Canada: Intellectual Property Weekly Abstracts Bulletin - Week of March 28, 2011

Last Updated: March 31 2011
Most Read Contributor in Canada, September 2016

Edited by Chantal Saunders and Beverley Moore


Motions Judge Dismisses Appeal from Prothonotary on Motion to Compel
Apotex v. sanofi
Drug: clopidogrel

In the underlying case, Apotex has sued to impeach sanofi's patent and sanofi and BMS have sued Apotex for infringement. The within motion is an appeal of an order refusing to compel sanofi to answer certain questions on discovery. The Court dismissed Apotex' appeal.

The Court considered the standard of review as well as what can be considered relevant in the context of discovery. The Prothonotary had determined that most of the questions at issue were overbroad and that certain others were otherwise irrelevant and the Judge on appeal concurred. The Prothonotary had also considered proportionality in her rulings and the Judge on appeal accepted those rulings.

Court of Appeal Grants Stay of Permanent Injunction in Infringement Case
Phostech Lithium Inc. v. Valence Technology, Inc.

The Court of Appeal granted a stay of the Order of Justice Gauthier, where an injunction issued following a finding that the patent at issue was valid and infringed. The decision is summarized here.

The Court of Appeal found that the appeal on construction is not frivolous. Furthermore, the Court of Appeal held that Phostech would suffer irreparable harm from the loss of business and from the loss of key components of the business namely, key personnel, scarce suppliers and customers whose time requirements are time sensitive. Thus, the balance of convenience favoured Phostech as the only inconvenience to Valence would be a longer period with respect to which it would be entitled to a monetary remedy.

Trial Division Upholds Decision Striking Statement of Claim
Eli Lilly Canada Inc. et al. v. Nu-Pharm Inc.
Drug: olanzapine

In the decision below, the Prothonotary struck the plaintiff's statement of claim for patent infringement. The Court upheld that decision.

The Court held that it should review the issue de novo. The Court held that a Statement of Claim for patent infringement should clearly show the facts defining the right as belonging to the plaintiff and the facts which constitute an encroachment by the defendant on that right, and that the latter were missing as nothing was pleaded beyond the acts that specifically fall within the regulatory exemption of section 55.2(1).


Court of Appeal Upholds Prohibition Order
Pharmascience Inc. v. Pfizer Canada
Drug: latanoprost

In the underlying case, Pfizer was successful in obtaining a Prohibition Order against Pharmascience, prohibiting it from coming to market with a generic latanoprost product. The decision is summarized here. The appeal alleged that the Application's Judge erred in construction, in her assessment of anticipation, in her findings regarding utility, in her application of the test for sound prediction and in her findings of overbreadth.

The Court of Appeal dismissed all of the arguments made by Pharmascience including the novel argument put forth on the issue of overbreadth, that the claims must mirror the disclosure of the patent. The Court of Appeal indicated that no authority has been cited for this proposition. The Court further held that the claims must read fairly on what has been disclosed and illustrated in the specification, and that a claim will be considered overbroad only if it asserts a right of exclusive property and something which the inventor did not actually invent or disclose.


Court Makes Finding of Contempt in Copyright Case
Setanta Sports Canada Limited v. 1053007 Ontario Inc.

In December 2009, Setanta had obtained default judgment and a permanent injunction resulting from a copyright infringement suit against the defendants. The plaintiff served a copy of the default judgment and a permanent injunction on the defendants and obtained at Writ of Seizure and Sale.

When the plaintiffs tried to enforce the Writ of Seizure and Sale, they obtained just over $3000.00. However, they also received a call a week later from a new manager of the bar. In addition, the business operated by the Ontario company was then transferred to be operated by a different numbered Canadian corporation.

The plaintiffs brought a motion for contempt of court and provided live testimony at the motion. The Court held that the defendants had breached the Injuction Order in an open and flagrant manner and that the purported transfer of ownership to a new numbered company was effected to thwart enforcement of that Order. The evidence required to prove contempt is equivalent to a criminal case. However, intent is not an element that needs to be proven. Thus, the defendants were found in contempt.


Health Canada has given notice of a Proposal to Eliminate the Level II Notifiable Change Category though a Phased Approach. A summary of the consultation document is posted here. The website also provides an email address whereby users can obtain a full electronic copy of the Draft Guidance. Comments are requested by April 22, 2011.

Health Canada has posted that new regulations will come into effect April 1, and will be posted on the Canada Gazette website as of April 13, 2011 regarding Fees in Respect of Human Drugs and Medical Devices.

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