Litigation

October 6, 2016

Pharmaceutical Patentees Could Face More than 100% of Actual Damages under PM(NOC) Regulations

2014 FCA 68 - Innovator pharmaceutical companies should be cautious and think twice about how aggressively they defend their patents as they could potentially face paying more than 100% of actual damages as an award under section 8 of the PM(NOC) Regulations.
October 6, 2016

FC continues to demonstrate high degree of deference to discretionary orders of prothonotaries

2016 FC 318 - The Federal Court continues to demonstrate a high degree of deference owed to discretionary orders made by prothonotaries.
October 4, 2016

FCA Alters the Standard of Review of Prothonotary Decisions

2016 FCA 215 - The FCA has held that the standard of review applicable to discretionary orders made by prothonotaries that was enunciated in Canada v. Aqua-Gem Investments Ltd. should be abandoned and replaced withthe standard that was set out by the Supreme Court of Canada in Housen v. Nikolaisen.
October 3, 2016

FCA Will not Reweigh Expert Evidence to Appeal Patent Invalidity

2015 FCA 191 - The FCA dismissed an appeal wherein Alcon sought to reverse a finding of invalidity against its patent by surreptitiously asking the FCA to reweigh the evidence as a challenge against the Federal Court Judge’s findings of fact and preferred expert evidence.
August 19, 2016

Injunctions for Patent Infringement: Only “Some” Connection Between a Product’s Infringing Features And Demand For Competitor’s Product is Required

(No. 14-1802 Fed. Cir.) - The CAFC held that a patentee does not have to prove that the infringing features of a competitor’s product were the exclusive or predominant reason why consumers bought the competitor’s product to obtain an injunction for patent infringement. Rather, it is sufficient to prove that there was some connection between the infringing features and the demand for the competitor’s product.
August 15, 2016

Motion to Stay Denied –Defamation Action and Trade-marks Act Claim Proceed in Parallel

2015 ONSC 7980 - The SCJ decided that the legal tests and the remedies available in a defamation action and an action for false and misleading statements under the Trade-marks Act are different enough that a stay of proceeding to block one action before the conclusion of the other should be denied.
August 8, 2016

Knowledge of Related Patents not “Actual Knowledge” for Awarding Pre-Issuance Damages

In U.S. patent infringement, the “actual notice” requirement in 35 USC § 154(d) requires actual knowledge of a published patent application. Knowledge of related patents, even those sharing a description, and indirect references to a published patent application in emails may not be sufficient to prove actual notice.
April 12, 2016

FC Discourages Questions Taken “Under Advisement” in Examinations

2015 FC 391 - The Federal Court recognized the increasing and improper use of the phrase "under advisement" in response to questions on examination for discovery.
February 3, 2015

ONCA Preserves Protection of Discussions between Expert Witnesses and Lawyers

Moore v Getahun, 2015 ONCA 55 - The Court referred to UK authorities that described patent law as an example of a highly technical area where “expert witnesses require a high level of instruction by the lawyers”, supposedly to liken the highly technical area of patent law to the highly technical area of medical malpractice with respect to its reliance on expert evidence.
August 14, 2013

FC Holds the Liability Phase of a Bifurcated Trial Is Concluded Even If Judge Defers Deciding Some Liability Issues to the Quantification Phase

Eli Lilly Canada Inc. v. Novopharm Limited – 2013 FC 677 Per Prothonotary Tabib: In this motion Teva sought to amend its Statement of Defence and […]