snIP/ITs Insights on Canadian Technology and Intellectual Property Law

Monthly Archives: January 2015

Federal Court of Appeal Upholds Lower Court Costs Award of Over $1 Million

Posted in Intellectual Property

On January 14, 2015, the Federal Court of Appeal released its reasons and judgment in Philip Morris Products S.A. v. Marlboro Canada Limited, 2015 FCA 9. The Court dismissed the appeal, finding that Justice de Montigny of the Federal Court made no reviewable error in awarding the respondents over $1 million in legal costs and disbursements. The award amounted to nearly half of the respondents’ actual costs.… Continue Reading

New Year, New Mandatory Breach Reporting

Posted in Data Breach, Privacy

Overview

It is rumoured that Bill 12 that amended the Alberta Health Information Act (“HIA”), passed on May 14, 2014, will come into force this year.  Bill 12 made 3 significant changes to the HIA:

  1. adds mandatory breach notification provisions;
  2. authorizes the Office of the Information and Privacy Commissioner (“OIPC”) to disclose information about a breach in certain situations; and
  3. creates new offences and penalties.

We will discuss these 3 amendments in turn.

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Review of US Patent Claims Construction Gets Canadianized

Posted in Intellectual Property, Patents

On January 20, 2015, the US Supreme Court rendered its precedent-setting decision in Teva[1] that reversed the Federal Circuit’s practice of reviewing all District Court claim constructions de novo on appeal. Instead the Supreme Court found that some decisions are entitled to deference as a consequence of certain factual findings that require Courts of Appeal to apply a “clear error” standard of review, and consequently, bringing the review of US claims constructions methodology more in line with the Canadian approach.… Continue Reading

Canadian Patent Judge Takes a Hard Stand Against Generic CIALIS® (tadalafil)

Posted in Intellectual Property, Patents

On January 7, 2015, Justice de Montigny of the Federal Court released his judgment and reasons in Eli Lilly Canada Inc. v. Mylan Pharmaceuticals ULC, 2015 FC 17, allowing 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. 2,226,784 (the “‘784 Patent”). The patent relates to Lilly’s successful erectile dysfunction (“ED”) drug CIALIS® (tadalafil).

The Court found that Mylan’s allegations of invalidity on the basis of lack of utility and obviousness-type double patenting were unjustified. Justice de Montigny’s reasons signal the Court’s … Continue Reading

I Know You Know, Because I Told You So: Effective Notice of Infringement

Posted in Copyright, Intellectual Property

Copyright infringement is normally a factual question – it doesn’t matter whether one intended to copy a substantial part of someone else’s original expression if, in fact, one did so[1] – but there are circumstances where the alleged infringer’s state of mind does matter.  Knowledge is relevant to secondary infringement under s. 27 of the Canadian Copyright Act, or to the assessment of statutory damages under s. 38.1, for example.  Willful infringement may also be relevant to the applicable limitation period, to the assessment of costs or punitive damages, or to piercing the corporate veil.… Continue Reading

Alberta PIPA Amendments: Much Ado About Nothing?

Posted in Privacy

Just in time for the new year, the Alberta’s Personal Information Protection Act (“PIPA”) was amended by Bill 3 which came into force on December 17, 2014.  These amendments were in response to the Supreme Court of Canada decision to struck down PIPA in Alberta (Information and Privacy Commissioner) v United Food and Commercial Workers, Local 401, 2013 SCC 62 (“United Food”) on the basis that it infringed on the union’s freedom of expression.

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New Year, New Border Enforcement Measures in Effect

Posted in Copyright, Intellectual Property, Trade-marks

On December 31, 2014, the Canada Gazette published an order proclaiming into force sections 2, 5 and 6, subsection 7(6) and sections 43, 44 and 60 of the Combating Counterfeit Products Act, c. 32, S.C. 2014, as of January 1, 2015.  The Act itself received Royal Assent on December 9, 2014.

The principal effect of this order is to bring into force new border enforcement measures intended to combat the importation or exportation of trade-mark or copyright-infringing goods.[1]  These measures involve three main features:

  • Prohibitions on importation and exportation of infringing copies or goods[2] under the Copyright
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