snIP/ITs Insights on Canadian Technology and Intellectual Property Law

Tag Archives: IP Litigation

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

Worldwide de-indexing order against Google upheld by Supreme Court of Canada

Posted in Privacy, Social Media, Technology License Agreement

The Supreme Court of Canada released a landmark decision today ruling that Canadian common law courts have the jurisdiction to make global de-indexing orders against search engines like Google. In so, ordering, the Court in Google Inc. v. Equustek Solutions Inc., 2017 SCC 34 underlined the breadth of courts’ jurisdiction to make orders against search engines to stem illegal activities on the Internet including the sale of products manufactured using trade secrets misappropriated from innovative companies.… 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

Reining in the Cable Killers: Federal Court Orders Crackdown on TV Set-top Boxes with Copyright-infringing Applications

Posted in Copyright, Intellectual Property

On June 1, 2016, the Federal Court granted an interlocutory injunction against retailers of television set-top boxes with pre-loaded applications that permit the unauthorized streaming and downloading of copyrighted content. Recognizing the “emerging phenomenon” of “pre-loaded set-top boxes” in Canada, this injunction comes at a time of rapid growth in the popularity of such devices. Finding for the plaintiff broadcasting companies, the Court’s Order in Bell Canada et al. v 1326030 Ontario Inc. et al., 2016 FC 612 also permitted the plaintiffs to identify and add other retailers of pre-loaded set-top boxes as additional defendants to bring them under … Continue Reading

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

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