NOC Cases Patent Cases Trademark Cases Copyright Cases Industry News The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
The Federal Court finds two Generic Company's
Allegations to be Unjustified
Allergan Inc. v. Cobalt Pharmaceuticals
Company, 2014 FC 566
Allergan Inc. v. Apotex Inc., 2014 FC 567
Drug: Lumigran RC
Two PM(NOC) decisions relating to the same patent were recently
released by the Federal Court. In both cases, the applications were
allowed, prohibiting the Minister from issuing an NOC to both
Cobalt and Apotex for their generic versions of Allergan's
drug. The Court's reasons are substantially similar between the
two decisions.
The Court described the '691 Patent in issue as relating to
eye drops used in the treatment of glaucoma and ocular
hypertension. There was an older version of the drug that had
already been marketed to patients. This new version of the drug
performed as well as the old but with fewer side effects, even
though the amount of active drug was decreased.
The Court found that a person of skill in the art would have
expected that reducing the active drug would also reduce efficacy.
It was found that the increased penetration of active drug
resulting from the new combination of substances was not suggested
in the prior art. Instead, the Court held that the discovery of a
new combination having the efficacy of the old was only found
through experimentation and inventive steps, such as the
experimental trials that used various combinations of ingredients.
The result was found to not be self-evident, and not obvious to
try.
The patent was further found to be soundly predicted as the data
in the patent set out the factual basis, and the sound line of
reading was implicit in the data itself. Lastly, it was found that
the later patent was not anticipated by the patent for the earlier
version of the drug, even though it fell within the scope of the
earlier patent. This was because nothing in the earlier patent
would enable a skilled person to arrive at the new invention.
Court Confirms Interim Injunction as an Interlocutory
Injunction to Protect Applicant's Trade Secrets
Enviro Trace Ltd. v. Sheichuk et al., 2014 ABQB 381
The Plaintiff asked the Court to confirm an interlocutory
injunction, and related relief, previously granted on notice
against the Defendants. The Court granted the application, and the
interim, interim injunction was confirmed as an interlocutory
injunction.
The Plaintiff (Applicant) asked only for an order preventing the
Defendants (Respondents) from using the Applicant's trade
secrets and confidential information, rather than one which
prevents them from doing business. The Court noted that the
proposed order would "merely be a truism, articulating
existing law", which is known as a quia timet
injunction.
The Applicant established that it was not premature for the Court
to grant the injunction requested. In the Court's view, the
harm – or disclosure of its trade secret – is great. As
to the applicable standard, the Court stated that because the
underlying facts are still very much in dispute, the higher
standard (i.e. requiring the Applicant to establish a strong prima
facie case) does not come into play. Rather, the Court said it
should examine (in the context of the balance of convenience part
of the three-prong test) the strength of the Applicant's case.
Therefore, the Court held that the appropriate standard to be
applied in this case was the "serious issue to be tried"
standard – a relatively low standard, and one that the Court
found the Applicant had met.
The Court noted that a trade secret has a proprietary component,
and that it would be illogical for a court to require proof of
irreparable harm when something is stolen from another (i.e.
"the theft speaks for itself"). Nevertheless, the Court
held it is necessary to prove irreparable harm as a prerequisite to
the granting of the injunction requested here. In that regard, the
Court concluded that the Applicant proved that it would suffer
irreparable harm since the loss of a trade secret is harm which
cannot be cured by money. The Court further found that the
Plaintiff would suffer the greater harm from the refusal of an
interlocutory injunction, particularly since the Plaintiff had not
asked the Defendants to cease business; it merely asked the
Defendants not to use any of the Plaintiff's trade secrets.
Lastly, the Court held that, overall, the Applicant has established
that it is fair and equitable, or just, to issue the requested
interlocutory injunction. It was found that the trade secret in
question is more than a "nothing very special" kind of
trade secret, and that the Applicant has not delayed in asserting
its rights.
In terms of collateral relief, the Court stated that it is
"self-evident that the respondents should return to the
applicant any trade secrets and confidential information"
which belong to the Applicant. Further, the Court found it
appropriate to require the Respondents to provide an accounting for
all work done by the Respondents for the clients of the Applicant,
where there is evidence that, even before leaving the employ of the
Plaintiff, some of the Defendants were making overtures to the
Plaintiff's clients.
Therefore, the application was granted, and the interim, interim
injunction was confirmed as an interlocutory injunction.
FCA Refuses to Stay Injunction Order
Janssen Inc. v. Abbvie Corporation, 2014 FCA 176
Drug: ustekinumab (STELARA®)
Janssen and Abbvie were involved in a patent infringement action.
Abbvie was successful in its claim for infringement, and the patent
was held to be valid (decision here; summary here). Janssen then moved to stay the remedial
phase of the action; which was refused (decision here; summary here). Abbvie then obtained an injunction
against Janssen (decision here; summary here). The decision on the merits is still
under appeal. By this motion, Janssen sought to stay the
injunction, and consolidate a number of related appeals.
The Court of Appeal (FCA) held that since most of the paper has
already been filed, the appropriate remedy is to have the appeals
heard together. The Court also set the appeals down for hearing in
October.
With respect to the request to stay the injunction, the FCA
refused to grant the stay, holding that Janssen has failed to
establish unavoidable irreparable harm. The FCA held that
administrative inconveniences such as training personnel and
changing communications cannot support suspending the injunction
without more. Furthermore, the FCA was not persuaded by
Janssen's concern regarding its reputation with doctors who
prescribe STELARA®. Finally, the FCA held that if
there are ambiguities in the terms of the injunction, the Federal
Court is an adequate forum for that relief. The FCA also held that
a party moving to suspend an injunction must show it creates
unusual or abnormal burdens, uncertainties and risks, and here that
evidence is missing.
Patent Held Invalid for Not Meeting Promise of Improved
Therapeutic Profile
AstraZeneca Canada Inc. v. Apotex Inc., 2014 FC 638
Drug: esomeprazole
Apotex was successful in the previous NOC Proceeding. It came to
market with an esomeprazole product. AstraZeneca sued for patent
infringement and Apotex counterclaimed with allegations of
invalidity. The Court held that the patent at issue was
invalid.
The Court initially considered Apotex' allegation that
AstraZeneca Canada lacked standing. However, this allegation was
dismissed as lacking credibility. The Court then considered issue
estoppel, as raised by Apotex, with respect to the validity of the
patent. The Court held that the doctrine of issue estoppel did not
apply as the evidentiary record was not shown to be sufficiently
similar. The Court then considered Apotex' allegations of abuse
of process; holding that shifting arguments as to the promise is
not abusive, but shifting factual positions is more problematic.
However, in the end, the Court accepted AstraZeneca's new
factual position regarding a limited motivation to investigate
enantiomers at the time. The Court then considered the grounds of
invalidity alleged by Apotex.
In considering the allegation of inutility, the Court held that
one must consider the patent as a whole, from the perspective of a
skilled person in relation to the science and information available
at the time of filing. The Court held that the promise, if there is
an explicit promise, must be related to how the patent will
ultimately be used. Thus, "stability against
racemization" was held not to be a promise in and of itself;
but, rather, an integral aspect of the utility of the drug as a
pharmaceutical in therapy.
In the patent, the statement at issue, in relation to the promise,
was: "It is desirable to obtain compounds with improved
pharmacokinetic and metabolic properties which will give an
improved therapeutic profile such as a lower degree of
interindividual variation. The present invention provides such
compounds..." (para 113). The Court held that the word
"will" in this phrase made it a promise. The Court held
that the limited data AstraZeneca had on three human livers and six
plasma re-analyses could not form the basis for a sound prediction
of utility with respect to an improved therapeutic profile, across
an entire patient population. Similarly, the Court held that
AstraZeneca did not have the factual basis to predict that the
enantiomer would have improved pharmacokinetic and metabolic
properties, as promised by the patent. Thus the patent was invalid
for inutility.
In considering the question of proper disclosure, the Court held
that the Supreme Court's decision in AZT, when combined with
its obiter remarks in Teva sildenafil overturn previous FCA cases.
Thus, "proper disclosure" of utility only applies to new
use patents, if it applies at all.
The Court also considered the allegations with respect to lack of
novelty and obviousness, but dismissed them both. In considering
obviousness, the Court merged its analysis regarding obviousness
and obvious to try, holding that the obvious to try inquiry
occasionally supplements the fourth step of the general obviousness
test, and this was one of those situations.
Amendment Relating to Punitive Damages
Allowed
Bauer Hockey Corp. v. Sport Maska Inc. dba
Reebok-CCM Hockey, 2014 FCA 158
Two appeals were consolidated in this decision in a trade-mark
infringement action. The First Order struck reference to aggravated
and punitive damages from the Statement of Claim, and the Second
Order dismissed Bauer's motion to amend the Statement of Claim
to add again aggravated and punitive damages.
The Court of Appeal first considered the standard of review on
appeal, concluding that the decision relating to striking or
amending a pleading is discretionary and the Court of Appeal will
not interfere in the absence of an error of law, a misapprehension
of the facts, a failure to give appropriate weight to all relevant
factors or an obvious injustice. The Court then distinguished
between punitive damages, which are intended to punish the
defendant, and aggravated damages, which are still compensatory in
nature.
The Court of Appeal dismissed the appeal with respect to the First
Order, but granted the appeal with respect to the Second Order,
allowing an amendment to add punitive damages, but not aggravated
damages. The Court of Appeal found that punitive damages are not
limited to litigation misconduct, as was found by the Court.
TMOB Decision Overturned: New Evidence Shows Confusion
Unlikely
Micro Focus (IP) Limited v. Information Builders,
Inc., 2014 FC 632
This was an appeal by Micro Focus (IP) Limited ("Micro
Focus") of a decision of the Trade-marks Opposition Board
refusing its application for registration of the trade-mark MICRO
FOCUS in association with computer software and related services.
The TMOB found that there was a reasonable likelihood of confusion
between Micro Focus' mark and the respondent's FOCUS
mark.
Micro Focus submitted fresh evidence that its use of the MICRO
FOCUS mark would not be confusing. For instance, the evidence
showed that Micro Focus has used its mark continuously and
extensively since at least 1989, and that it has acquired
distinctiveness and a reputation in Canada. Further, there has been
no actual confusion between Micro Focus' mark and the
respondent's FOCUS mark.
The Court therefore decided the issue of confusion based on the
full evidentiary record before it. It found that the factors
considering inherent disctinctiveness, length of time in use, and
extent of public knowledge, and different wares, services and
channels of trade all favoured Micro Focus. It also found that
there was no evidence of any consumers actually being confused, and
pointed to the respondent's admission to that effect in an
earlier co-existence agreement between the parties as being
"significant" on the issue of confusion. In view of the
Court's findings, the Court found that Micro Focus met its
burden of showing that its MICRO FOCUS mark would likely not be
confusing with the respondent's mark. Accordingly, the Court
set aside the Board's conclusions that the respondent's
grounds of opposition under ss. 12(1)(d) and 16(2)(a) of the
Trade-marks Act were well-founded.
Therefore, the Court held that Micro Focus presented new evidence
that would have materially affected the Board's conclusion.
Ultimately, the Court felt that confusion would be unlikely and, as
such, allowed the appeal with costs. Micro Focus was permitted to
register its MICRO FOCUS mark.
TMOB Decision Overturned – When Sounded, Mark is
Deceptively Misdescriptive
Engineers Canada v. REM Chemicals Inc., 2014 FC 644
In an appeal from a decision of the Trade-marks Opposition Board,
the Court allowed the appeal and rejected the Respondent's
application for the trade-mark REM SURFACE ENGINEERING and Design.
At the Opposition, the TMOB rejected the application for the
trade-mark REM SURFACE ENGINEERING as deceptively misdescriptive.
The Applicant is the national federation of the provincial and
territorial associations of professional engineers. The Respondent
did not take part in the appeal.
The Court held that the TMOB erred in finding that the mark is not
deceptively misdescriptive, and in finding that it is distinctive
and registrable, holding that the TMOB did not properly apply s.
12(1)(b) of the Trade-Marks Act. The Court held that the
jurisprudence is clear that "when sounded" clearly
descriptive or deceptively misdescriptive words cannot be rendered
registrable by the addition of design features. The mark is a
combination of nondistinctive elements that includes the
deceptively misdescriptive words "SURFACE ENGINEERING".
Thus, it cannot be distinctive of any trader.
Court Dismisses Application for Interlocutory
Injunction
Geophysical Service Inc. v. Canada-Nova Scotia
Offshore Petroleum Board, 2014 FC 450
Geophysical Service Inc. (the "Applicant") brought a
motion for an interlocutory injunction requiring CNSOPB (the
"Respondent), to remove from its websites materials over which
the Applicant claims copyright pertaining to its work product from
seismic surveys it conducted. In 2013, the Respondent published on
its website and in paper format two calls for bids (the "Call
for Bids"). Among the information contained in the Call for
Bids were 12 figures created by the Respondent based on information
submitted to it by various operators, including the Applicant. The
Applicant contended that the publication of the figures on the
website and by other means infringed its copyright.
The Court considered the three-prong test from RJR-MacDonald. With
respect to whether the proceeding raises a "serious question
to be tried", the Court considered both (i) establishing
copyright and (ii) infringement. The Court held that from the
Applicant's point of view, there remains at least a serious
issue over copyright ownership given all the facts that otherwise
demonstrate the Applicant's ownership of the data and major
role in its collection and compilation. With respect to
infringement, the Court held that there appears to be no serious
issue about the alleged infringement by the Respondent, given the
lack of any objective similarity between the infringing work and
the copyrighted work, or at least a substantial part thereof.
With respect to the consideration of irreparable harm, the Court
noted that the figure at issue was the result of extensive
reworking and adaptation of materials, and accordingly, the
Applicant "must demonstrate by clear and non-speculative
evidence that it will suffer irreparable harm, not compensable in
damages, between [now] and the outcome of trial if the injunction
is not granted." The Court agreed with the Respondent that the
Applicant failed to provide such clear and non-speculative evidence
of damage. There was no statistical evidence or sales information
that would permit some suggestion of a correlation between
conducting the Call for Bids and the extent of licensing of the
Applicant's seismic data information. In that regard, the Court
held that the Applicant had not demonstrated that it would sustain
irreparable harm were the injunction not ordered.
With respect to the balance of convenience, the Applicant argued
that because no bids were received as part of the Call for Bids,
there is no inconvenience to the Respondent in being required to
remove the alleged infringing materials from the bid process. The
Respondents, on the other hand, argued that there would be
significant inconvenience if it was precluded from continuing to
use operators' seismic data as part of future calls for bids.
The Court concluded that the Applicant had made speculative and
largely unsupported potential loss claims and, as such, priority
must be given to attempts to achieve the Respondent's mandate
for the benefit of Canadians.
On these bases, the Court dismissed the Applicant's motion for
an interlocutory injunction, and awarded costs to the
Respondent.
Default Judgement Granted Against Defendant; Punitive
Damages Awarded
Mitchell Repair Information Company, LLC v. Wayne
Long, D.B.A. Future Technology Wizards, 2014 FC 562
The Plaintiff brought a motion for default judgement, as the
Defendant had not defended the action. The Court considered the
evidence filed on the motion, and declared that the Defendant was
served with the Statement of Claim, did not file a Statement of
Defence during the appropriate time period, and is in default. The
Court also ordered the Defendant to shut down or remove from public
viewing any and all advertisements, web pages, profiles and the
like which are maintained, used or in any way associated with the
Defendant in respect of the Plaintiff's intellectual
property.
The Court refused orders against third parties, as they had not
been served or otherwise put on notice of the requests for
injunctive orders as against them. The Court awarded the Plaintiff
statutory damages for copyright infringement, damages for
trade-mark infringement and punitive damages.
Successful Plaintiff's Appeal for More Damages
Dismissed; Plaintiff also Forced to pay Double Costs due to
Defendant's Rule 420 Offer to Settle
Leuthold v. Canadian Broadcasting
Corporation, 2014 FCA 173
Ms. Leuthold, a photo-journalist, owned the copyright in several
images taken during the terrorist attack on the World Trade Center
on September 11, 2001. She later made those photographs available
for licensing by news media and others, including the Canadian
Broadcasting Corporation (the "CBC"). The CBC
commissioned a documentary which made use of 5 of Ms.
Leuthold's images (the "images"). This decision is an
appeal of the Federal Court's decision (here), in which she was awarded damages and
other remedies against the CBC as a result of the admitted
infringement of her copyright in the images. Ms. Leuthold appealed
that decision because she was awarded approximately US $20,000 when
her claim was for $22 million.
There were four issues in this appeal: (1) whether the Newsworld
was covered by the "Stills" license entered into between
Ms. Leuthold and the CBC; (2) the number of acts of infringement
that occurred; (3) the proper measure of damages for the acts of
infringement; and (4) whether the Court should order an accounting
of profits for the cable companies which were generated by the
infringing broadcasts.
The "Stills" license stated that the CBC had the right
to broadcast the Stills on Canadian television "for one
broadcast on CBC's Network & Regional TV stations." It
was found that Newsworld is a separate entity from the CBC for
regulatory purposes. While the Court of Appeal did not accept the
Trial Judge's reasoning to the extent that conclusions were
drawn on the basis of what Ms. Leuthold failed to exclude from the
Stills license (i.e. the CBC acquired only those rights which were
circumscribed by the Stills license), no rights were acquired by
the CBC by virtue of Ms. Leuthold's failure to exclude
Newsworld from the grant of a license. The question, the Court of
Appeal noted, was whether Ms. Leuthold included Newsworld in the
grant of rights found in the Stills license. The Court of Appeal,
while acknowledging the Trial Judge's error with respect to the
interpretation of the Stills license, found the Trial Judge's
conclusion reasonable. As a result, the Court of Appeal held that
the broadcast of the images on Newsworld was not an act of
infringement of Ms. Leuthold's copyright.
With respect to the number of acts of infringement, Ms.
Leuthold's calculation of damages was entirely a function of
the large number of distinct acts of infringement which she saw in
each broadcast of the documentary. While the Court of Appeal noted
there was "some basis" for this approach, it ultimately
disagreed with her approach and held that "there is one act of
infringement whether the work is communicated to the public via one
BDU or via hundreds of them." The Court of Appeal stated that
this is consistent with the goal of technological neutrality
articulated by the Supreme Court of Canada in ESA v. SOCAN. Therefore, in view of paragraph
2.4(1)(c) of the Copyright Act, the Court of Appeal held that the
six transmissions constituted six acts of infringement, as found by
the Trial Judge.
The Trial Judge concluded the starting point for the calculation
of damages was the price which would have been asked for broadcast
licenses, had they been sought in advance of the infringing
broadcasts. The Trial Judge set the quantum of damages for each
infringement at US $3,200 for each of the six unauthorized
broadcasts, which was accepted and adopted by Ms. Leuthold on
appeal. However, since Ms. Leuthold's calculation of the number
of infringing acts failed, the Court of Appeal upheld the Trial
Judge's decision in this regard, and Ms. Leuthold's
argument on the measure and amount of damages also failed.
On the issue of accounting of profits from the BDUs, the Court of
Appeal noted that Ms. Leuthold only asked for an accounting of
profits from the CBC, not the BDUs. Further, the Court of Appeal
stated that BDUs are not party to this litigation and, as such, it
has no jurisdiction to make an order against the BDUs, nor was it
open to Ms. Leuthold, on appeal, to seek a remedy which she did not
seek in the Federal Court. This ground of appeal also failed.
Therefore, the appeal was dismissed with costs.
At trial, despite the fact that Ms. Leuthold was the successful
plaintiff, she was ordered to pay the CBC double costs
(approximately $80,000) because she recovered less than the amount
of the CBC's Rule 420 offer to settle. Ms. Leuthold appealed
that costs order, which is the subject of the appeal in Leuthold v.
Canadian Broadcasting Corporation, 2014 FCA 174. In that appeal, the Court of
Appeal reiterated that the CBC's offer (which was $37,500,
slightly higher than the ultimate damages award of $19,200 at
trial) met the formal requirements of Rule 420. The Court of Appeal
found that the Trial Judge did not act on a wrong principle, nor
was his decision clearly wrong. Therefore, Ms. Leuthold's
appeal as to costs was also dismissed.
Health Canada has opened a Consultation regarding Plain Language Labelling. It is open until
September 2, 2014.
Health Canada has opened a Consultation on the Draft Guidance Document: Submissions Relying on
Third-Party Data [Literature and Market Experience]. It is open
until September 13, 2014.
Health Canada has published a Guidance Document - Submission and Information
Requirements for Extraordinary Use New Drugs (EUNDs).
Health Canada has published a Policy on Management of product licence applications for
natural health products.
CIPO announced that it has changed the agent
requirement for applicants applying for an international
application at CIPO as the receiving office. As of July 2, 2014, an
agent will no longer be required to file an international
application for any applicant, regardless if they are inventors or
not. This change brings CIPO in line with many other receiving
offices, such as the USPTO.
ARTICLE
11 July 2014
The Federal Court Finds Two Generic Company's Allegations To Be Unjustified (Intellectual Property Weekly Abstracts Bulletin – Week Of July 7, 2014)
Two PM(NOC) decisions relating to the same patent were recently released by the Federal Court