Patents

Case summaries and articles about  patents.

October 27, 2014

Expert witnesses proven to be pivotal in Dow Chemical patent infringement suit

Dow Chemical Co v NOVA Chemicals Corp, 2014 FC 844 - The Federal Court found that NOVA Chemicals infringed Canadian Patent No. 2,160,705, owned by The Dow Chemical Company, by NOVA’s use of its “SURPASS” polyethylene product. Allegations of invalidity for lack of utility, claims broader than any invention made or disclosed, anticipation, obviousness, double patenting, and insufficiency of the specification were unsuccessful.
October 20, 2014

Australian Federal Court Upholds Patentability of Isolated DNA Sequences, Parts Ways with Supreme Court of the United States

D’Arcy v Myriad Genetics Inc [2014] FCAFC 115 - The Federal Court of Australia Full Court upheld the validity of Australian Patent No. 686004, which claims an isolated sequence of DNA useful for cancer diagnosis, as qualifying as a “manner of manufacture” and thus patentable subject matter pursuant to section 6 of the Statute of Monopolies.
October 18, 2014

Federal Court Holds Failure to Disclose Public Servant Status in Patent Application is an Untrue Material Allegation

Louis Brown et al v HMTQ et al, 2014 FC 831 - Canada successfully argued that the inventor made an untrue material allegation for having not indicated in the patent application that he was a public servant, but whether this would invalidate the patent was considered a genuine issue requiring a trial.
October 17, 2014

Federal Court Invalidates Patent on Infomercial Garden Hose

E Mishan & Sons, Inc v Supertek Canada Inc, 2014 FC 326 - The Federal Court dismissed an infringement claim made by the plaintiffs regarding the sale of self-expanding garden hoses by the defendants because the infringed claims were declared invalid for obviousness.
October 16, 2014

Federal Court Upholds Re-examination Board’s Decision Invalidating Waste Heat Recycling Claims

Newco Tank Corp v Canada (Attorney General), 2014 FC 287 - The person of ordinary skill in the art was determined to have background knowledge that there was a heat inefficiency problem that the invention seeks to address. The only evidence for this proposition is that it was discussed under the “SUMMARY OF THE INVENTION” heading of the patent.
August 12, 2014

Wrongfully-obtained Patents One Step Closer to Creating Potential Class Action Liability

Low v Pfizer Canada Inc, 2014 BCSC 1469 - This decision brings one step closer the possibility of wide-ranging, class-based, third-party liability created by patents that are found to be “wrongfully obtained”.
July 31, 2014

Federal Court Prohibited Issuance of a NOC for Generic Version of Lumigan

Allergan Inc v Apotex Inc, 2014 FC 567 - In terms of claim construction, this case shows the tension between construing claims based solely on the wording of the claims versus peering beyond the wording of the claims to distill an underlying invention.
July 14, 2014

FCA Refuses to Stay Injunction against Janssen

Janssen Inc v Abbvie Corporation, 2014 FCA 176 - The Court held that Janssen has failed to establish unavoidable irreparable harm required to stay the injunction, and characterized the harm claimed by Janssen as “the sort of inconvenience suffered by any party when it must comply with an injunction".
July 3, 2014

US Supreme Court Tightens the Standard for Definiteness of Patent Claims

Nautilus Inc v Biosig Instruments Inc, No 13-369, 572 US ____ (2014) - On the matter of interpreting the meaning of electrodes in a "spaced relationship with each other", the US Supreme Court held that a patent is invalid for indefiniteness if its claims, read in light of the specification and the prosecution history, fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention and remanded the case to the Federal Circuit.
July 3, 2014

US Supreme Court Reaffirms that Induced Infringement Requires Direct Infringement

Limelight Networks Inc v Akamai, No 12–786, 572 US ____ (2014) - The US Supreme Court reaffirmed that induced infringement requires direct infringement.
June 20, 2014

Reciting a Generic Computer or Conventional Computer Implementation Not Sufficient to Render an Otherwise Abstract Idea Patent Eligible

Alice Corp v CLS Bank, No 13–298, 573 US ____ (2014) - The US Supreme Court rejected patent claims that “relate to a computerized scheme for mitigating ‘settlement risk’" for being drawn to the abstract idea of intermediated settlement. Merely requiring generic computer implementation fails to transform that abstract idea into a patent-eligible invention.
May 26, 2014

Federal Court Grants Motion for Bifurcating Determination of Start of Liability Period under s. 8 of the PM(NOC) Regulations

Apotex Inc v Pfizer Canada Inc, 2014 FC 159 - The Court confirmed that bifurcation of a PM(NOC) proceeding is not limited to liability/damages, and held that “[i]t is open to the Court to bifurcate any issue which will result in the saving of time, cost and judicial resources.” The issue need not be a threshold issue determinative of the proceedings.
April 15, 2014

Federal Court Dismisses Bell’s Motion to Disqualify the Law Firm of Bereskin and Parr in Patent Infringement Action

Mediatube Corp. and Northvu Inc v Bell Canada et al, 2014 FC 237 - The Court dismissed a motion to remove Bereskin & Parr as solicitors of record for Mediatube for a conflict of interest, finding that “[w]hile there may be some circumstances where related companies could be considered as one entity and one client, the circumstances in the present case do not lead to that conclusion.”
March 21, 2014

FCA Upholds Trial Court Ruling that Availability of Compensation under s. 8 of the NOC Regulations Is a Question of Fact

Sanofi-Aventis Canada Inc v Teva Canada Limited - 2014 FCA 69 - The Court stated that whether there can be recovery for unauthorized indications under section 8 of the PM(NOC) Regulations is a question of fact, and that the purpose of section 8 damages is to compensate generics for a delay caused by NOC Proceedings.
March 21, 2014

Quebec Court Holds Non-Agents May Draft Patents, But Must Disclose Their Inability to File and Prosecute and any Potential Patentability Issues

Kirouac-Couture c ERL Étude et Recherche Inc, 2014 QCCQ 1405 - The Court held that ERL’s failure to provide the relevant disclosure vitiates Couture’s consent to enter the contract for preparation of the patent application.
March 21, 2014

FCA Upholds Rejection of Sanofi’s Motion to Amend Its Statement of Defence

Sanofi-Aventis Canada Inc v Teva Canada Limited - 2014 FCA 65 - The Court dismissed Sanofi’s appeal to amend its statement of defence in a PM(NOC) proceeding. It is not sufficient that allowing the amendment would not be unjust. What is required is that any injustice to the other party is capable of being compensated by an award of costs and the interest of justice must be served.
March 10, 2014

FCA Dismisses Pfizer’s Appeal Challenging Admissibility and Weight of Apotex Expert’s Testimony

Pfizer Canada Inc v Apotex Inc, 2014 FCA 54 - The Court rejected Pfizer's argument that the trial judge did not properly apply the R. v. J.-L.J., 2000 SCC 51 case when assessing the admissibility of what Pfizer alleged were novel scientific theories put forth by Apotex’s expert.
March 10, 2014

Federal Court of Appeal Upholds Disqualification, But Refuses to Invalidate Cobalt’s Notice of Allegation

Valeant Canada LP v Canada (Health), 2014 FCA 50 - The Court dismissed an appeal from the Federal Court’s decision to grant Valeant’s motion to disqualify Cobalt’s in-house lawyer from any further involvement in the application before the Court on the ground that he could be presumed to have Valeant’s confidential information.
February 18, 2014

Federal Court Holds Valeant’s Prohibition Application Is Not Abuse of Process

Valeant Canada LP v. Cobalt Pharmaceuticals – 2013 FC 1254 Cobalt moved, pursuant to s. 6(5)(b) of the PM(NOC) Regulations, to dismiss as an abuse of […]
February 11, 2014

Federal Court Adopts a More Restrained Approach to Construing Promise of the Celebrex Patent

Pfizer Canada Inc. v. Mylan Pharmaceuticals ULC – 2014 FC 38 In this case Pfizer brought a prohibition application under the PM(NOC) Regulations to prevent the […]