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Category Archives: Litigation

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Canadian Patent Damages – Mitigation and Person Claiming Under the Patentee

Posted in Intellectual Property, Litigation, Patents

Not long after its decision in Apotex Inc. v. Bayer Inc (2018 FCA 32 – see our blog), the Federal Court of Appeal released another important decision on the subject of remedies for patent infringement (full decision here: Teva Canada Limited v. Janssen Inc., 2018 FCA 33).

The Court of Appeal confirmed that whether a plaintiff has reasonably mitigated its loss in a patent case is a question of fact. The burden lies with the defendant to establish the plaintiff failed to take reasonable steps that were available to mitigate. Further, the Court of Appeal reiterated … Continue Reading

Canadian Patent Litigation: Five Things to Watch in 2018

Posted in Intellectual Property, Litigation, Patents

2017 was a significant year for Canadian patent law — one marked by the Supreme Court abolishing the so-called ‘Promise Doctrine’ of utility, as well as several other significant changes. Here’s a look at five things to watch for in patent litigation in the coming year.

1. Promise Doctrine Abolished

On June 30, 2017, the Supreme Court of Canada, released a landmark patent decision AstraZeneca Canada Inc. v. Apotex Inc., 2017 SCC 36, abolishing Canada’s so-called ‘Promise Doctrine’ (our commentary here). Under the Promise Doctrine, patents could be invalidated if various heightened utilities construed from the patent were … Continue Reading

Canada’s Federal Court of Appeal Says Infringers Cannot Dictate the Remedy

Posted in Intellectual Property, Litigation, Patents

When a patent is infringed in Canada, a successful plaintiff can elect damages, or an accounting of the profits the defendant made by infringing. Unless there is an equitable reason to refuse an accounting of profits, the choice belongs to the plaintiff.[1]

In Apotex Inc. v. Bayer Inc., 2018 FCA 32, the Federal Court of Appeal ruled in no uncertain terms that the infringer does not get to dictate the remedy. The infringer, Apotex, raised a novel argument that it could impose an accounting of profits on Bayer. In the Court below, Justice Fothergill rejected Apotex’s argument, holding … Continue Reading

Technology Law Highlights: 2017 Year in Review

Posted in Anti-Spam, Copyright, Fintech, Intellectual Property, Litigation, Regulatory Compliance, Telecommunications, Virtual Currency

2017 was an eventful year in technology law both in Canada and abroad. From a surprise late reprieve from the year’s most anxiously anticipated anti-spam legislative provisions to a decision from the country’s top court upholding a Canadian-issued global order against Google, legislators, regulators and the courts made moves with important implications for technology lawyers, companies and departments in the course of the year.

Here, in no particular order, are some of the year’s highlights as chronicled by McCarthy Tétrault’s bloggers:… Continue Reading

No Interlocutory Injunction—How About “Terms” Instead?

Posted in Copyright, Intellectual Property, Litigation, Technology License Agreement

Some would say keeping a software license alive by an injunction is like requiring specific performance of a contract – something courts don’t like to do. However, a recent Ontario decision appears to have done about just that, by relying on its discretion to grant “terms” according to Ontario Rule 37.13(1) in extending an interim injunction for six months, despite the plaintiff failing to justify its request for an interlocutory injunction to trial. Continue Reading

SCC To Weigh In On Fees For Identifying ISP Subscribers: Rogers v. Voltage

Posted in Copyright, Litigation

One of the essential and recurring challenges of regulating unlawful conduct on the Internet—be it child pornography, harassment, fraud, data theft, content piracy, or otherwise—is identifying who is responsible.

Frequently, one can identify an IP address that is (or may be) a target of interest. IP addresses can be traced to responsible organizations, through publicly accessible registries.  However, to complete the chain back to a person generally requires the cooperation of the organization.

Commercial ISPs are in the business of providing IP addresses (and network connectivity) to their customers. So, inevitably, they find themselves on the receiving end of many … Continue Reading

Federal Court of Canada Rejects NIAs, and Strikes S. 8 Damages in LOSEC (omeprazole) Patent Infringement Damages Decision

Posted in Intellectual Property, Litigation, Patents

In AstraZeneca v Apotex, 2017 FC 726, the Federal Court issued its damages decision concerning Apotex’s infringement of a patent pertaining to AstraZeneca’s LOSEC (omeprazole) drug. This decision offers insight in the factual hurdles a generic must overcome to establish an ex post facto non-infringing alternative (NIA), and confirms that s. 8 damages are not available during a period in which a generic would be infringing a patent, as there is no compensable loss.… Continue Reading

CETA Implementation: New Era of Pharmaceutical Patent Litigation Begins

Posted in Intellectual Property, Litigation, Patents

The provisional application of CETA takes effect in Canada today, ushering in a new era for pharmaceutical patent litigation. As part of this implementation, amendments to the Patent Act, the Patent Rules and the PM(NOC) Regulations, as well as the new Certificates of Supplemental Protection (CSP) Regulations, came into force today. See our previous posts on the new PM(NOC) Regulations and CSP Regulations for key details about these new schemes.

Health Canada issued a Guidance Document relating to the CSP Regulations and a Notice in Respect of the PM(NOC) Regulations.  The CSP Guidance Document provides information … Continue Reading

Canada’s Federal Court of Appeal Affirms Invalidity of Idenix Patent for Insufficient Disclosure

Posted in Intellectual Property, Litigation, Patents

In their decision reported as 2017 FCA 161, the Federal Court of Appeal says s. 27(3) of the Patent Act requires the patent to disclose both the invention, and how to make the invention. Further, that a patent will not lack sufficient disclosure where routine experimentation is required of a skilled person. However, disclosure is insufficient if the specification “necessitates the working out of a problem”.

In this case, the patent did not teach a step necessary to synthesize the claimed compound. The issue was whether this gap could be filled by the common general knowledge of the skilled … Continue Reading

SCOTUS Agrees to Hear Constitutional Challenge of Inter Partes Review Procedure for Patents

Posted in Intellectual Property, Litigation, Patents

Canadian hydraulic fracturing technology (“fracking”) is at the center of a controversial US case about inter partes review (“IPR”) of patents.[1] The IPR procedure can be a useful defense against patent infringement actions brought by non-practicing entities or “patent trolls.” However, on June 12, the United States Supreme Court agreed to hear the case challenging the constitutionality of the IPR procedure. A SCOTUS decision abolishing or curtailing the IPR procedure, and the ensuing patent troll activity, could have ramifications for Canadian business, including in the fracking industry.… Continue Reading

‘Promise Doctrine’ Abolished by the Supreme Court of Canada

Posted in Intellectual Property, Litigation, Patents

On June 30, 2017, the Supreme Court of Canada, released a landmark patent decision (2017 SCC 36) abolishing Canada’s so-called ‘Promise Doctrine’ by finding it “unsound”, “not good law” and “incongruent with the both the words and scheme of the Patent Act.”Continue Reading

Few “likes” for Facebook Forum Selection Clause: Supreme Court Finds “Strong Cause” to Not Enforce Forum Selection Clause

Posted in Class Actions, Litigation, Privacy, Social Media

Electronic terms of service govern billions of relationships worldwide, whether a user is joining a social media service, shopping online or accessing a blog. In each case, a binding contract is formed, the terms of which are usually set out in the website’s “terms of service” . But when a contract is made over the internet and there is later a dispute, whose law governs? What is the “forum” for the resolution of the dispute? What if the contract expressly designates a specific jurisdiction as the appropriate “forum”? In Douez v Facebook, Inc. (“Douez”), the Supreme Court of … Continue Reading

Federal Court Strikes Claim Where Allegations of Patent Infringement Were Speculative

Posted in Intellectual Property, Litigation, Patents

On June 12, 2017, Prothonotary Aylen of the Federal Court issued her decision in Mostar Directional Technologies Inc. v Drill-Tek Corporation et al., 2017 FC 575. Prothonotary Aylen struck the Plaintiff’s claim, holding that the pleading was speculative and failed to provide sufficient material facts for the allegation of patent infringement.

In this case, the Plaintiff alleged that the Defendants infringed Canadian Patent Nos. 2,666,695, 2,544,457, 2,584,671, and 2,634,236 which relate generally to down hole drilling technologies. The Plaintiff’s claim identified the Defendants’ model names and listed the patent claims that were alleged to be infringed. After demanding … Continue Reading

The Power of an Inference: Federal Court Restores $125 Million S. 8 Damages Award

Posted in Intellectual Property, Litigation, Patents

In Teva v. Pfizer Canada, 2017 FC 526, the Federal Court reaffirmed and reissued a judgment awarding Teva a section 8 damages award in excess of $125 million relating to the drug EFFEXOR XR® (venlafaxine). This decision offers insight into the legal limits on what inferences can be drawn about a generic’s ability to source sufficient drug supply in the but-for damages world.

The key issue at this redetermination[1] was whether Teva would have had and could have had access to sufficient quantities of venlafaxine at the relevant time to support its notional sales in … Continue Reading

Internal Technology Transfer Gone Wrong: Composite Technologies Inc. v. Shawcor Ltd., 2017 ABCA 160

Posted in Intellectual Property, Litigation

Intellectual property is transferrable. And you should be careful with how you transfer your IP among your corporate family, especially if it constitutes the principal value in your business – and in your life’s work!

One IP owner in Alberta had the misfortune of making a transfer to a subsidiary which he eventually allowed to be dissolved. When it came time to assert his ownership rights in the technology in a court, his suit was summarily dismissed as meritless.

Recently, the Alberta Court of Appeal ruled that this outcome was correct.… Continue Reading

Drug testing in Canadian patent suit not permitted to be used in foreign litigation

Posted in Intellectual Property, Litigation, Patents

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

Website operator jailed for distributing copyright infringing copies of musical works: R v Evans

Posted in Copyright, Intellectual Property, Litigation

Is operating a website that provides links to torrent websites which facilitates unauthorized downloading of musical works a criminal offence? If so, can the operator of such sites expect jail time as punishment for this crime? In a recent decision of the English and Wales Court of Appeal in Evans, R. v [2017] EWCA Crim 139 (14 February 201), the accused, Mr Evans, was convicted of two offences of distributing infringing copies of musical works and was sentenced to 12 months in prison for these crimes.… Continue Reading

TPMs Are Alive and Well: Canada’s Federal Court Awards Nintendo $12.7-million in Damages

Posted in Copyright, Intellectual Property, Litigation

Five years ago, Canada enacted legal protection for technological protection measures (TPMs) as part of the Copyright Modernization Act. The Federal Court has now  rendered the first decision  interpreting  these important rights. In short, the court  made it clear that legal protection for TPMs were meant to foster innovation in the creative industries and that businesses blatantly engaging in industrial scale TPM circumvention activities will be dealt with harshly by the courts.

In Nintendo of America Inc. v. King & Go Cyber Shopping (2005) Ltd., 2017 FC 246 (docket here; decision available soon on the Federal Court website and … Continue Reading

Federal Court of Appeal allows $6.5 million lump sum cost consequence

Posted in Litigation

In a recent appeal (2017 FCA 25) relating to the issue of costs following a patent infringement trial, the Federal Court of Appeal commented that lump sum awards have found increasing favour with courts, and for good reason as they save the parties time and money. Lump sum costs awards further the objective of the Federal Courts Rules of securing “the just, most expeditious and least expensive determination” of proceedings (Rule 3). When a court can award costs on a lump sum basis, granular analyses are avoided and the costs hearing does not become an exercise in accounting. … Continue Reading

Copyright Infringement Class Action Over University Course Packs Certified in Quebec: Copibec c. Université Laval

Posted in Copyright, Intellectual Property, Litigation

On February 8, 2017, the Quebec Court of Appeal certified a class action by Copibec against Université Laval, for copyright infringement.

This decision overturns a Superior Court ruling from 2016, which would have dismissed the claim on the basis that Copibec did not satisfy the eligibility requirements under the province’s Code of Civil Procedure for an association to bring a class action on behalf of its members.

Copibec is a collective management organization representing book publishers, visual artists, and newspaper and periodical authors and publishers in Quebec.

Copibec alleges that, in 2014, Université Laval declined to renew its license agreement … Continue Reading

CETA Implementation in Canada: Bill C-30 Brings Significant Changes to the Canadian Patent System

Posted in Intellectual Property, Litigation, Patents

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

Federal Court Dismisses Motion for Particulars of the Patent’s Inventive Concept and Promise of Utility

Posted in Intellectual Property, Litigation, Patents

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

Federal Court Rules on Health Canada Importation Ban

Posted in Litigation

This case (Apotex v. Canada (Health), 2016 FC 673) involves a very unique set of circumstances. An underlying Health Canada decision was found to have been made for an improper purpose and carried out unfairly. This decision was apparently perpetuated in identical form in a subsequent decision without an evidentiary or lawful basis to do so and the subsequent decision was, therefore, found to be unlawful as well.… Continue Reading