Canada: Series Of Patents Found Not To Be Infringed Or Invalid (Intellectual Property Weekly Abstracts Bulletin (Week Of June 24, 2013)

Last Updated: July 8 2013

Edited by Chantal Saunders and Beverley Moore

Patents

Series of patents found not to be infringed or invalid
Zero Spill Systems (Int'l) Inc. v. 614248 Alberta Ltd., 2013 FC 616

The Plaintiffs alleged infringement of two Canadian patents ('375 and '064 Patents) and a Canadian Design Registration ('793 Design). The Defendants sought a declaration of invalidity of a third patent ('265 Patent). The patents and design in issue are related to oil field fluid containment products. While the Federal Court held the '375 Patent valid, the Plaintiffs failed to meet their burden of proving, on a balance of probabilities, that the Defendants' product infringed the '375 Patent system. The Plaintiffs also failed to prove infringement of the '793 industrial design. The Court found that the '064 Patent was anticipated in both the prior art and use, and therefore, the patent was found to be invalid. Finally, the '265 Patent was found invalid due to obviousness.

The Court did not have to deal with the Plaintiffs' claim to damages. However, the Court took issue with the Plaintiffs' assessment concerning damages for lost profits. The Plaintiffs failed to establish that every product sold by the Defendant resulted in a lost rental of the Plaintiffs product. In the absence of evidence to measure the actual utilization of the patented product in the field, the Court held that it would be impossible to assess damages on the basis of the Plaintiff's lost profits.

Appeal dismissed over assessment of damages for failure to pay maintenance fees

PreMD Inc. v. Ogilvy Renault LLP, 2013 ONCA 412

The Court of Appeal upheld the original $1 million damage award, finding no breach of fiduciary duty and no errors were made in the calculation of damages by the trial judge. The cross-appeal was also dismissed.

PreMD had appealed the measure of damages based on claims of negligence and breach of contract against Ogilvy Renault for failing to pay the required maintenance fees on two United States patents, which subsequently elapsed. PreMD also appealed the dismissal of its claim for breach of fiduciary duty. Ogilvy Renault cross-appealed the calculation of damages equal to the entire cost of acquiring the technology when only the United States patents were affected.

The patents in issue related to technology for cholesterol skin tests. PreMD was never able to commercialize the technology, even in those countries where the patents remained in force, and eventually went bankrupt. PreMD had sought between $14-21 million in damages covering the time both before and after entering into business with Ogilvy Renault.

Trade-marks

Descriptive text does not infringe a design mark
Osmose-Pentox Inc., v. Société Laurentide Inc., 2013 FC 626

Osmose-Pentox has had their infringement suit dismissed by the Federal Court as the Court found no direct evidence of actual confusion and no risk of a consumer being duped. Furthermore, the words were found to be used to describe the defendant's wares, not as a trade-mark.

Osmose-Pentox sells wood coatings and wood preservatives under the CONSERVATOR name. (Where the last "O" is represented by a construction hard hat. Please see the linked decision for images of the registered mark)

The defendant sold wood coatings including the terms "CONSERVATEUR POUR BOIS/WOOD CONSERVATOR" on its wares. However, the defendant argued that the use of the word CONSERVATOR does not infringe on the design-mark of CONSERVATOR (with a hard hat in place of the second letter "O"), nor can it infringe when it is used as a description of the product being sold.

Other Industry News

The House of Commons has released their Response to the Third Report of the House of Commons Standing Committee on Industry, Science and Technology "Intellectual Property Regime in Canada".

Health Canada has released its finalized Guidance Document for Clinical Trial Sponsors: Clinical Trial applications. It has also published Electronic Specifications for Clinical Trial Applications filed in accordance with the Guidance Document.

Health Canada has published a Drug Submission Application Form for Human, Veterinary, Disinfectant Drugs and Clinical Trial Application/Attestation.

Health Canada has released the final Guidance Document: Determining Prescription Status for Human and Veterinary Drugs.

Health Canada has published a series of Questions and Answers on the Prescription Drug List.

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