Blog

February 10, 2016

FCA Endorses Non-Infringing Alternatives as a Relevant to Patent Damages

2015 FCA 171 - The FCA determined that it is relevant to damages whether the infringer had a non-infringing alternative that it could have used.
February 10, 2016

FCA Upholds Claim-by-Claim Construction and Test for Functionality in Industrial Designs

2015 FCA 115 - The FCA restated the law on functionality of industrial designs and the requirement that patent claims be construed on a claim-by-claim basis.
November 30, 2015

FCA: Generic pharmaceuticals also subject to price regulation

2015 FCA 249 - The Federal Court of Appeal clearly stated that the price regulation provisions apply not only to literal patent holders, but also to exclusive licensees of patents.
November 23, 2015

CAFC to Rehear On-Sale Bar Novelty Case

The CAFC has now granted a petition for a rehearing the case on this issue of whether or not the sale of bivalirudin from the supplier gave rise to an on-sale bar.
November 20, 2015

TPP IP Chapter – Highlights for the Canadian Tech Companies

Broadly speaking, the TPP calls for two things: greater international cooperation and efficiency, and strengthening intellectual property rights across its 12 member states
November 16, 2015

Federal Court Skirts Provincial Property Law and Transfers Patent Ownership

Imperial Oil Resources Ltd v Exxonmobil Upstream, 2015 FC 1218 - The Federal Court has finally stated outright that it has the jurisdiction to vary patent ownership without encroaching upon the realm of provincial contract law.
November 6, 2015

USPTO Design Patent Fee 48% Increase

The USPTO is proposing a 48% increase in government fees to obtain a design patent.
October 7, 2015

Relitigating Conceded Claims is an Abuse of PM(NOC) Proceedings

Gilead Sciences, Inc v Canada (Health), 2015 FC 610 - Gilead's assertion that its patent is valid would be relitigating old issues and an abuse of PM(NOC) proceedings.
October 6, 2015

FCA Nudges SCC to Consider that Claim Construction should be Reviewed on Reasonableness Standard

Abb Technology AG, ABB Inc v Hyundai Heavy Industries Co, Ltd, 2015 FCA 181 - The FCA suggested that although claim construction is reviewed on a correctness standard, claim construction is so heavily reliant on expert witnesses that perhaps it should be reviewed on a palpable and overriding error standard.
October 2, 2015

United States adopts Divided Infringement Test

Akamai Technologies, Inc, v Limelight Networks, Inc, 09-1372 - The CAFC held that where more than one actor is involved in infringing the steps in a patent, one of the actors can be held liable for the entirety of the infringement if that actor “directs or controls the other’s performance.”
September 30, 2015

ONSC Takes On US Patent Claim Construction

OrthoArm Incorporated v GAC International, LLC, 2015 ONSC 5097 - The ONSC was to undertake the analysis that would normally be done at a Markman hearing: to perform claim construction on the US patent and apply that construction to determine whether there is infringement.
September 28, 2015

Reputation Management

A well-organized Reputation Management Plan is now a required tool in any corporation’s communication portfolio. Here are a few ideas that should go into your Reputation Management Plan.
September 22, 2015

Crafting a Suitable IP Strategy – Tips from the Pros!

Many startups are basing their business plans and valuations on their innovation; patents and industrial designs can be the most valuable asset of the company. One of the best strategies to secure protection for your innovation involves the filing of a self-written provisional patent application. On October 21, beginning at 5 p.m., PCK will be providing a hands-on session in which founders can learn the basics of patents from Andrew Currier.
September 22, 2015

Making a Blurry & Illegible Copy is still Copyright Infringement

Geophysical Service Inc v Antrim Energy Inc, 2015 ABQB 482 - The Alberta Court of Queen’s Bench found copyright infringement even though the copy that was made was blurry and completely unusable.
September 21, 2015

“OUTRIGGER” Trade-mark Expunged for Deviation

Padcon Ltd v Gowling Lafleur Henderson LLP, 2015 FC 943 - Padcon's trade-mark for "THE OUTRIGGER STEAKHOUSE AND BAR" was expunged for lack of use by deviation. It's only use was the inclusion of the term "OUTRIGGER" on restaurant menu items and promotional materials.
September 18, 2015

The ITC Asserts Jurisdiction over Digital Patent Infringement

ClearCorrect Operating LLC, et al v International Trade Commission (No 2014-1527) - An appeal to the Federal Circuit will determine whether the ITC has jurisdiction over digital patent infringement: the ability to block the importation of patent-infringing “articles” if those articles take the form of digital information.
September 16, 2015

FC Finds Novartis Patent Promises a Mechanism of Action, not a Treatment

Novartis Pharmaceuticals Canada Inc v Teva Canada Limited, 2015 FC 770 - Novartis was able to uphold its patent against allegations of invalidity from Teva, but not without the Federal Court making a number of razor thin distinctions between what the patent promised and what it did not.
September 15, 2015

FCA Rejects “Exact Matching” Requirement in PM(NOC) Regulations

Eli Lilly Canada Inc v Canada (Attorney General), 2015 FCA 166 - The FCA rejected the notion adopted by the Federal Court that a higher level of specificity is required to adhere to the Regulations than is required for an element to be claimed as a matter of claim construction, bringing the law in line with Industry Canada proposed amendments.
September 9, 2015

The Word “will” can Indicate a Patent Promise, not an Expectation

AstraZeneca Canada Inc v Apotex Inc, 2015 FCA 158 - The FCA acknowledged that the word “will” often refers to an expectation or goal rather than a promise, but still held that the FC did not err in finding that a promise was made when reading the patent as a whole from the eyes of a skilled reader.
September 8, 2015

Federal Court Revisits Schmeiser Differential Method for Calculating Profits

ADIR v Apotex Inc, 2015 FC 721 - In an accounting of profits case, the FC stated that if a non-infringing alternative is to be considered, it “cannot be what one would have done had one complied with the law”.