On April 4, 2017, the Honorable Justice Birss of the High Court of Justice (Chancery Division) issued his decision in Unwired Planet International v Huawei Technologies,  EWHC 711 (Pat). The decision provides a comprehensive review of the application of Fair, Reasonable and Non-Discriminatory (FRAND) principles to the licensing of Standard Essential Patents (SEPs).… Continue Reading
In a previous blog post, we briefly discussed the LOT Network’s initiative in in the fight against patent assertion entities (PAEs), more commonly known as patent trolls. Since the publication of that post, the LOT Network has overhauled its member agreement and published new information and statistics on how the program is working to protect companies from PAEs We have provided below a brief summary of some of the key changes.… Continue Reading
In a rare case where drug samples were given under consent in an NOC proceeding Novartis sought, but was denied, to use these samples in a related litigation in Portugal (2016 FC 1091).
Samples are rarely provided in NOC proceedings. Nevertheless, production may be compelled if samples were provided to the Minister as part of the drug submission (Patented Medicines (Notice of Compliance) Regulations (SOR/93-133), s. 6(7)). This was not the situation in this case where Mylan consented to producing the samples, subject to the existing protective order.… Continue Reading
In a recent decision (Apotex Inc. v. ADIR, 2017 FCA 23), the Federal Court of Appeal determined that the Federal Court erred in law by rejecting the relevance at law of any available non-infringing product and failed to adequately consider the evidence adduced as to the ability and willingness of three suppliers to provide non-infringing product. According to the Court of Appeal:
- To the extent the Federal Court rejected the relevance of non-infringing perindopril because the defendant sold perindopril, this conclusion was inconsistent with Monsanto Canada Inc. v. Schmeiser, 2004 SCC 34 where the Roundup Ready
On January 4, 2017, the Honourable Justice Locke of the Federal Court of Canada released his decision in Mediatube Corp. et al. v. Bell Canada, 2017 FC 6. This was a patent infringement action in respect of Canadian Patent No. 2,339,477 (the “‘477 Patent”) by the plaintiffs, NorthVu Inc. (patent owner) and MediaTube Corp. (licensee) against Bell Canada (including former Bell Aliant Regional Communications, Limited Partnership, together “Bell”). The plaintiffs alleged that Bell infringed the ‘477 Patent through the delivery of its digital Internet Protocol Television (“IPTV”) services called Fibe TV and FibreOp … Continue Reading
Changes are coming swiftly, as the federal government moves to implement the Comprehensive Economic and Trade Agreement (“CETA”) just days after it was signed by Prime Minister Trudeau in Brussels at the end of October 2016.
These changes will significantly impact biologic/pharma patents in two major ways. First, they will implement, for the first time, a Canadianized version of patent-term restoration. Second, they will revamp the current framework for linkage between patents and the approval of biosimilar/generic drugs in Canada by giving innovators the right of appeal, by changing the nature of the PM(NOC) proceedings to a more U.S.-style approach, … Continue Reading
In Teva Canada v. Novartis Canada 2016 FCA 230, the Federal Court of Appeal confirms that in assessing the utility of a patented invention, different patent claims can have different promised utilities.
This decision was made in Teva’s appeal from the Federal Court’s judgment (2015 FC 770) in which the Minister of Health was prohibited from granting an NOC to Teva in respect of its generic version of Novartis’ EXJADE® (deferasirox).
The only issue on appeal was whether the lower court erred in law in its construction of the so-called “promise of the patent”.… Continue Reading
In a recent decision, the Federal Court dismissed a motion by Apotex seeking particulars from (or to strike paragraphs from) Allergan’s pleading relating to the prior art, inventive concept, promised utility and sound prediction of utility of the patents at issue.
In this case, Allergan Inc. (“Allergan”) brought an infringement action against Apotex and AA Pharma in respect of two patents relating to Allergan’s drug ALPHAGAN P. Apotex filed a statement of defence and counterclaim, seeking to impeach Allergan’s patents. In its defence to counterclaim, Allergan denied Apotex’s invalidity allegations.… Continue Reading
In this decision (2016 ONSC 4966), the Ontario Court dismissed Apotex’s claim for damages under s. 8 of the NOC Regulations in the face of a motion to strike. Apotex’s other relatively esoteric claims were, however, left for another day. These claims include alleged false and misleading statements under s. 7 of the Canadian Trade-Marks Act, unjust enrichment, nuisance, and conspiracy. Pfizer failed to establish that these claims were doomed to fail. The high standard applicable on these motions was not met.
Apotex pursues Pfizer in the Ontario Court for alleged losses relating to Apotex’s delay in … Continue Reading
Gilead’s Canadian Patent 2,261,619 (the “619 Patent”)—the compound patent for tenofovir disoproxil fumarate (“TDF”)—is no stranger to Canadian courts. Adding to its litigious history, the Federal Court recently dismissed each of Apotex’s claims in an application under Canada’s NOC Regulations to find—for a second time—allegations relating to the 619 Patent’s validity unjustified.… Continue Reading
In May 2016, the Allied Security Trust, a non-profit industry group, announced the launch of the Industry Patent Purchase Program, otherwise known as IP3. This new initiative brings together technology industry leaders including Facebook, IBM, Microsoft, and Adobe, to establish a patent marketplace in an effort to create an opportunity for patent owners to both protect their intellectual property, and acquire valuable patents.
The IP3 follows the footsteps of previous initiatives by tech industry leaders, including an initiative spearheaded by Google last year, the Patent Purchase Promotion Program, that invited companies and start-ups to sell their patents to Google.… Continue Reading
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
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
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
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
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
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
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
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.
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
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
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
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
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