snIP/ITs Insights on Canadian Technology and Intellectual Property Law

Monthly Archives: July 2013

Sanofi’s Canadian Patent on Plavix Valid and Infringed by Apotex

Posted in Intellectual Property, Patents

On July 24, 2013 the Federal Court of Appeal released its decision reversing the trial court’s ruling that Sanofi’s patent covering Plavix is invalid.  For the full written decision see: Apotex Inc. v. Sanofi-Aventis, 2013 FCA 187.

In its decision, the Court of Appeal provides clarification on invalidity in light of the so-called promise of the patent.  Not all patents contain a promise.  For there to be a promise, it must be both explicit and specific.  The Court of Appeal also reiterates the requirement that for an invention to be obvious, it must be self-evident that what is obvious … Continue Reading

Four Tips from Merck’s $180M Patent Damages Win Against Apotex

Posted in Intellectual Property, Patents

It is said that the wheels of justice turn slowly, but grind exceedingly fine.  That phrase could certainly apply to Merck’s recent win over Apotex in a damages trial for patent infringement in Canada, in a case that started in 1997.

The liability decision finding Apotex guilty of infringement was released in December 2010.  To view the Lexpert write-up of the liability decision click here.  It took another two years before we arrived at the damages trial.  It commenced on April 8, 2013 in Toronto.  On July 16, 2013, the public damages judgment was released.  Merck was awarded damages … Continue Reading

5 Things Every Retailer Should Consider When Threatened with Patent Infringement: 5-Item Checklist

Posted in Intellectual Property, Patents


In recent years major Canadian retailers have been named as defendants in patent infringement lawsuits, including Wal-Mart (T-1841-11), Costco (T-1841-11), Canadian Tire (T-1002-12) and Home Depot (T-1112-13).  The common thread linking these and other cases is that the plaintiff is asserting patent rights against a retailer that sells, but does not manufacture, allegedly infringing products in its stores.

Indemnity agreements between retailers and manufacturers who supply product are common.  However, such agreements may not provide retailers with sufficient protection.  Plaintiffs will often pursue retailers because they are more likely to satisfy a judgment than manufacturers.  Sometimes, plaintiffs do not … Continue Reading

McCarthy Tétrault is named Contributor Most Read in Canada for second consecutive month

Posted in Awards and Recognitions

snIP/ITs is pleased to share that for June 2013, McCarthy Tétrault’s blog posts and articles generated the most readership from users of Mondaq for Canada. This is the firm’s second month in a row to be recognized with the award.



Mondaq is an aggregator of legal, financial and regulatory information from more than 80 countries. It publishes and distributes content on its site, via its newsletters and feeds to third-party sites, and through major business systems such as Lexis-Nexis, Westlaw and Reuters. At the end of every month, for each country, Mondaq determines and confers awards … Continue Reading

U.K. Court Sufficiently Satisfied that Janssen’s Alzheimer’s Patent is Insufficient

Posted in Intellectual Property, Patents

On June 25, 2013, the England and Wales High Court rendered its decision in Eli Lilly & Company v. Janssen Alzheimer Immunotherapy, [2013] EWHC 1737.  This ruling demonstrates the danger in drafting patents to include only broad claims without subordinate, narrow claims, which are more likely to survive a validity challenge like the one Eli Lilly Company (“Lilly”) successfully raised in this case.  That is not to say broad claims should be eliminated altogether.  However, as this ruling demonstrates, in drafting a patent it is extremely important to include a series of narrow claims that are well-supported … Continue Reading