snIP/ITs Insights on Canadian Technology and Intellectual Property Law

Category Archives: Intellectual Property

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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

Domain Name Disputes: What You Need to Know – Part 1

Posted in Intellectual Property

Individuals or businesses may find themselves in a dispute over a domain name, whether as a complainant or the registered owner of the domain name.

Depending on the parties involved and where the domain name is registered, two potential avenues for domain name dispute resolution are through: (1) the Canadian Internet Registration Authority (“CIRA”), and (2) the World Intellectual Property Organization (“WIPO”).

Part 1 of this two-part blog will address CIRA’s dispute resolution process for .CA domain names. Part 2 will address WIPO’s domain name dispute resolution process.… Continue Reading

Unusable Copies and Copyright Infringement

Posted in Copyright, Intellectual Property

Copyright law offers up a panoply of interesting questions, which often verge on the philosophical. One such question is: if one tries to make a copy of something, but the copy is defective and useless, has one made a copy at all? According to a recent decision of Master Hanebury, of the Court of Queen’s Bench of Alberta, the answer could be yes.… Continue Reading

Google’s “FFF” Patent Plan: Find It, Fight It, and Get It For Free

Posted in Intellectual Property, Patents

Recently, Google has announced two new patent-related initiatives. The first being the overhaul of Google Patents, a search tool of existing patent databases, and the second being the launch of the Google Patent Starter Program, giving away patents for free.

These two initiatives build on Google’s effort to impact patent reform in the United States and beyond. Prior to these announcements, Google’s efforts included the launch of the Patent Purchase Promotion in April (which we discussed here). Google has not officially released any information on the outcome of the Patent Purchase Promotion but Kurt Brasch, a lawyer at Google, … Continue Reading

Canada’s Federal Court of Appeal Upholds C$180 Million Judgment in Favour of Merck Against Apotex in a Landmark Patent Damages Ruling

Posted in Intellectual Property, Patents

In a Judgment released July 23, 2015, the Federal Court of Appeal upheld the Federal Court’s award of more than C$180 million in damages and interest for Apotex’s infringement of Merck’s Canadian lovastatin patent. In this decision, the Federal Court of Appeal reversed the Trial Judge and held that the availability of a non-infringing alternative (“NIA”) is relevant under Canadian law but held that Apotex could not have and would not have deployed it.… Continue Reading

Innovator Delays Its Own Canadian Drug Approval In Effort To Secure Data Protection

Posted in Intellectual Property, Patents

On June 12, 2015, at the urgent request of Horizon Pharma PLC (“Horizon”), the Federal Court of Canada granted a rare interlocutory stay preventing the Minister of Health (the “Minister”) from issuing a Notice of Compliance (“NOC”) to Horizon in respect of its own glycerol phenylbutyrate drug RAVICTI that will be used to treat Urea Cycle Disorders (“UCDs”). Horizon sought the stay to prevent generic competitors from using the information in its regulatory submission while Horizon challenged the Minister’s decision to deny RAVICTI data protection. The Minister did not oppose Horizon’s motion.

While this case raises a fairly unique issue, … Continue Reading

Bill C-65: Canada Moves to Implement the Marrakesh Treaty

Posted in Copyright, Intellectual Property

On June 8, 2015, the Minister of Industry introduced Bill C-65, with the short title Support for Canadians with Print Disabilities Act. This Bill amends provisions of the Copyright Act dealing with exceptions intended to facilitate access to alternate format works by the visually impaired and other persons with so-called “print disabilities”. These changes are intended to implement (and enable Canada to accede to) the Marrakesh Treaty, as announced in the federal budget. (See pp. 21, 281, 286.)

The proposed amendments broaden the exception in section 32, including by removing the exclusion of large print books … Continue Reading

Federal Court of Appeal Clarifies Misunderstanding: Factual Basis and Line of Reasoning Need not be Disclosed in the Patent

Posted in Intellectual Property, Patents


In a decision released on June 3, 2015 (2015 FCA 137), a unanimous Federal Court of Appeal (“FCA”) dismissed Apotex’s appeal of Justice O’Reilly’s order prohibiting the Minister of Health from issuing a NOC to Apotex to market its generic version of LUMIGAN RC® until the expiry of Canadian Patent No. 2,585,691 (the “‘691 Patent”).

Significantly, on the issue of sound prediction the FCA held that the elements of sound prediction need not be disclosed in a patent if they would be self-evident to the skilled person. The Federal Court of Appeal has previously stated this … Continue Reading

Google’s Patent Purchase Program: In the public interest or a monopoly on patent rights?

Posted in Intellectual Property, Patents

On April 27th, 2015 Google announced the launch of its Patent Purchase Promotion. The “experiment,” as Google calls it, allows patent owners, or those otherwise authorized to sell a patent, to set a price for their patent and offer it for sale to Google. The Promotion is Google’s attempt to “remove friction from the patent market” and “help improve the patent landscape and make the patent system work better for everyone.” By offering to buy patents direct, Google is attempting to provide an alternative to the lure of selling one’s patent to a non-practicing entity, more commonly … Continue Reading

Coming Soon: .bank and .insurance Domain Names

Posted in Intellectual Property

In 2008, the Internet Assigned Numbers Authority (“IANA”), the nonprofit organization overseeing global IP address allocation, began the process of creating and auctioning new top-level domains. Since then, the Internet Corporation for Assigned Names and Numbers (“ICANN”), has confirmed a number of new ‘generic’ top level domains (“gTLD”), including two new “community-based gTLDs” for the financial services community, <.bank> and <.insurance>. “Community-based gTLDs” are top level domain names that are restricted to a specific community. fTLD Registry Services, LLC (“fTLD”), an organization founded and operated by a consortium of banks and insurance … Continue Reading

Restoring the Balance: Canada Reaffirms Intended Purpose of PM(NOC) Regulations

Posted in Patents

Industry Canada has sponsored proposed amendments to the Patented Medicines (Notice of Compliance) Regulations (the “PM(NOC) Regulations”) that broadens the eligibility to list patents on the Patent Register. These amendments are a direct response to the “perfect match” doctrine recently endorsed by Canadian courts. They reaffirm Health Canada’s long-standing practice regarding patent listing. In so doing, Industry Canada is seeking to restore the balance between innovators and their generic competitors as intended by the PM(NOC) Regulations.… Continue Reading

PM(NOC) proceedings: Federal Court of Appeal affirms stringent product specificity requirements for listing patents in Canada

Posted in Patents

The Federal Court of Appeal has affirmed the stringent product specificity requirements for listing a patent against a drug for purposes of the PM(NOC) Regulations in its recent decision in ViiV Healthcare ULC et al. v. Teva Canada Limited et al., 2015 FCA 93.

In this proceeding, Teva and Apotex brought motions under the PM(NOC) Regulations arguing that a patent listed against ViiV’s KIVEXA drug was not eligible for purposes of paragraph 4(2)(a) of the Regulations. KIVEXA is a combination drug that contains two medicinal ingredients. The patent at issue explicitly claims one of these ingredients.… Continue Reading

Speculation Insufficient to Establish Indirect Patent Infringement in Canada

Posted in Patents

The relevance of expert evidence in establishing indirect infringement of a pharmaceutical in Canada has been questioned. It is unclear what “facts” a product monograph is to contain that will amount to “instructions” to infringe a patent or how a party is to prove that such “facts” amount to “instructions” or how those “instructions” would be understood. What is clear is that “speculation” will not suffice.

On March 26, 2015, the Federal Court released its decision in Bayer Inc. v. Pharmaceutical Partners of Canada Inc., 2015 FC 388, granting PPC’s motion to strike portions of an application brought … Continue Reading

PM(NOC) Proceedings: Teva defeats VELCADE cancer treatment patent

Posted in Patents

In reasons dated February 26, 2015, Justice Barnes dismissed Janssen’s application for an order prohibiting the Minister of Health from issuing a Notice of Compliance to Teva for the compound bortezomib until the expiry of Canadian Letters Patent 2,203,936 (the ‘936 Patent). The ‘936 Patent relates to bortezomib and its use to treat cancer.

The fatal finding for the ‘936 Patent was its characterization by the Court as a selection patent. Justice Barnes held that bortezomib falls within a genus of compounds claimed by an earlier patent, all of which are said to be highly potent in the treatment of … Continue Reading

Federal Court Judge Dismisses Final Prohibition Application in CIALIS PM(NOC) Proceeding

Posted in Intellectual Property, Patents

On February 23, 2015, the Federal Court released its judgment in the latest of three PM(NOC) proceedings relating to Eli Lilly’s CIALIS (tadalafil) patents. The previous two decisions were discussed in snIP/ITs posted on January 26, 2015 and March 30, 2015.

In the latest decision, Eli Lilly Canada Inc. v. Mylan Pharmaceuticals ULC, 2015 FC 178, Justice de Montigny found that Mylan’s allegations of non-infringement and obviousness were justified, and dismissed Lilly’s application for an order prohibiting the Minister of Health from issuing a Notice of Compliance to Mylan until expiry of Canadian Patent No 2,379,948 (the … Continue Reading

Canada PM(NOC) Decision: Federal Court Judge Criticizes “Very Sketchy” Disclosure in a CIALIS Patent

Posted in Intellectual Property, Patents

On February 2, 2015 Justice de Montigny of the Federal Court released his judgment and reasons in Eli Lilly Canada Inc. v. Mylan Pharmaceuticals ULC, 2015 FC 125, dismissing 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. 2,371,684 (the “‘684 Patent”). The ‘684 Patent claims a dosage form of tadalafil and its use to treat erectile dysfunction (“ED”). This decision is the second in a series of three prohibition applications by Lilly relating to its tadalafil patents.

The use of tadalafil … Continue Reading

Canada Patented Medicines: Federal Court of Appeal Confirms Mootness of Innovator Appeals after Generic Marketing Authorization is Granted

Posted in Intellectual Property, Patents

“Asking a court to prohibit a notice of compliance after it has issued is like asking someone to close the barn door after the horses have escaped.”

With this analogy, the Federal Court of Appeal in Janssen Inc. v. Teva Canada Limited, 2015 FCA 36 has confirmed that an appeal from an order dismissing a prohibition application under the PM(NOC) Regulations becomes moot once the generic notice of compliance is issued. The Court dismissed Janssen’s appeal noting that it does not serve judicial economy to hear moot appeals.

In fact, the FCA has only exercised its discretion to hear … Continue Reading

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

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