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Archive for the ‘Intellectual Property’ Columns

Summary Determination of Claim Construction

After a long wait, a couple of cases have used summary determination to decide issues of claim construction in patent infringement proceedings. In both cases, the claim construction resolution was determinative of non-infringement and the plaintiff’s case was dismissed. The decisions are subject to appeal.

In patent cases, determining the meaning of the words used in the claims of the patent is a key prerequisite for determining patent validity and infringement. Typically, expert evidence is introduced on the qualities of the skilled person appropriate for the patent at issue, the common general knowledge of this skilled person, and how the . . . [more]

Posted in: Intellectual Property

Privacy and Artificial Intelligence

The increased utilization of artificial intelligence (AI) has been identified as giving rise to numerous privacy concerns.[1] For illustration, “the data protection principle of limiting collection may be incompatible with the basic functionality of AI systems”. AI systems generally rely on large amounts of personal data to train and test algorithms, and limiting some of the data could lead to reduced quality and utility of the output.[2]

Another issue is that organizations using AI for advanced data analytics may not know ahead of time how the information that is processed by an AI system will be used or . . . [more]

Posted in: Intellectual Property

Findability of Prior Art

A couple of recent decisions have provided some clarity to what prior art can be relied on to show that a patent is obvious. One of the cornerstones of patent law is that a patent must be for an invention that is ‘inventive’ or ‘non-obvious’. This leads to the next question, “inventive” compared to what?

A car with a six-cylinder internal combustion engine may be inventive if all you have is a bicycle but may not be inventive if you already have a car with a four-cylinder internal combustion engine.

The Patent Act, in section 28.3, states:


. . . [more]
Posted in: Intellectual Property

Modern Patent Interpretation Reviewed

In Seedlings Life Science Ventures, LLC v. Pfizer Canada ULC, 2020 FC 1, Mr. Justice Sébastien Grammond presided over a patent infringement action in the Federal Court of Canada. The review is a helpful reminder of the modern approach to interpret patent claims.

Seedlings Life Science Ventures, LLC (Seedlings) is an early-stage health-care research and product development company. It alleges that Pfizer Canada ULC (Pfizer), infringes Seedings patent by selling in Canada an auto-injector commonly known as the EpiPen. While, at first sight, the EpiPen and Seedlings’s invention do not look alike, Seedlings argues that the EpiPen infringes certain . . . [more]

Posted in: Intellectual Property

Model Protective Order for Federal Court

The Federal Court is trying to clarify the scope and typical terms of confidentiality and protective orders for use in the court. Keeping confidential information can be a key consideration in intellectual property proceedings where the adverse party is often a direct competitor and the subject matter of the dispute touches on trade secrets and business plans.

Since my previous column on this subject (see Protecting Your Confidential Intellectual Property Information in Court, May 2017), a split between various Prothonotaries and Judges led to significant uncertainty as to the preferred options for keeping information confidential in court proceedings.

In . . . [more]

Posted in: Intellectual Property

CRTC Enforces CASL in Case of Malware Distribution

While there has been controversy about the enforcement of the electronic communication provisions of Canada’s Anti-Spam Law (CASL) due to the ambiguities of the complex scheme, there is widespread support for the anti-malware provisions. The Canadian Radio-television and Telecommunications Commission (CRTC) recently enforced those anti-malware provisions against .Mr. Revesz and Mr. Griebel, the partners of Orcus Technologies, pursuant to section 22 of CASL, for a total penalty of $115,000.

The defendants have 30 days to file representations with the CRTC or pay the penalty.

The CRTC alleges that Orcus Technologies developed, distributed, promoted, and sold a Remote Administration Tool called . . . [more]

Posted in: Intellectual Property

Federal Court Issues Site Blocking Order for ISPs

In Bell Media Inc. v. GoldTV.Biz, 2019 FC 1432, the Federal Court dealt with a novel motion in Canada for a “site-blocking order”. The broadcasting company plaintiffs sought an interlocutory mandatory injunction against the innocent third party Internet Service Providers [ISPs] seeking to compel the ISPs “to take steps to block their customers from accessing websites and Internet services operated by the anonymous Defendant”.

The plaintiffs allege that the defendants are infringing copyright by operating unauthorized subscription services that provide subscribers access to the plaintiff’s programming content over the Internet.

The innocent third party respondents are the major Canadian . . . [more]

Posted in: Intellectual Property

Keatley Surveying v. Teranet: It’s Time for a Blanket Statutory Obligation Exception

In Keatley Surveying, the small issue of whether a statutory regime of land titles registration involving the filing and dissemination of land surveys was addressed through a much larger question of copyright ownership of those land surveys. Ownership in the copyright of land surveys became the basis for maintaining the integrity of a land titles system when it could have been addressed through the statutory obligation exception in the Copyright Act.

Teranet is a statutorily empowered third party manager of Ontario’s land registry system. Land surveys registered on title are scanned and digitized, then made available to the . . . [more]

Posted in: Intellectual Property

Transborder Data Flow Consent Standard Is Reaffirmed

The Office of the Privacy Commissioner of Canada (OPC)’s report, Personal Information Protection and Electronic Documents Act (PIPEDA) Report of Findings #2019-001, issued April 9, 2019, into the Equifax hack, created controversy as the report suggested that the existing law on the level of consent necessary for Canadian organizations to engage in transborder processing of personal data had changed and that the OPC was now asserting that a new standard of express consent was required.

In para. 111 of the report, the OPC stated “we acknowledge that in previous guidance our Office has characterized transfers for processing as a ‘use’ . . . [more]

Posted in: Intellectual Property

New Era in Canadian Trademarks

On June 17, 2019, Canada overhauled its trademark regime, allowing Canada to accede to three treaties standardizing our trademark system with some our of global trade partners. The Singapore Treaty, the Madrid Protocol and the Nice Agreement, relate to categorizing trademarks by the type of goods and services and allow a process akin to a ‘global trademark’.

The changes, made through amendments to the Trademarks Act (including renaming it from the Trade-marks Act to the Trademarks Act), and accompanying Trademark Regulations, came into force June 17, 2019.

One of the more controversial changes was to remove the requirement that a . . . [more]

Posted in: Intellectual Property

It’s Time to Stop Copyright’s Violation of the U. S. Constitution

The jurisdiction in which it makes the most sense to reform copyright law so that it supports, rather than deters, access to research and scholarship is the United States. After all, the country’s Constitution empowers Congress “To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.” The only other thing the Constitution seeks to “promote” is the country’s “lasting Welfare.”

Yet U.S. copyright law today violates this constitutional imperative. The evidence that copyright law is not promoting the progress of science comes from . . . [more]

Posted in: Intellectual Property, Legal Publishing

Intellectual Property Licenses in Bankruptcy Scenarios

Intellectual property licenses will have additional certainty regarding their status when recent amendments to the Bankruptcy and Insolvency Act and Companies’ Creditors Arrangement Act come into force. Licensees may preserve rights under intellectual property license agreements, as long as they continue to perform their obligations even if the licensor goes through insolvency, bankruptcy or arrangement in various circumstances.

These changes were included in Bill C-86 Budget Implementation Act that received Royal Assent in December, 2018. These changes add to changes that were implemented in 2009 that also addressed intellectual property license agreements.

The 2009 amendments (s. 65.11(7) of the . . . [more]

Posted in: Intellectual Property