Dedicating a patent can block a double patenting argument

Justice McVeigh has added new considerations when considering a double patenting argument in AbbVie v JAMP Pharma, 2023 FC 1520. The double-patenting discussion was made in the context of patent infringement and impeachment actions where AbbVie asserted JAMP’s SIMLANDI product (a biosimilar of AbbVie’s HUMIRA product) would infringe Canadian Patent Nos. 2,504,868 (the “868 Patent”)...
Read More

Permanent injunction declined in spite of infringement

Justice McVeigh’s recent decision in AbbVie Corporation v JAMP Pharma is noteworthy because it is one of the few cases to refuse a permanent injunction notwithstanding a concession of infringement and a failed validity attack on a patent.  The decision was issued in the context of patent infringement and impeachment actions relating to JAMP’s SIMLANDI...
Read More

Anticipation test takes the middle ground

Justice McVeigh’s recent decision has addressed an area of debate within the jurisprudence and academic commentary regarding the proper legal test for anticipation in AbbVie v JAMP Pharma, 2023 FC 1520. Justice McVeigh’s decision was issued in the context of patent infringement and impeachment actions where AbbVie asserted that JAMP’s SIMLANDI product (a biosimilar of...
Read More

Can a party make invalidity arguments against dropped claims?

In NCS Multistage Inc. v Kobold Corporation, 2023 FC 1486 Justice McVeigh determined whether NCS could raise invalidity arguments against non-asserted claims of Kobold’s Canadian Patent No. 3,027,571. The 571 Patent claims a downhole tool that has a shock-absorbing sleeve. The underlying action T-1420-18 involves NCS and Kobold, two competitors who provide equipment for hydraulic...
Read More

Apotex receives divided success on its motion to amend on the eve of trial

With only a few days remaining before trial, Apotex brought a motion to amend its Further Amended Statement of Defence to include references to the parent application (the 574 Application) related to a divisional patent (the 851 Patent) originally pleaded in support of its Gillette Defence. In pleading its Gillette Defence, Apotex relied on the...
Read More

Not Trading Places: Federal Court Clarifies the Role of the Attorney General on Judicial Review Applications

The Federal Court recently clarified the role of the Attorney General of Canada (AGC) on applications for judicial review. The AGC has frequently participated as respondent on applications from international trade decisions under the Special Import Measures Act, generally opposing the application and arguing in support of the underlying tribunal decision.  A group of exporters...
Read More

No Entitlement to Punitive Damages for Infringing Compatible Products

Angelcare Canada Inc v Munchkin, Inc, 2023 FC 1111 deals with the Plaintiffs’ entitlement to remedies arising from a successful patent infringement action relating to diaper pail cassettes (2022 FC 507).  In the prior decision, the Federal Court found the Defendants’ cassettes and assemblies of cassettes and diaper pails had infringed the Plaintiffs’ patents. One...
Read More

Leave Granted to Amend Statement of Defence and Includes Bases of Invalidity not Contained in Notice of Allegation

In Boehringer Ingelheim (Canada) Ltd v JAMP Pharma Corporation, 2023 FC 1414, Associate Judge Cotter of the Federal Court granted JAMP’s motion for leave to serve and file an amended statement of defence. In the underlying proceeding under subsection 6(1) of the Patented Medicines (Notice of Compliance) Regulations, Boehringer asserts JAMP’s products would infringe or induce...
Read More

Associate Judge Allows Extension of Time to Complete Inter Partes Testing

In Gilead Sciences, Inc v JAMP Pharma Corporation, 2023 FC 1141, Associate Judge Crinson of the Federal Court granted a motion for an extension of time for inter partes testing brought by JAMP Pharma. The underlying two proceedings under subsection 6(1) of the Patented Medicines (Notice of Compliance) Regulations concern patents relating to the drug...
Read More

Federal Court of Appeal Strikes Down “Test” for Patentability of Computer-Implemented Inventions

Attorney General of Canada v Benjamin Moore & Co., 2023 FCA 168 concerned the appeal of Federal Court decision 2022 FC 923. The underlying Federal Court decision had set out binding instructions in the form of a test for CIPO to follow to when determining the patentability of computer-implemented inventions. The FCA allowed the Appeal...
Read More

But-For Result in Prohibition Proceeding Does Not Give Rise to Section 8 Claim for Damages

The Ontario Superior Court recently dismissed a claim for damages brought by Apotex under section 8 of the Patented Medicines (Notice of Compliance) Regulations. The Ontario Court held that the circumstances of Apotex’s claim did not entitle it to compensation, and further found that even if the circumstances had given rise to compensation, Apotex did...
Read More

Lack of Success is Not Evidence of Bias

Christopher Johnson, a self-represented Plaintiff, commenced a copyright infringement action in November 2021 against several defendants, including the Canadian Tennis Association (“Tennis Canada”). Madam Associate Judge Coughlan was appointed as case management judge. The action had stalled due to several “unnecessary and duplicative” motions brought by Mr. Johnson. Mr. Johnson brought a motion under Rule...
Read More

Infringers held accountable with the springboard profits and accounting for profits remedies

The SCC dismissed Nova Chemical’s appeal of Dow Chemicals’ accounting of profits and springboard profits award in an 8:1 (Côté J. dissenting) split and provided a guide for quantifying the remedy as well as further explaining what a non-infringing option entails.  The SCC also confirmed that spring-boarding profits may be awarded as part of an...
Read More

Strike Two: CIPO’s Problem Has a Solution

The Canadian Intellectual Property Office has taken another hit in Benjamin Moore in which two decisions of the Commissioner of Patents rejecting claims to computer-implemented inventions were successfully appealed. Benjamin Moore holds the line on a path set in 2020 when the Federal Court ruled that CIPO’s “problem-solution” approach to claim construction was the wrong...
Read More

An Expiring Patent Will Get Its Day in Court under Section 6 of the PM(NOC) Regulations

Should an action under section 6(1) of the Patented Medicines (Notice of Compliance) Regulations be rendered moot if the asserted patent will expire before the trial date and the 24-month mandatory stay? This was the issue before Justice O’Reilly, whom had to determine whether AstraZeneca’s was entitled to a declaration that its infringement action was...
Read More

Birds of a Feather Will Not Flock Together: Section 6.02 of PM(NOC) Regulations Prohibits Trials of Common Issues Absent Consent

The Federal Court of Appeal set aside a Federal Court order requiring a trial of common issues from two separate actions initiated by Bayer against four pharmaceutical generics companies. It found that a trial of common issues cannot be ordered under section 6.02 of the PM(NOC) Regulations without consent of all implicated parties. Bayer, the...
Read More

Degree of Care is a Relevant Consideration in Assessing Javelo Likelihood of Confusion

On April 20, 2020, the Federal Court of Appeal dismissed Clorox’s appeal from a decision of Justice Grammond of the Federal Court upholding the Trademarks Opposition Board’s decision rejecting Clorox’s opposition to two trademark applications filed by Chloretec. In January 2012, Chloretec filed trademark applications to register the trademark JAVELO and the design trademark on...
Read More

Federal Court Dismisses Action for Patent Infringement by Summary Trial

In February 2018, the Plaintiffs, ViiV Healthcare Company, Shionogi & Co Ltd, and ViiV Healthcare ULC filed a lawsuit against the Defendant, Gilead Sciences Canada, Inc for infringement of Canadian Patent No. 2,606,282  by making, using, selling, or offering to sell bictegravir as a component in its BIKTARVY product. Gilead denied all allegations of infringement,...
Read More

Pass the Scalpel: “Surgical” Reply Report Responding to New Evidence Held Admissible

On the eve of trial, the Federal Court accepted filing of a reply report responding to new evidence but did not allow filing of a sur-reply report deemed confirmatory in nature. This decision further entrenches the principles governing admissibility of reply evidence recently examined in Teva paliperidone and highlights the evolving Hryniak-inspired “litigation culture change” in the...
Read More
1 2 3 7