Canada: NOC Proceedings: Prohibition Granted on Basis of Comity (Intellectual Property Weekly Abstracts Bulletin: Week Of July 16, 2012)

Last Updated: July 24 2012
Article by Chantal Saunders and Beverley Moore

Most Read Contributor in Canada, September 2016

NOC Proceedings

Prohibition Granted on Basis of Comity
Allergan Inc. v. Canada (Health)
Drug: COMBIGAN® (brimonidine-timolol)

The Court granted an Order of Prohibition to Allergan in the face of a Notice of Allegation from Apotex.

The Court found the allegations of anticipation unjustified. The Court spent considerable time discussing comity and the effect of a previous decision in a proceeding between Allergan and Sandoz that dealt with allegations of obviousness (found here, summarized here). The Court then considered the evidence of obviousness in this proceeding and indicated it would have found the allegations as to obviousness justified. However, the Court held that if it dismissed the application for prohibition then there would be no appeal and there was conflicting jurisprudence on the effect that should be given to matters of comity in NOC proceedings. Thus, the Court granted the Order for Prohibition, with the likely expectation that Apotex will appeal, in order to place the issue of comity squarely before the Court of Appeal.

Prohibition Not Granted as Non-Infringement Allegation held Justified
Fournier Pharma Inc. v. Canada (Health)
Drug: LIPIDIL EZ® (fenofibrate)

The Court heard this application and the next application consecutively and issued decisions on the same day, however, indicated that each was considered separately. The Court dismissed the application for a prohibition order.

As a preliminary consideration, the Court examined challenges made to the expert evidence. The majority of these were either dismissed or said to go to weight. However, in one case, the expert was found not to possess the necessary expertise of a person skilled in the art. Thus whenever his evidence was in conflict with another expert or not supported by other evidence, his evidence was disregarded.

The Court considered the evidence relating to the allegation of non-infringement and held that on the balance of probabilities, there was no evidence from which the Court could conclude that the particle size of the fenofibrate particles in the Sandoz tablet infringed the patent. Although this finding was dispositive of the application, the Court went on to consider the validity allegations raised. The allegation of anticipation was found not to be justified; as were the allegations obviousness, overbreadth, lack of utility, lack of sound prediction, insufficiency and ambiguity.

Prohibition Not Granted as Non-Infringement Allegation held Justified
Fournier Pharma Inc. v. Canada (Health)

In the second application, the Court considered allegations of non-infringement and validity of a second patent relating to fenofibrate. The Court dismissed the application for a prohibition order.

Again, the credibility of witnesses and their admissibility as experts was challenged. The challenges as to impartiality were dismissed. As in the case above, one of the witness' testimony was given little weight as he did not have the credentials of a person skilled in the art.

In this case, after considering the evidence of non-infringement, the Court found the allegations as to non-infringement justified. Again, it went on to consider the validity issues raised. The allegations as to anticipation, obviousness, claims broader, inutility, lack of sound prediction and insufficiency were all found to not be justified.

Other Cases of Interest

Copyright Infringement Found for Broadcast; Technical Means to Relay Work Excluded
Leuthold v. Canadian Broadcasting Corporation

This is a copyright dispute. Ms. Leuthold sued the CBC and an individual for copyright infringement of photographs she took on September 11, 2001. The CBC was made a documentary to show how the September 11 attacks unfolded through the reaction of journalists, cameramen and photographers who were on the scene that day. They negotiated two licences with Ms. Leuthold for use of her photographs. The correct interpretation of those licences as compared with the number of broadcasts was at issue in this proceeding.

The Court held that the first licence was unrestricted, except for use of the images in promotional materials, and thus permitted the first broadcast. The second licence, signed after the second broadcast, permitted the second broadcast. However, the Court held that on six (6) separate occasions, the Plaintiff's photographs were shown to Canadians without her authorization, thus compensation for each of those communications would be awarded.

There was a dispute over whether a broadcast included more than one time zone, and whether it also included the Newsworld broadcasts. Furthermore, there was a dispute over whether the technical means used to transmit the documentary across Canada consisted of additional broadcasts that deserved compensation. The Court held that one broadcast to a Canadian network includes all time zones. In addition, the licence to the one broadcast was held to include Newsworld. Furthermore, the Court did not accept the principle that compensation should be awarded on the basis of each technical act of infringement as this would be contrary to the reading of the Broadcasting Act with the Copyright Act. The technical means used to relay the infringing work has no bearing on the amount of compensation owed. Finally, the Court refused to order exemplary damages as the six (6) unauthorized communications resulted from an honest mistake which was admitted quite candidly in testimony. The individual Defendant was held not be personally liable as the Court found that the unauthorized communications were not the result of a deliberate act or gross negligence.

SCC Releases Five Decisions relating to Copyright tariffs

On Thursday, July 12, the Supreme Court of Canada (SCC) released 5 decisions, providing guidance with respect to a number of tariffs. Please read BLG's Intellectual Property Alert for summaries of each of the decisions.

Entertainment Software Association v. Society of Composers, Authors and Music Publishers of Canada

Rogers Communications Inc. v. Society of Composers, Authors and Music Publishers of Canada

Society of Composers, Authors and Music Publishers of Canada et al v. Bell Canada

Alberta (Education) v. Canadian Copyright Licensing Agency (Access Copyright)

Re:Sound v. Motion Picture Theatre Associations of Canada

Leave Applications Denied

The SCC denied leave applications in two IP cases. In Schering v. Apotex, the FCA upheld the decision of the Trial Judge finding the patent invalid for lack of utility. Our summary of the decision can be found here. In Apotex v. Merck, the FCA upheld the Trial Judge's findings of infringement of the patent at issue. Our summary of the decision can be found here.

Other Industry News

Health Canada's Therapeutic Products Directorate has published its Statistical Report for 2011 for the Patented Medicines (Notice of Compliance) Regulations and Data Protection.

Regulations Amending the Food and Drug Regulations (Positron-Emitting Radiopharmaceuticals) have been enacted through the Canada Gazette Part II.

Health Canada has published a website (Health Products and Food Regulatory Modernization) designed to provide information on the Regulatory Roadmap for Health Products and Food.

Health Canada has released an Updated Guidance Document: Bulk Forming Laxatives – Labelling Standard.

Health Canada has indicated that it is determining how it will implement the new ICH E2F Guidance, and will publish a Notice when the strategy is determined.

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