Upper Canada and the Entertainment Media and Communications Law section of the Canadian Bar Association.  This conference is always a stimulating and fascinating opportunity to share thoughts with colleagues in the Canadian communications sector.  This year’s event was no exception.

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Use of trademarks as keywords not infringement, Australia court holds

Posted in Intellectual Property, Litigation, Trade-marks
Kaitlin SoyeJulia Johnson

The purchase of a competitor’s trade-mark as an online advertising keyword is not an infringement, according to a recent Federal Court of Australia decision. In making its finding, the Court in Veda Advantage Limited v Malouf Group Enterprises Pty Limited, [2016] FCA 255 relied on evidence that the keywords were not visible to consumers and were selected and provided to Google by the defendant, rather than being used to identify a trade source. However, use of the trademark in a “sponsored link” in relation to the same services as those of the registered mark was held to be an infringement in certain circumstances.

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Scathing Judicial Review of Natural Health Product Decision

Posted in Litigation
Kaitlin SoyeDavid Tait

In The Winning Combination Inc. v. Canada (2016 FC 381), the Federal Court found that Health Canada demonstrated bias, prejudgment and prevented The Winning Combination (“TWC”) from fully and fairly participating in the licensing process. Accordingly, the Court quashed Health Canada’s decisions and awarded TWC full costs.

This was a judicial review of a series of related Health Canada decisions regarding the TWC product Resolve, a smoking cession aid. There is a long history associated with this dispute, involving a convoluted set of decisions by Health Products and Food Branch Inspectorate (“HPFBI”) and the Natural and Non-Prescription Health Products Directorate (as they are now, “NHPD”), as well as a trade complaint submitted by Pfizer. As a result, TWC was required to deal with Health Canada from both a licensing and compliance perspective. Continue Reading

New tariffs on the horizon after CRTC revamps rate-setting process for wholesale broadband Internet services

Posted in Telecommunications
Aaron Wenner

Wholesale rates for broadband Internet services are set to change. This month wholesale broadband providers will file new tariff applications in response to a recent CRTC decision announcing changes to the rate-setting process.  On March 31, 2016, the CRTC announced changes to how it sets rates for wholesale access to broadband Internet services. In Telecom Decision CRTC 2016-117 (the “Decision”) the CRTC made three key changes:

  • It modified how it sets rates for wholesale broadband Internet services. Going forward, wholesale rates will be the same for all Internet speeds within a given range.
  • It adopted new cost assumptions. The CRTC found that annual traffic growth was 32% annually, and that equipment costs decreased 26.4% annually.
  • It changed the length of the study period for cost studies. New studies will now take a ten-year window into account.

In light of these changes, the CRTC decided that current wholesale rates for broadband services were no longer just and reasonable, and made all currently-approved rates interim until new cost studies are submitted. The CRTC gave wholesale Internet access providers 45 days to submit new tariff applications reflecting the new changes.

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Largest Patent Infringement Award in Canada Stands: Apotex Denied Leave to Appeal to the SCC

Posted in Intellectual Property, Patents
David TaitSteve Mason

On April 14, 2016, the Supreme Court of Canada denied Apotex’s final attempt at obtaining leave to appeal in the storied patent battle between Merck and Apotex over Merck’s lovastatin patent.

The case began in 1997 when Apotex launched its generic lovastatin product. At the liability trial in 2010, Justice Judith Snider of the Federal Court found Merck’s lovastatin patent to be valid and infringed (2010 FC 1265). The judgment included reference to DNA evidence establishing that Apotex had infringed through its operations in Winnipeg. The Judge also found that Apotex’s joint venture partner fabricated batch records and testimony regarding how the lovastatin was made. The Federal Court of Appeal affirmed the Trial Judge’s ruling (2011 FCA 363), and Apotex’s application for leave to appeal to the Supreme Court was dismissed.

In the subsequent damages trial, Justice Judith Snider ordered Apotex to pay over $180 million in compensatory damages and interest (2013 FC 751); the largest reported Canadian damages award for patent infringement.

Apotex’s appeal was later dismissed, in 2015, by a unanimous panel of the Federal Court of Appeal (2015 FCA 171). This decision is important for a number of reasons. For example, the so-called “non-infringing alternative” defence was recognized in Canada for the first time; however, Apotex was unable to support it on the facts. For more information on this appellate ruling see our previous blog.

On April 14, 2016, the Supreme Court of Canada dismissed Apotex’s applications for leave to appeal. This ruling represents the final chapter in an almost 20 year-old patent case.

McCarthy Tétrault was counsel to Merck throughout, at all trials and appeals

Missing the Mark – the Federal Court of Appeal set aside dismissal in passing off and copyright case

Posted in Copyright, Intellectual Property, Litigation
Ryann AtkinsKaitlin Soye

In Sadhu Singh Hamdard Trust v. Navsun Holdings Ltd. (2016 FCA 69), the Court of Appeal set aside the Federal Court’s (2014 FC 1139) decision dismissing Hamdard Trust’s claim of copyright infringement and passing off against Navsun Holdings and remitted the matter to the Federal Court for redetermination, with some guidance.

This case involves a dispute over an unregistered trademark used by a Punjabi subscription daily newspaper, Ajit Daily, published in India, and by a free weekly newspaper, Ajit Weekly, published in Canada.  Hamdard Trust, which operates Ajit Daily, sued Navsun Holdings, which operates Ajit Weekly, for use of a similarly stylized “Ajit” logo in its masthead.

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