Nycomed Canada Inc. et al v. Teva Canada Limited 2012
FCA 195 (F.C.A. per Noël J.A., Evans and Sharlow JJ. A.,
In Nycomed v. Teva, the Federal Court of Appeal
confirmed that there is no cause of action in Canada for
"contributory infringement" of a patent and, accordingly,
approved a decision that struck out parts of a Statement of Defence
and Counterclaim that pleaded it.
The Court confirmed that the Supreme Court of Canada, in the
Monsanto Canada Inc. v. Schmeiser decision (2004 SCC 34), did not indicate an intention to
depart form the existing precedents to recognize "contributory
infringement" as a cause of action under Canadian law. The
Court affirmed the decision of Simpson J. in the Federal Court (2011 FC 1441) and agreed with her reasoning on
the point at issue.
Simpson J. had reviewed the law of inducing and procuring patent
infringement. Her decision did not alter the Canadian law on
inducing and procuring infringement that requires three components:
(a) completion of the act of infringement by the direct infringer;
(b) the act(s) of infringement must have been influenced by the
alleged inducer to the point that, without the influence, the
direct infringement would not take place (a "but-for"
test); and (c) the inducer must know that this influence will
result in the completion of the act of infringement.
Simpson J. noted that Nycomed had only alleged that Novopharm
and Apotex had contributed to physicians prescribing, pharmacists
dispensing, and patients using a medication in combination with an
anti-microbial agent for treatment of ulcers. Novopharm and Apotex
were alleged not to be the sole cause, but had contributed to the
infringing activities through their product monographs, websites,
and marketing strategies to physicians and pharmacists.
Simpson held (and the Federal Court of Appeal expressly agreed
with her) that when the Supreme Court held in the Monsanto
case, that what was prohibited was "any act that interferes
with the full enjoyment of the monopoly granted to the
patentee", "in whole or in part, directly or
indirectly", it was dealing only with a case of direct
infringement and neither inducement nor contributory infringement.
The language "indirectly" is consistent with the
Inducement test but does not support a fundamental departure from
The decision stresses the importance of drafting pleadings in
such a way that they comply within the current state of Canadian
law and the rules of pleading of our courts. Motions attacking the
pleadings are becoming more prevalent so care and, sometimes,
creativity are important.
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.
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A recent Saskatchewan Court of Queen's Bench decision allowed a court-appointed receiver to sell and transfer intellectual property rights free and clear of encumbrances, finding that a license to use improvements of an invention was a contractual interest and not a property interest.
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