Canada: Intellectual Property Weekly Abstracts Bulletin - Week Of November 28, 2011

Last Updated: December 6 2011
Most Read Contributor in Canada, November 2017

Edited by Chantal Saunders and Beverley Moore


Motion for Additional Rebuttal Witnesses in Re-opened Trial Denied
Varco Canada Limited v. Pason Systems Corp.

The Defendants brought a motion seeking to call rebuttal witnesses in a trial that has been re-opened to allow evidence that may contradict the evidence given at trial. The Court dismissed the motion, finding it to be premature on the basis that additional evidence must be relevant to the specific issue for which the trial was re-opened, which is to allow the corrected evidence and testimony. It is not clear what, if any, additional evidence will be relevant at this stage.

NOC Cases

Prohibition Order Granted
Allergan v. Sandoz Canada Inc.

Drug: COMBIGAN brimonidine tartrate

The Court considered arguments that one patent was invalid on the basis of obviousness and that a second patent was not infringed, and invalid on the basis of inutility. The Court issued a prohibition order, preventing Sandoz from coming to market with its generic brimonidine tartrate product, until the expiry of the first patent. However, the Court held that the second patent was not infringed.

The first patent claimed the use of timolol and brimonidine in a particular combination, with a particular carrier, to treat glaucoma. The Court considered the test for obviousness and held that in the absence of prior art which demonstrated a safety profile for concomitant therapy comparable to that reported in the patent, it is entirely appropriate to recognize that superior safety profile as being one of the differences that distinguish the patent from the prior art. The Court held that while it may have been worthwhile to pursue, it was not self-evident that formulating brimonidine and timolol into a chemically stable drug would work, let alone have a superior safety profile to brimonidine, or permit BID dosing without an afternoon reduction in efficiency. Thus, the Court held that the allegation as to obviousness was not justified.

The second patent claimed the use of brimonidine for neuroprotection. The Court first considered whether Sandoz's allegations of non-infringement were justified on the basis of the test for induced infringement with respect to the product monograph. The Court held that the generic product was likely to infringe the patent. However, the Court also held that as the innovator product is not indicated for neuroprotection, despite neuroprotective information in Sandoz' product monograph, the test was not met for inducement of infringement.

With respect to direct infringement, the Court held that an allegation of non-infringement cannot be justified solely on the basis that the product monograph does not mention the particular use claimed in a patent. The Court then considered the evidence and held that the allegations of non-infringement were not justified. Finally, with respect to the allegations as to inutility, the Court held that they were not justified, as the evidence demonstrated a neuroprotective effect. Furthermore, Sandoz had not raised the issue of sound prediction properly in its NOA. Thus, the Court held it should not be considered. The Court did, nonetheless, consider the issue, and held that the allegations as to a lack of sound prediction were not justified as there was both a factual basis and a sound line of reasoning for the prediction and both were disclosed in the patent.

Appeal is Neither Stayed nor Expedited

Mylan Pharmaceuticals ULC v. AstraZeneca Canada, Inc.
Drug: ARIMIDEX anastrozole

The Court of Appeal was considering two motions, one motion by Mylan seeking to expedite the appeal, and one motion by AstraZeneca seeking to stay the appeal until the decision of the Supreme Court of Canada (SCC) in Teva Canada Limited v. Pfizer Canada Inc. (Teva).

The Court of Appeal first considered the motion by AstraZeneca to stay the appeal. In respect of the test to be applied on such a motion, the Court of Appeal distinguished a motion asking the Court to enjoin another body from exercising its jurisdiction, in which the test set out in RJR-MacDonald applies, and a motion asking the Court not to exercise its jurisdiction until a later date. This motion requires the Court to consider whether the stay is in the interests of justice.

The Court of Appeal declined to stay the appeal, on the basis that the length of delay will be significant and there is not a very direct nexus between the issues in Teva and the within appeal. The Court of Appeal held that there are mechanisms to address AstraZeneca's concerns of a decision in the appeal that is wrong in light of the later decision of the SCC in Teva.

With respect to Mylan's motion to expedite the appeal, the Court of Appeal dismissed the motion and noted that Mylan has not acted expeditiously in moving the appeal forward.

Other Cases of Interest

No Vested Interest in NOC While on Patent Hold
Apotex Inc. v. Canada (Health)
Drug: omeprazole

Apotex brought a judicial review application, challenging three decisions made by the Minister of Health (Minister) with respect to Apotex' submission for approval of its Apo-omeprazole product.

The Court found that Apotex' application did not meet the timing requirements for filing pursuant to section 18.1(2) of the Federal Courts Act. Apotex argued that the Minister has shown a "pattern of misconduct", such that it was not required to meet the 30 day timeline for filing its application. The Court rejected this argument and found that the filing requirement did apply to the application and it was therefore necessary for Apotex to succeed in respect of its motion for an extension of time to file the application. The Court found that Apotex' motion for an extension of time failed to provide a reasonable explanation for the delay, and accordingly dismissed this motion.

The Court did not need to deal with the substantive issues, other than the issue of a vested right in the issuance of a Notice of Compliance (NOC), as a result of the dismissal of the motion for an extension of time. With respect to the vesting issue, Apotex argued that it had a vested right to a NOC when the Minister indicated that its review was complete but for the requirements under the NOC Regulations. The Court did not accept Apotex' argument that it had a vested right, and the application was accordingly dismissed.

Court of Appeal Requires Commissioner of Patents to Re-examine Patent
Canada (Attorney General and Commissioner of Patents) v. Amazon

On November 24, 2011, the Court of Appeal released its decision relating to Amazon's "one-click method of internet shopping." The Court had allowed Amazon's appeal and ordered the Commissioner of Patents (Commissioner) to expedite re-examination of the patent application and undertake this re-examination in light of the Court's direction that the claims constitute patent subject matter. The Court of Appeal allowed the Commissioner's appeal to the extent that it amended the direction from the Court to re-examine the patent application in accordance with the reasons of the Court of Appeal.

BLG will be releasing an Alert shortly that provides an in-depth analysis of the Court of Appeals Judgment and Reasons.

Other Industry News

Health Canada has published a web info sheet on drug shortages.

About BLG

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.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

In association with
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:
  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.
  • Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.
    If you do not want us to provide your name and email address you may opt out by clicking here
    If you do not wish to receive any future announcements of products and services offered by Mondaq you may opt out by clicking here

    Terms & Conditions and Privacy Statement (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

    Use of

    You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


    Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

    The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


    Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

    • To allow you to personalize the Mondaq websites you are visiting.
    • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
    • To produce demographic feedback for our information providers who provide information free for your use.

    Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

    Information Collection and Use

    We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

    We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to with “no disclosure” in the subject heading

    Mondaq News Alerts

    In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


    A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

    Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

    Log Files

    We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


    This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

    Surveys & Contests

    From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


    If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


    From time to time Mondaq may send you emails promoting Mondaq services including new services. You may opt out of receiving such emails by clicking below.

    *** If you do not wish to receive any future announcements of services offered by Mondaq you may opt out by clicking here .


    This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to

    Correcting/Updating Personal Information

    If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to

    Notification of Changes

    If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

    How to contact Mondaq

    You can contact us with comments or queries at

    If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at and we will use commercially reasonable efforts to determine and correct the problem promptly.

    By clicking Register you state you have read and agree to our Terms and Conditions