snIP/ITs Insights on Canadian Technology and Intellectual Property Law

Tag Archives: patent 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

Revised NOC Regulations to Come Into Force on September 21, 2017

Posted in Intellectual Property, Patents

The Government of Canada has announced that the amended NOC regulations will come into force on September 21, 2017. These amendments will implement sweeping changes to pharmaceutical patent litigation in Canada pursuant to obligations imposed under CETA. The changes will apply to proceedings commenced in respect of NOAs served on or after September 21, 2017.

The final text of the amended NOC Regulations does not differ from the initial draft published on July 15, 2017, as summarized by our previous blog here.… Continue Reading

Claim For Section 8 Damages Struck But Novel Cause Of Action Survives In Ontario Suit Re: Viagra® Patent

Posted in Intellectual Property, Patents

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

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

Recent Ruling Regresses the Federal Court’s Stance on Expert “Blinding” in Canadian Patent Cases

Posted in Intellectual Property, Litigation, Patents

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