The Federal Court of Appeal (FCA) upheld the granting of an
order of prohibition against Apotex. However, the FCA also held
that it was not open for the Federal Court judge to grant a
prohibition order in order to seek clarification of the
jurisprudence. The Federal Court decision can be found
here, and our summary
The FCA held that prohibition can only be granted if the
conditions set out in the NOC Regulations are met, and in
this case, they were not. Nevertheless, the Federal Court did issue
the prohibition order, and thus the case was appealed to the FCA.
In considering the doctrine of comity, the FCA held that it is a
manifestation of the principle of stare decisis, and only
applies to determinations of law, not factual findings, as in
theory, there can only be one correct answer to a question of law.
The FCA held that a finding that an invention is obvious because
the solution proposed was plain to see is one of fact. However,
construing the patent for an inventive concept is a question of
In this case, the Federal Court judge did not identify any
error, or rely on distinct evidence to explain his diverging view
of the previous construction of the patent. The FCA held that
construing a patent is no less a determination of law merely
because the document being construed is drafted by the patentee
rather than Parliament. However, since there are now contradictory
decisions on construction, the FCA must determine which is
The FCA considered the reasons of the Supreme Court of Canada in
Teva v. Pfizer decision, and held that the entire specification
must be considered to determine the nature of the invention. Thus,
in this case, the improved safety profile forms part of the claimed
invention. The FCA considered the remainder of the factors in the
test for obviousness, and found the allegations as to obviousness
The Supreme Court of Canada dismissed Wyeth's application
for leave to appeal the decision of the
Federal Court of Appeal (FCA) which permitted ratiopharm's
s. 8 proceeding, claiming damages from Wyeth, to continue after it
amalgamated with Teva. Teva has a licence from Wyeth for the
product. Our summary of the FCA decision can be found
Decision Refusing to Strike Second Statement of Claim Upheld on
Bertelsen commenced an action for patent infringement by
Statement of Claim (the "first action"). The Court struck
portions of the Statement of Claim and dismissed the action.
Bertelsen did not appeal the decision but instead commenced this
second patent infringement action. Automated Tank Manufacturing
(ATM) brought a motion seeking to strike the Statement of Claim.
The motion was dismissed and ATM appealed. The appeal was dismissed
on the basis that the Court did not err in exercising its
discretion. In particular, the Court of Appeal noted the
Court's finding that the dismissal of the first action did not
preclude a second action, the pleadings in the second action were
proper, and that commencing a new action rather than appealing the
dismissal in the first action was not an abuse of process.
Other Industry News
Health Canada has published a
list of Registrars recognized under s. 32.1 of the Medical
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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