snIP/ITs Insights on Canadian Technology and Intellectual Property Law

Category Archives: Intellectual Property

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CIALIS® Patent Survives Validity Challenge on Appeal

Posted in Intellectual Property, Patents

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 … Continue Reading

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

Posted in Intellectual Property, Litigation, Patents

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 … Continue Reading

Use of trademarks as keywords not infringement, Australia court holds

Posted in Intellectual Property, Litigation, Trade-marks

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 … Continue Reading

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

Posted in Intellectual Property, Patents

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 … Continue Reading

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

Posted in Copyright, Intellectual Property, Litigation

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, … Continue Reading

Competition Bureau Finalizes IP Enforcement Guidelines on ‘Pay-for-Delay’ Settlements, Pharmaceutical Product Switching, and ‘Patent Trolls’

Posted in Consumer Protection, Intellectual Property, Patents, Regulatory Compliance

On March 31, 2016, the Competition Bureau (Bureau) released revised Intellectual Property Enforcement Guidelines (IPEGs). These IPEGs reflect incremental changes to the draft version released for consultation last year. Most notably the new IPEGs provide further guidance on (i) pharmaceutical patent litigation settlements, (ii) product switching (also known as “product hopping”), (iii) collaborative standard setting and standard essential patents, and (iv) patent assertion entities.… Continue Reading

Court Gives Green Light For Canadian Pharmaceutical Patent Actions Where Future Infringement Is Likely Though Not Inevitable

Posted in Intellectual Property, Litigation, Patents

In reasons dated March 21, 2016, the Federal Court of Canada upheld a decision that allowed a patent infringement action involving tenofovir (an anti-HIV drug) to continue on the basis of allegations of a likely future (quia timet) infringement. The Court was satisfied that there was a “strong possibility of infringement” in circumstances where regulatory approval, and future market presence, of the generic copycat was “sufficiently likely” even though not inevitable that the generic would receive marketing authorization.… Continue Reading

Watch Out: NPEs are Coming to Canada!

Posted in Intellectual Property, Patents

NPEs, otherwise known as non-practicing entities, or pejoratively referred to by some as “patent trolls”, have seen a significant negative impact on their business model south of the border. NPEs are analogous to private equity businesses–their business model is to acquire undervalued patent assets and turn around and sell or license them to others, which often leads to expensive patent litigation. If their assets are depreciating in value, the model becomes significantly less attractive. This is exactly what is happening in the US.

Recent US Supreme Court decisions including Alice, which restricted the scope of patent-eligible subject matter, and … Continue Reading

Marrakesh Treaty Implementation Bill Revived in Parliament

Posted in Copyright, Intellectual Property

In June 2015, the previous Conservative government tabled legislation to implement the Marrakesh Treaty to Facilitate Access to Published Works for Persons Who Are Blind, Visually Impaired, or Otherwise Print Disabled. However the bill was introduced shortly before the summer break and, as it turned out, Parliament was dissolved before the legislature returned.

On March 24, 2016, the new Liberal government tabled a substantially identical bill, now known as C-11.

As was the case for its predecessor, the bill broadens the existing exception in section 32, including by removing the exclusion of large print books and by expressly … Continue Reading

Canadian Trademark Law Adapts to Online Software Licence Sales

Posted in Intellectual Property, Technology License Agreement, Trade-marks

The online sale of a software licence constitutes a “use” in relation to a good for the purposes of Canadian trademarks. This was the recent holding of the Federal Court of Canada in Specialty Software v Bewatec, 2016 FC 223. This decision strengthens trademark protection for software in Canada and demonstrates that courts will adapt legal concepts to modern technology. Here, the traditional model of purchasing software on tangible media, such as a CD-ROM, is simply outdated. Software as a service (SaaS) offerings have greatly increased in recent years with the explosion of cloud computing, which essentially provides … Continue Reading

Old Law Continues to Frustrate Innovator Protections for Combo-Drugs in Canada

Posted in Intellectual Property, Patents

On May 4, 2016, the Federal Court of Appeal upheld a summary motion ruling that Gilead’s ‘619 Patent is ineligible for listing against the combo-product, TRUVADA(R) (decision published as Gilead Science, Inc. v. Apotex Inc., 2016 FCA 140).

Canada’s PM(NOC) Regulations allow innovative drug manufacturers to list patents on the public Patent Register pertaining to their drug products. This provides a public notice function to potential copycat generic manufacturers of all listed patents that must be addressed or, else the patent expired, before obtaining marketing authorization from the Canadian Minster of Health to market and sell a generic … Continue Reading

McCarthy Tétrault and IP Osgoode Co-host FinTech IP Symposium

Posted in Intellectual Property, Patents, Startups

On March 9, McCarthy Tétrault and IP Osgoode jointly hosted a symposium titled Effective IP Strategy to Drive Innovation in the Financial Services Sector.  This event brought together academics, business people, and lawyers for a discussion of how technological change is transforming the financial service sector and pushing incumbents and disruptors alike to think carefully about their IP strategies.

After introductory remarks from Barry Sookman and Giuseppina D’Agostino, the event set a brisk tempo and covered a lot of ground in two short hours.  The discussion was organized around three panels.

The first panel, moderated by Matt FlynnContinue Reading

Canadian Patent Law Update: Supreme Court Grants Leave in Utility / Promise / Sound Prediction Case

Posted in Intellectual Property, Patents

Canadian patents have utility requirements. A claimed invention must have some level of utility. A ‘mere scintilla’ of utility is all that the Patent Act requires.  However, where a patent contains an explicit promise of a specific result, the case-law has developed a requirement that this so-called ‘promised utility’ be demonstrated or soundly predicted as of the Canadian filing date of the patent application.

There has been much controversy over this ‘promise doctrine’ as well as the ‘heightened disclosure requirement’ that has been applied in the case of a sound prediction.  The controversy includes a NAFTA challenge by Eli Lilly … Continue Reading

Canadian Patent Law of Obviousness: R.I.P. Fair Expectation of Success

Posted in Intellectual Property, Patents

The question of whether a “fair expectation of success” is the correct legal standard applicable to an obvious to try analysis was finally laid to rest in the Federal Court of Appeal’s recent important decision of Eli Lilly v Mylan (2015 FCA 286). A unanimous panel held that a “fair expectation of success” was not the correct standard. Instead, the higher “more or less self-evident” test articulated by the Supreme Court of Canada in Sanofi-Synthelabo (2008 SCC 61) was reaffirmed as the correct legal standard. The higher standard for obviousness makes it more difficult to invalidate … Continue Reading

Ready. Set. Code! Banks embrace hackathons to spur innovation and source talent

Posted in Intellectual Property

As part of the technological arms race in the financial services sector, banks and other financial institutions are increasingly embracing hackathons as a way to innovate consumer products and banking tools. These types of events can help spur innovation, engage potential employees, and produce valuable digital assets for the hosting firm.  However, at the same time, companies should be cautious about the intellectual property issues at stake.

A “hackathon” is a software coding competition that happens over a short period – usually a day or two – where participants compete to come up with innovative new programs or applications. Sometimes … Continue Reading

Goldman Sachs Files Patent for Cryptocurrency “SETLcoin”

Posted in Intellectual Property, Patents, Virtual Currency

The transformational potential behind the popular cryptocurrency bitcoin continues to draw the interest of traditional financial institutions looking to ready their core businesses for a wave of new financial technology. The aspect of bitcoin that appears to be of the greatest interest to financial services organizations is not the currency itself, but the underlying blockchain technology. This technology is what enables the integrity of trading systems without a central authority.

On October 30, 2014, Goldman Sachs filed a patent application titled “Cryptographic Currency for Securities Settlement”, which claimed priority to an earlier provisional patent application filed in May 15, 2014. … Continue Reading

Technological neutrality, technological neutrality, technological neutrality: CBC v SODRAQ

Posted in Copyright

The Supreme Court released a landmark judgment yesterday in the closely watched case, Canadian Broadcasting Corp. v. SODRAC 2003 Inc., 2015 SCC 57. The 7-2 judgment of the Court was delivered by Rothstein J (with whom McLachlin C.J., Cromwell, Moldaver, Wagner, Gascon and Côté JJ agreed).

The judgment established the following principles.… Continue Reading

Every Innovative Company Needs an IP Strategy

Posted in Intellectual Property, Patents

Behind every successful innovation strategy is a sophisticated intellectual property strategy. Intellectual property is the currency of innovation:  it is a tradable that can be used to lend credibility to innovation programs, allow freedom to operate, provide access to third-party technology and ward off infringement actions.

Innovation is accelerating in almost every sector of the economy – banking, telecommunications, retail,  and services. Customers, especially Millennials, are hungry for the next new technology that will make their lives easier and the customer experience more enjoyable. At the same time, customers are less loyal than ever, since digitization gives them a tremendous … Continue Reading

The Trans-Pacific Partnership Agreement: What’s in it for Telecommunications, E-Commerce and Intellectual Property?

Posted in E-Commerce, Intellectual Property

On October 5, 2015, Canada and the following 11 Pacific Rim countries: Australia, Brunei Darussalam, Chile, Japan, Malaysia, Mexico, New Zealand, Peru, Singapore, United States and Vietnam, have reached a deal on the content of new free-trade agreement covering the Pacific region, the Trans-Pacific Partnership Agreement (the “TPP”). Although the final treaty text has yet to be settled and released, some information about the agreement has been released by many of the participating governments, including Canada. The content of the TPP covers a wide variety of economic activities and sectors, including, among others, telecommunications, e-commerce and intellectual property.  … Continue Reading

A Matter for Expert Evidence: No Obligation to Identify Combinations of Prior Art for Obviousness

Posted in Intellectual Property, Patents

Litigants seeking to invalidate claims of a patent invariably allege that the invention claimed by the asserted patent would have been obvious to a person of ordinary skill in the art. An allegation of obviousness typically relies on a mosaic of prior art combined with the skilled person’s common general knowledge to show that the inventive concept would have been obvious. A recent decision of Justice Heneghan of the Federal Court has clarified the extent to which a party alleging obviousness has to particularize the specific combinations asserted to render the inventive concept obvious.

In Crude Solutions Limited et al Continue Reading

Who Goes There? Protecting Intellectual Property Relating to Payment Innovation

Posted in Intellectual Property, Patents

The payments space is undergoing a period of rapid innovation, resulting in traditional financial institutions competing more and more directly with large technology companies such as Apple, Google, Samsung and Facebook. Unsurprisingly, various players in the payments industry have been filing patents to protect their proprietary technologies for various payment functionalities, ranging from central elements of a payment transaction (such as core payment processing algorithms), to other ancillary, but necessary, aspects of a payment transaction, such as authentication and tokenization methods.… Continue Reading

Playing Innovation Catch-up? You Need Bargaining Chips

Posted in Intellectual Property

With the exponential growth of game-changing technology, it is easy for an incumbent industry player to be caught flat-footed. Suddenly, the business model has evolved dramatically and the incumbent finds themselves playing innovation catch-up. The usual response is to become a ‘fast follower’. This seems like a viable strategy until the incumbent finds out that the new innovators have laid a minefield of patents in their way. In some cases, the incumbent may either be completely blocked or be faced with paying an exorbitant royalty to stay in business. How can an incumbent level the playing field?… Continue Reading

Aiming for More Patents Can Hurt IP Portfolio Value

Posted in Intellectual Property, Patents

Every year, executives at major companies showcase the number of patents they have filed and/or have been granted. They often use these statistics as a proxy for their level of innovation and to justify their legal spend. The resulting race to get the highest number of patents can result in the unintended consequence of a weak (and expensive) IP portfolio.

If a primary metric for business success is the number of patents, ambitious managers who want to get their year-end bonuses may push to proliferate patent filings for lower value technology. Another way to boost year end numbers is to … Continue Reading