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Archive for the ‘Intellectual Property’ Columns

Quebec Court Warns Against “Fishing Expeditions” – Denies U.S. Letters Rogatory (“LR”) Request in Contentious Omega-3 U.S. Patent Litigation

The Defendant in a US patent litigation matter (Aker Biomarine AS, (“Aker”)) recently fell short of meeting the threshold requirements for obtaining permission to conduct a deposition and obtain documents from third parties in Quebec (the University of Sherbrooke and a Quebec Research Center). The US Plaintiff/patentee Neptune Technologies & Bioressources Inc. (“Neptune”) successfully opposed the overly broad Letters Rogatory Request. This recent case provides a clear illustration for US clients of what can easily go wrong when LR Requests are not initially vetted by Canadian counsel – before the US court issues the LR. In a broader context, this . . . [more]

Posted in: Intellectual Property

Punitive Damages and Patent Cases

The patent infringement action between Bell Helicopters and Eurocopter has been a topic of discussion among patent lawyers since the trial decision was released in January 2012. The Federal Court of Appeal recently dismissed the appeal and cross-appeal (Bell Helicopter Textron Canada Limitée v. Eurocopter, 2013 FCA 219) in a lengthy decision covering many hot topics in Canadian patent law.

While the decision has a number of interesting issues, including utility and sound prediction, I will focus on the award of punitive damages.

In general, punitive damages may be awarded when the defendant’s conduct is “in exceptional . . . [more]

Posted in: Intellectual Property

Interesting Example of the Long Shadow of the SCC’s Findings in a “Summary” NOC Case on the Court of Appeal’s Upholding of Sanofi’s Plavix Patent

The FCA has recently adopted an interventionist approach in the area of patent validity in Sanofi-Aventis v Apotex 2013 FCA 186 (“Sanofi 2013”). The FCA overturned the trial court’s findings that Sanofi’s clopidogrel patent was invalid for inutility and obviousness. First, the trial judge was found to have erred in law in his construction of the patent by “reading in” a Promise that the FCA says was not there. Secondly, the trial judge appears to have erred in failing to properly apply the facts to the Sanofi SCC legal test for obviousness, and asked the critical wrong question in determining . . . [more]

Posted in: Intellectual Property

Profits vs. Damages – Non-Infringing Alternatives

Only rarely do patent cases proceed to trial and even more rarely are contested judgments on remedies issued. A recent Federal Court decision on damages considered whether non-infringing alternatives to the defendant’s infringing activities should be considered.

In most patent cases, the quantification of damages are bifurcated, or deferred until after a trial decision on validity and infringement. Only if the patent is found valid and infringed, will the remedies need to be considered. Unfortunately, for those interested in following decisions on patent remedies, in most cases the patents are found invalid, not infringed or a settlement is reached prior . . . [more]

Posted in: Intellectual Property

Privacy of Employee Information in Employer’s IT Tools: BC Appeals Court Applies Cole

The issue of the degree of protection for the privacy for personal information of an employee stored on devices (usually information technology tools such as laptops, smart phones, etc.) of the employer has been considered by the Courts. The Supreme Court in R. v. Cole[i] addressed such a case. In R. v. McNeice[ii], the British Columbia Court of Appeals had the occasion to add their own thoughts in a similar case in which they applied the Cole principles. McNeice further illuminates the considerations in such cases.

It is noteworthy that the examination of the protection for the . . . [more]

Posted in: Intellectual Property

Novartis Can “Fix” the Sufficiency of Its Patent 10 Years After Filing

A recent decision of the Federal Court in Novartis v Teva 2013 FC 283 (“Novartis”) [under appeal A-123-13] has established that the relevant date for patent sufficiency is not until the publication date. Novartis may highlight an inconsistency in validity analysis. In some ways the notional “person skilled in the art” (who by definition is not inventive) is expected to know more, and earlier, than the inventors themselves (who are obviously inventive).

Narrowing of claims to one compound renders patent sufficient

In Novartis, Mr. Justice Hughes held that Novartis’ compound patent (CA 1,338,937[i]) was sufficient . . . [more]

Posted in: Intellectual Property

Savour the Flavor of Victory: FLAVOR SAVER Decision Confirms Trade-Mark Use When Flyers Advertising Goods Are Used in Online Ordering

The Internet has changed how distributors and consumers purchase goods, and those who purchase goods for multi-level marketing from companies such as Tupperware are no exception. A recent decision Federal Court decision involving the manufacturer of Tupperware, Dart Industries Inc. v. Baker & McKenzie LLP, considered whether trade-mark use occurred when goods are purchased online using flyers. The Dart decision also provides important lessons on preparing trade-mark use evidence, especially from goods and services are purchased online.


Dart owns Canadian trade-mark registration No. TMA145,567 FLAVOR SAVER for plastic household containers and lids. Baker& McKenzie initiated proceedings under section . . . [more]

Posted in: Intellectual Property

Patent Trolls in Canada?

Recently, there has been a renewed discussion about Patent Assertion Entities, also known as non-practicing entitles (NPEs), or colloquially, patent trolls. In early June, President Obama announced new initiatives to combat what he called, Patent Assertion Entities, which “don’t actually produce anything themselves,” and instead develop a business model “to essentially leverage and hijack somebody else’s idea and see if they can extort some money out of them.”

The U.S. president made a number of recommendations to congress for legislative changes and announced executive actions to address these Patent Assertion Entities. The recommendations included legislative changes to permit judges to . . . [more]

Posted in: Intellectual Property

YouTube (Part III) Notice and Take Down Safe Harbor Under the DMCA

A driving force for the development of the internet was to provide certainty for internet service organizations on the liability exposure they may have for acts of third parties on their internet sites.

Given that many Canadian internet web sites do receive U.S. visitors and many also utilize a DMCA safe harbor provision, understanding the scope of protection that the safe harbor provides can be important to Canadians. The ongoing legal saga in Viacom International Inc., et al. v. YouTube, Inc., YouTube, LLC, and Google, Inc., 07 Civ. 2103 illuminates the scope of the DMCA safe harbor.

The DMCA . . . [more]

Posted in: Intellectual Property

Patentable Subject Matter – New Notices From Canadian Patent Office, Anticipated Issues for the Court?

The Canadian Intellectual Property Office (“CIPO”) has recently published two notices for patent examiners relating to patent interpretation[i], and in particular computer-related/business method type patents. These notices were released following a 2011 Federal Court of Appeal decision – CIPO v Amazon, 2011 FCA 328 (“Amazon”). In Amazon the FCA instructed the patent office on how to evaluate a patent application to determine the threshold issue of whether it covers patentable subject matter. The FCA held that patent claims must first be purposively construed before one can evaluate whether the claimed subject matter covers acceptable (ie. patentable) subject matter. . . . [more]

Posted in: Intellectual Property

Grey Law on Grey Books

Last month, the United States Supreme Court held in Kirtsaeng v. John Wiley & Sons that it was non-infringing of copyright to import books into the United States that had been legally purchased elsewhere. The decision upheld the “first sale doctrine,” a concept that says once a publisher sells a copy of a work to a member of the public, the buyer is free to do sell or dispose of the copy as they wish. In Canada, the situation is less clear.

The defendant in the United States proceeding, Mr. Kirtsaeng was a student at Cornell University who bought foreign . . . [more]

Posted in: Intellectual Property

Access to Server Data for Foreign Criminal Investigative Purposes

The impacts of privacy sensitivities continue to expand and affect all manner of technology and other transactions transactions. 

Canada and the United States have a long healthy and constructive relationship in providing assistance to the law enforcement agencies of each country in the investigation of cross boarder criminal activity. Canada has, with the United States and with other countries a series of mutual cooperation arrangements (including Mutual Law Assistance Treaties or MLATs) in place between Canadian and U.S. law enforcement by which criminal and terrorist conduct can be investigated and relevant information exchanged.

Such international cooperation is routine and rarely . . . [more]

Posted in: Intellectual Property