snIP/ITs Insights on Canadian Technology and Intellectual Property Law

Tag Archives: patent; intellectual property; patent litigation

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 Law Update: Supreme Court Grants Leave in Utility / Promise / Sound Prediction Case

Posted in Intellectual Property, Patents

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

Canadian Patent Law of Obviousness: R.I.P. Fair Expectation of Success

Posted in Intellectual Property, Patents

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

Four Tips from Merck’s $180M Patent Damages Win Against Apotex

Posted in Intellectual Property, Patents

It is said that the wheels of justice turn slowly, but grind exceedingly fine.  That phrase could certainly apply to Merck’s recent win over Apotex in a damages trial for patent infringement in Canada, in a case that started in 1997.

The liability decision finding Apotex guilty of infringement was released in December 2010.  To view the Lexpert write-up of the liability decision click here.  It took another two years before we arrived at the damages trial.  It commenced on April 8, 2013 in Toronto.  On July 16, 2013, the public damages judgment was released.  Merck was awarded damages … Continue Reading