At trial, the Defendants alleged anticipation, obviousness and
lack of utility. After construing the claims, the Court considered
anticipation. The Defendants alleged anticipation by a drilling
motor bearing assembly (assembly) designed and used prior to the
filing date of the patent in issue. The Court found that the
assembly contains the subject matter of the claims of the patent in
issue, that the assembly pre-dated the filing date of the patent
and that there no were obligations of confidentiality with respect
to at least some of the individuals with access to the designer,
the assembly or drawings of the assembly, such that the invention
was made available to the public.
The Court then considered obviousness. The Court rejected some
of the patents argued to be part of the common general knowledge by
the Defendants. The Court, however, found that one of the prior art
patents rendered the invention obvious. The Court also noted how
little time it took for the inventor to develop the claimed
invention as supporting a conclusion that the invention was
obvious. With respect to utility, the Court held that the
Defendants did not clearly define the promise of the patent but in
any event, would probably have found that the Defendants had not
met their burden with respect to the issue of utility. The patent
was found invalid and the Court addressed some issues relating to
Appeal of Prothonotary's Decision Refusing Reversal of
AstraZeneca brought a motion before the Case Management
Prothonotary, seeking a reversal of the order in which the evidence
was presented. In particular, AstraZeneca was seeking an order in
which Teva served its evidence with respect to its invalidity
allegations first. The Prothonotary dismissed the motion, and
AstraZeneca appealed the Prothonotary's Order.
On appeal, the Court found that the Prothonotary carefully
considered the submissions made by both parties before reaching a
decision, and that the decision related to a matter that is not
vital to the issues. The Court held that Case Management
Prothonotaries should be given reasonable latitude to address these
types of issues. The Court dismissed the appeal, with costs to
OTHER CASES OF INTEREST
New Evidence of Use on Appeal Sufficient to Reverse Expungement
The Registrar of Trade-marks (Registrar) issued a notice to the
applicant to provide evidence of use of the registered trade-mark
during the preceding three years. The applicant did not file any
response to the notice, and the trade-mark was expunged.
On appeal to the Court, the applicant filed evidence of use. The
Court first noted that the standard of review is one of correctness
in light of the new evidence. After setting out that the threshold
to establish use is low, the Court considered the new evidence and
found it to be sufficient. The Court also held that an extension of
time to allow the appeal was justified in the circumstances. The
appeal was allowed and the trade-mark remained on the Register.
Leave Denied by Supreme Court of Canada in Pharmaceutical
Leave by the Supreme Court of Canada (SCC) was denied in respect
of the decision by the Federal Court of Appeal. We
summarized the Court of Appeal's decision
here. The SCC described the case as relating to a patent found
to be invalid for lack of utility, with the issue to be determined
whether the Court of Appeal decision is inconsistent with
jurisprudence, the Patent Act, and treaty obligations.
OTHER INDUSTRY NEWS
Health Canada issued instructions for completing the application
form, and the application form, for custom-made devices and
medical devices for special access.
The Federal Court dismissed a motion by Apotex seeking particulars from Allergan's pleading relating to the prior art, inventive concept, promised utility and sound prediction of utility of the patents at issue.
Last year we saw the Canadian Courts release trademark decisions that granted a rare interlocutory injunction, issued jailed sentences for failure to comply with injunctive relief, grappled with trademark and internet issues...
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