Canada: Trial Judge’s Findings Of Anticipation And Obviousness Upheld On Appeal (Intellectual Property Weekly Abstracts Bulletin - Week Of January 21, 2013)

Last Updated: January 29 2013
Article by Beverley Moore


Trial Judge's Findings of Anticipation and Obviousness Upheld on Appeal

Wenzel Downhole Tools Ltd. v. National Oilwell Canada Ltd

This is an appeal of a patent infringement decision. The Court found the patent invalid for anticipation and obviousness.

The Court of Appeal held that the Judge did not make an error that would justify its intervention, and dismissed the appeal.

The Court of Appeal considered the construction analysis by the Trial Judge and found that there was no reason to interfere with the Judge's interpretation of the claims. The Court of Appeal upheld the Judge's conclusions on anticipation.

In considering obviousness, the Court of Appeal held that it was not appropriate to refer to the obvious to try approach in this case. The Court of Appeal held that the Judge's focus during the obviousness analysis was on whether the invention was more or less self-evident. Thus, the Court of Appeal agreed with the Judge's conclusions that the patent was obvious.


Federal Court of Appeal Upholds Refusal to Expunge Trade-mark

McCallum Industries v. HJ Heinz Company

McCallum applied to expunge a trade-mark pursuant to section 57 of the Trade-marks Act. The Court dismissed the Application.

The parties agreed that McCallum was a person interested. The Court of Appeal accepted the admission but did not endorse the Court's analysis of the issue. The remainder of the grounds of appeal were based on findings of fact and the weight to be given to various factors. The Court of Appeal agreed that the Court made a number of errors. However, the Court of Appeal was satisfied that there was sufficient evidence to support the Court's conclusions of fact, law and mixed fact and law. Thus, the appeal was dismissed.

Federal Court of Appeal Upholds Dismissal of Trade-mark Opposition

Mövenpick Holding AG v. Exxon Mobil Corporation

Mövenpick appealed the decision of the Court, which upheld the decision of the Registrar of Trade-marks dismissing the Appellant's opposition to the registration of the Marché Express and Design Trade-mark.

The Court of Appeal upheld the decision of the Court, wherein the Court found the Registrar's decision to dismiss the opposition reasonable.


Servers Ordered Produced to the Court for Determination of what Information to Send to the U.S. Government

Attorney General of Canada on behalf of the United States of America v. Equinix Inc. v. Megaupload Ltd.

American prosecutors alleged that individuals and Megaupload are parties to criminal infringement of copyright, conspiracy to infringe copyright, money laundering and racketeering, relating to dissemination of copyright protected materials such as movies and music. The claims relate to a website operated by Megaupload. Megaupload has servers in many countries including Canada. By motion, the Attorney General applied on behalf of the United States for a Court order to send mirror imaged copies of 32 computer servers to authorities in the United States.

The servers were received pursuant to a search warrant issued last year. In the order granting the search warrant, the Judge concluded that there were reasonable grounds to believe evidence of the offenses would be located on these servers. This conclusion was undisputed in the motion before the Court. Thus, the Court ordered that, in order to balance the state interest in gathering evidence and privacy interests, the servers should be brought before the Court so that the Court can determine what should be provided to authorities in the United Sates. The Court indicated that an independent forensic examiner should examine the nature of the information contained on the servers. If the parties are unable to agree on how to proceed after that investigation, the matter can be brought back before a Judge for determination.


Definition of "Innovative Drug" does not Include Variations

Takeda Canada Inc. v. Minister of Health

Drug: DEXILANT dexlansoprazole

This is an appeal by Takeda of a decision of the Court, in which the Court upheld the decision of the Minister of Health to refuse to list Takeda's product on the Register of Innovative Drugs. Lansoprazole, which is a racemic mixture of two enantiomers, was previously approved by the Minister of Health. Dexlansoprazole is one of the enantiomers. A drug is an "innovative drug", and therefore eligible to be listed on the Register, if it has not been previously approved. Variations of a previously approved drug are not eligible.

The Court of Appeal dismissed the appeal, although there was a dissenting judgment. The Court of Appeal applied a standard of correctness. The Court of Appeal held that the five examples in the definition of "innovative drug", namely salts, esters, enantiomers, solvates and polymorphs, are variations. The Court of Appeal held that it is only for substances other than these five examples that the nature of the previously submitted clinical data should be considered.

Judicial Review Brought Outside Time Period and No Vested Right to NOC

Apotex Inc. v. Minister of Health

Drug: omeprazole magnesium

This decision relates to the consideration by the Minister of Health of Apotex' submission for a Notice of Compliance (NOC) for omeprazole magnesium tablets. In the judicial review decision, the Court found that the application was brought after the time period specified for bringing an application for judicial review and the Court refused to extend the time period for the commencement of the application. The Court also dismissed Apotex' argument that it had a vested right to a NOC.

The Court of Appeal found that the Court did not err and dismissed the appeal. With respect to the time period for bringing the application, the Court of Appeal agreed that the relief sought by Apotex pertained to a particular decision by the Minister. The Court of Appeal noted that the decision relating to the extension of time is a discretionary decision, subject to deference, and the Court made no reviewable error. Finally, the Court of Appeal considered Apotex' argument with respect to its vested right to a NOC, and dismissed the appeal.

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