snIP/ITs Insights on Canadian Technology and Intellectual Property Law

Tag Archives: litigation

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

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

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

Allegations Against Canadian Tenofovir Patent Found Unjustified (Again)

Posted in Intellectual Property, Patents

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

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

Practical Tips for Obtaining a Norwich Order

Posted in Litigation

Have you been wronged, but are unsure by whom? There’s an app for that! An application, that is…for a Norwich Order.

In the age of the internet, it is increasingly easy to commit wrongs anonymously. Violations of legal rights via the internet can take many forms. From defamation to copyright infringement to breach of confidence and contract, when a wrong has been committed against you or your company but the wrongdoer’s identity is unclear, the first step is to obtain that information. If an innocent third party such as a website has enabled the perpetrator to commit the wrong, a … Continue Reading

The Latest on Canadian Expert Reports: Ontario’s Highest Court Rejects Notion that Consultations between Counsel and Experts Must Stop

Posted in Litigation

The Ontario Court of Appeal has put to rest any notion that the practice of consultation between counsel and expert witnesses to review draft reports is improper. In its decision in Moore v. Getahun, 2015 ONCA 55 rendered on January 29, 2015, the Court explained that “banning undocumented discussions between counsel and expert witnesses or mandating disclosure of all written communications is unsupported by and contrary to existing authority”.

The Court observed that consultations between counsel and expert witnesses are essential to ensure that reports comply with the Rules of Civil Procedure and the rules of evidence, address relevant … Continue Reading

“Objectively Reasonable” and Privacy: Recent Developments

Posted in Privacy

The ubiquitous and rapidly-evolving nature of technology has recently necessitated serious consideration of our “reasonable expectation of privacy.”  This concept is at the core of Canadian privacy law. In particular, the concept is a key part of the Charter test for s. 8, the right to be secure against unreasonable search and seizure. The Supreme Court of Canada (“SCC”) grappled with these questions in R v Cole[1] and R v Vu[2], and more recently, the British Columbia and Ontario Courts of Appeal applied these Charter principles to couriered packages and USB keys in R Continue Reading

B.C. Supreme Court Breathes Life Into New Breed of Potential Pharma-Related Class Action Whereby Innovator Profits Are At Risk

Posted in Intellectual Property, Patents

In Canada, innovator drug companies can protect their market exclusivity from generic copycats by asserting patents against the generic manufacturer in litigation under the PM(NOC) Regulations. Until now, the consequences of losing PM(NOC) litigation was the potential payment of damages to the generic whose market access was delayed by the litigation. These so-called “section 8 damages” are limited to the actual loss suffered by the generic during that specific period of delay. Public policy is such that the profits earned by the innovator during that period cannot, however, be disgorged pursuant to section 8 of the PM(NOC) Regulations.… Continue Reading

Third Party’s Right to Use Official Mark in a Domain Name Upheld: BC Court of Appeal Rejects ICBC’s Claim of Trade-mark Infringement

Posted in Intellectual Property, Trade-marks

Third Party’s Right to Use Official Mark in a Domain Name Upheld: BC Court of Appeal Rejects ICBC’s Claim of Trade-mark Infringement  

On July 22, 2014, the B.C. Court of Appeal dismissed the claim of B.C.’s provincial auto insurer, the Insurance Corporation of British Columbia (ICBC), that a personal injury lawyer’s registration and use of domain names incorporating its official mark “ICBC” violated the Canadian Trade-Marks Act. 

In Insurance Corporation of British Columbia v. Stainton Ventures Ltd., 2014 BCCA 296 the Court held that the domain names <icbcadvice.ca> and <icbcadvice.com> did not infringe ICBC’s rights as internet users will … Continue Reading

Intrusion Upon Seclusion Part 2: Implications for Businesses Across Canada

Posted in Privacy

Recently, my colleagues Sean Griffin and Ann-Elisabeth Simard considered the Evans v Bank of Nova Scotia (“Evans”) decision wherein the Ontario Supreme Court (the “Court”) certified a class action proceeding for allegations concerning a breach of privacy rights through the tort of intrusion upon seclusion first set out in Jones v Tsige (“Jones”).  You can access his blog here.

Evans has set a precedent for the low threshold required to be met for certification in class actions concerning breaches of information privacy. In this blog, we will canvass the implications of the EvansContinue Reading

Canada Patent Litigation: Federal Court Rules “Enhanced Disclosure” Requirement for Sound Prediction Applies Only To “New Use” Patents

Posted in Intellectual Property, Patents

On July 2, 2014, Mr. Justice Rennie of the Federal Court released his judgment and reasons in Astrazeneca Canada Inc v. Apotex Inc., 2014 FC 638 dismissing AstraZeneca’s action for infringement and granting Apotex’s counterclaim for a declaration that Canadian Patent 2,139,653 (the “‘653 Patent”) is invalid. This patent relates to AstraZeneca’s successful drug NEXIUM® (esomeprazole).

Justice Rennie found the invention of the ‘653 Patent was novel and non-obvious, but nevertheless invalidated the patent for promising an improved therapeutic profile which was not soundly predicted.

While Justice Rennie canvassed a number of legal issues, his … Continue Reading

Interim Injunctive Relief Against Google as a Tool to Enforce Intellectual Property Rights Worldwide

Posted in Intellectual Property

Facts

Following the decision last month in which Google Inc. (“Google”) was ordered by the European Union’s Court of Justice to “forget” certain personal information[1], the Supreme Court of British Columbia (the “Court”) issued an interim injunction on June 13, 2014 against Google to remove certain websites from its worldwide Internet search engines. This interim injunction is part of an underlying action launched by Equustek Solutions Inc., a company that manufactures and sells complex industrial networking devices, (“Plaintiff”) against Datalinks and related companies (“Defendants”).

In the underlying action, the Plaintiff … Continue Reading

The Aereo Decision – Canadian Content?

Posted in Copyright, Intellectual Property

Careful observers of the United States Supreme Court’s 6-3 decision yesterday in American Broadcasting Cos., Inc. et al v. Aereo, Inc. may have detected a small Canadian flavour in the majority’s reasoning. As will be revealed, this was no coincidence, and McCarthy Tétrault played a small role by filing an amicus brief on behalf of a coalition of international rights holders and copyright scholars that drew the Court’s attention to the need to interpret the US Copyright Act in a technologically neutral way, as similar copyright laws have been construed by the Supreme Court of Canada and the European Court … Continue Reading

You can stay anonymous: SCC recognizes a privacy interest in protecting anonymity on the Internet

Posted in Privacy

On June 13, 2014, in a landmark privacy ruling, the Supreme Court of Canada (“SCC”) in R v Spencer[1] (“Spencer”) unanimously recognized that, in addition to confidentiality and control of the use of personal information, there may be a privacy interest in protecting anonymity in the context of internet usage. In this decision, the SCC decided that a person has a reasonable expectation of privacy associated with Internet activities and that the “lawful authority” exemption in PIPEDA does not create a basis to provide such information to the police unless the police actually demonstrate that … Continue Reading

Federal Court Dismisses Notion that Patents Should be Given Only One Interpretation for All Purposes

Posted in Intellectual Property, Patents

Summary

In a pair of simultaneously released decisions on June 13, 2014, Justice O’Reilly allowed Allergan’s applications (the “Applications”) prohibiting the Minister of Health from issuing NOCs to Cobalt (now “Actavis”) (2014 FC 566) and Apotex (2014 FC 567) to market their generic versions of LUMIGAN RC® until the expiry of Canadian Patent 2,585,691 (the “‘691 Patent”) in 2026.

Allergan was represented by Andrew Reddon, Steven Mason, Steven Tanner and Sanjaya Mendis of McCarthy Tétrault LLP.

Background

Allergan originally marketed a 0.03% bimatoprost (“Bp”) containing formulation for treating glaucoma called LUMIGAN, … Continue Reading

Canadian Trademarks: Cathay Pacific wins battle over “Asia Miles” versus “Air Miles”

Posted in Intellectual Property, Trade-marks

On June 11, 2014 Justice O’Reilly of the Federal Court released his decision relating to the registerability of the trademark “Asia Miles” in light of opposition from Air Miles International.

The trade-marks opposition board had upheld Air Miles International’s opposition to the registration of “Asia Miles”.  Justice O’Reilly, on an application for judicial review, interfered with the Board’s findings and sent it back for reconsideration.

For the full written decision see: Cathay Pacific v. Air Miles International, 2014 FC 549.

This decision is important to the law of trademarks for the following reasons:

  1. Use of a mark includes
Continue Reading

“Only Following Orders” No Defence: B.C. Court of Appeal Holds Employees Personally Liable for Their Participation in Breach of Technology License

Posted in Technology License Agreement

In the case of XY, LLC v. Zhu, 2013 BCCA 352¸ the B.C. Court of Appeal has confirmed that employees of a company can be personally liable for the breach of a technology license agreement by their employer. The Court held that employees who continue to carry out low level tasks even after they become aware of their employer’s dishonest conduct may avoid liability; employees  who knowingly assist their employer in carrying out a fraud can be personally liable for the damages caused by the company’s conduct.

The plaintiff XY, LLC was formed to bring to market technology that … Continue Reading

Enforcing an Intellectual Property Judgment in Canada

Posted in Intellectual Property

Whether we are talking about patents, trademarks, copyright or other forms of intellectual property, they need to be enforced and protected. One outcome of IP litigation can be a monetary award, for example, an award of damages. Organizations sometimes find themselves in a position where a final award in an IP case must be enforced against an individual or a company located in Canada. This happens, for example, where the Canadian defendant has no meaningful assets located in the foreign jurisdiction. It happens more often than one might think.

Essentially, a foreign judgment is viewed as a contractual obligation that … Continue Reading

Do you need to examine inventors located in Canada as a part of your patent lawsuit?

Posted in Intellectual Property, Patents

Almost invariably, defendants in a patent lawsuit seek to examine the inventors of the patent or patents in issue.  But, what do you do if an inventor resides in Canada?  Generally, non-Canadian courts are not able to assert personal jurisdiction over Canadians and, therefore, cannot compel them to give evidence under oath for the purposes of a lawsuit.  If a Canadian witness does not willingly provide evidence, commission evidence may be sought via the enforcement of what are called “letters of request”.  Essentially, these represent a foreign court’s request that a Canadian court order someone to appear and be examined … Continue Reading

Patent Litigation in Canada: A U.S. Attorney’s guide to the Canadian Litigation Process

Posted in Intellectual Property, Patents

Canada and the United States are close neighbors. About 300,000 people cross the border each day, and bilateral trade amounts to about $1.6 billion in goods daily.  It is not surprising that patent, and other intellectual property disputes, often involve some element of cross-border litigation.  The Canadian litigation experience is relatively similar to the American experience.  There are, however, some important differences that U.S. attorneys involved in such litigation should be aware of.

  1. Like in the United States, Canada has federal and provincial/state courts. Both can decide patent cases.
  2. Litigation process and procedure is dictated by the rules of civil
Continue Reading

Cour suprême : Interception de textos auprès d’un fournisseur de services de télécommunications

Posted in E-Discovery

R. c. Société Telus Communications est un autre exemple jurisprudentiel intéressant de l’application du droit général à la protection contre les fouilles, les perquisitions et les saisies abusives garanti par l’article 8 de la Charte canadienne en fonction du progrès technologique.

La Cour suprême a dû se prononcer sur la validité d’un mandat général obtenu par la police pour mettre la main, de manière prospective, sur des messages textes (« textos ») auprès d’un fournisseur de services de télécommunications, soit Telus. Il s’agit d’un appel d’une décision de la Cour supérieure de justice de l’Ontario.

À titre de précision préliminaire, … Continue Reading

Status Update: Social Media in the Changing Landscape of Litigation in Canada

Posted in E-Discovery, Privacy

Information disseminated through social media platforms such as Facebook and LinkedIn is of growing utility in litigation matters. Evidence obtained from social media accounts by way of discovery preservation and production orders has significantly strengthened the positions of litigating parties. This should come as no surprise as individuals routinely “post” messages, thoughts, pictures and experiences on these platforms, leaving a wake of evidence in the process.

There has been marked development in this area of law in Canadian jurisprudence. To date, Courts and Tribunals have, among other things, ordered the preservation and production of entire social media accounts, dismissed wrongful … Continue Reading

Where the Money Goes: Rand Institute’s Report Highlights Companies’ e-Discovery Spend

Posted in E-Discovery

What are the costs associated with different phases of e-discovery production? How are these costs distributed across internal and external sources of labour, resources, and services? And how can these costs be reduced without compromising quality? The Rand Institute for Civil Justice’s April monograph, “Where the Money Goes: Understanding Litigant Expenditures for Producing Electronic Discovery” explores these issues, highlights the main challenges related to preserving electronic information and provides some recommendations on how to address complaints of excessive costs and uncertainty.

In the Rand study, the researchers collected data from eight major corporations across 57 cases and interviewed … Continue Reading