Insights on Canadian Technology and Intellectual Property Law

Did the Québec Court Apply a Lower Standard for Interlocutory Injunctions in a Patent Case? Probably Not.

Posted in Intellectual Property, Litigation, Patents
Bart NowakDavid Tait

Interlocutory injunctions are rarely granted in patent cases. The “irreparable harm” branch of the RJR –MacDonald Inc. v. Canada (Attorney General), [1994] 1 SCR 311 test is often difficult to satisfy as monetary recovery will fully compensate the rights-holder.

Despite this rarity, Justice Déziel of the Superior Court of Québec recently granted an interlocutory injunction in a patent case. Did he conclude that infringement is, in and of itself, irreparable harm? Does the Québec Court apply a lower standard for interlocutory injunctions in patent cases? Probably not.  A close read of Justice Déziel’s reasons does not reveal a finding that patent infringement is, in and of itself, irreparable harm. Continue Reading

British Columbia Securities Commission Releases Fintech Request for Comment

Posted in Fintech, Virtual Currency
Arie van WijngaardenBosa KosoricMaureen Gillis

On February 14, 2018, the British Columbia Securities Commission (BCSC) published a notice and request for comment (the “Notice”) on the securities law framework for Fintech regulation in the province. The Notice summarizes the results of consultations the BCSC has undertaken in the Fintech space and poses related questions to stakeholders. The Notice provides useful information—and an important opportunity to provide input—for businesses with an interest in how regulatory rules for Fintech may change in the future.

The BCSC has actively monitored Fintech developments over the past 18 months. In January 2017, the BCSC established a dedicated support group, the Tech Team, for the Fintech sector and conducted a survey of Fintech stakeholders. The continued dialogue between the BCSC and stakeholders in the Fintech sector has led the BCSC to request comments on Crowdfunding, Online Advising, Cryptocurrency Funds, and Initial Coin Offerings/Initial Token Offerings (ICOs). Continue Reading

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