Canada: Sound Prediction Applies To Mechanical Inventions (Intellectual Property Weekly Abstracts Bulletin - 9/30/2013)

Last Updated: October 7 2013
Most Read Contributor in Canada, November 2017

Edited by Chantal Saunders and Beverley Moore and Adrian Howard


Sound prediction applies to mechanical inventions

Bell Helicopter Textron Canada Limitée v. Eurocopter société par actions simplifiée, 2013 FCA 219 and 2013 FCA 220

The Federal Court of Appeal (FCA) recently upheld the decision of the Trial Judge, holding that one claim of the patent at issue was valid and infringed, and the remainder of the claims of the patent were invalid for a lack of sound prediction. The FCA also upheld the punitive damages award (decision here; our summary here).

The FCA upheld the decision of the Trial Judge in excluding certain prior art and analyzing the expert evidence. Similarly, the FCA upheld the Trial Judge's construction of the patent. The FCA held that a "judge's assessment of the expert evidence will not be reversed on appeal absent palpable and overriding error." (para. 74). The findings of novelty and non-obviousness were upheld.

In considering the allegations regarding lack of utility, the FCA upheld the finding that there was no need to test every minute variant in order to establish utility. For the same reasons, the claim was also not invalidated for overbreadth. The FCA confirmed that the doctrine of sound prediction applies beyond pharmaceutical inventions. The FCA then held that "the factual basis, the line of reasoning and the level of disclosure required by the doctrine of sound prediction are to be assessed as a function of the knowledge that the skilled person would have to base that prediction on" (para 152). The FCA also held that the factual basis and the sound line of reasoning do not necessarily have to be disclosed in the patent, if they would be apparent to the skilled person. However, in this particular case, there was no evidence of demonstration or sound prediction of utility of the backward inclination embodiment. Thus, those claims were upheld as invalid.

Finally, the FCA upheld the punitive damages award. The FCA held that while generally entitlement and quantum of punitive damages should be determined after the quantum of compensatory damages is established, there are circumstances where the just and expedient resolution of the litigation requires a different approach. Furthermore, in this case, the parties had agreed that entitlement would be determined at the trial, separately from the issue of quantum. The FCA also held that patent infringement should not be immunized from punitive damages. Thus the appeal and cross-appeal were both dismissed.


Motion for reconsideration denied

Sanofi-Aventis v. Apotex Inc., 2013 FCA 209

Drug: clopidogrel

Sanofi-Aventis had previously been successful in its appeal of a patent infringement decision (decision here; our summary here). Sanofi-Aventis brought the within motion to vary the portion of the judgement relating to liability for infringement. Sanofi-Aventis argued that the decision of the trial judge implicitly made a finding of infringement by using Apotex to refer to both Apotex and Pharmachem. Sanofi-Aventis argued that the FCA overlooked this finding and erred in its interpretation of the trial judge's reasons.

The FCA held whether Sanofi-Aventis is right, this is neither an oversight nor an accidental omission, nor is it a clerical error, mistake or omission. Rule 397 does not authorize the FCA to revise its understanding of the Trial Judge's reasons after judgment has been rendered. Thus, this part of the motion was dismissed. The part of the judgment relating to a second defendant was revised, as the claim against that defendant had been dropped prior to trial, and the FCA held it was an oversight to include them.

Two electrical switchgear patents are found to be obvious

ABB Technology AG v. Hyundai Heavy Industries Co., Ltd., 2013 FC 947

Both of ABB Technology's patents have been found invalid in an action for infringement. These patents relate to gas insulated switchgear assemblies, used in the transmission of electricity. The '781 Patent was found to be invalid as it encompassed technology that was known in the prior art, namely using viewing windows to ascertain the position of knife blade switches in medium voltage gas-insulated switchgear. Alternatively, the patent was also found to be obvious for viewing windows were in use for high voltage gas-insulated switchgear.

The validity of the '722 Patent turned on the construction of claim 1. Cable grounding was found to be an essential element to the circuit breaker component, incorporated into a single compartment. On this construction, it too was found to be obvious.


Chinese characters can be confusing where the relevant consumer understands Chinese

Saint Honore Cake Shop Limited v. Cheung's Bakery Products Ltd., 2013 FC 935

An appeal has been dismissed, finding that two trade-mark applications are confusing with the respondent's trade-marks with respect to the overlapping wares. The applications, CHINESE CHARACTERS DESIGN [the mark] and SAINT HONORE CAKE SHOP & CHINESE CHARACTERS DESIGN were based on a proposed use while the respondent's marks had been used for decades. The fact that the marks were in Chinese characters did not change the result as a substantial portion of the respondent's actual consumers would be able to read and understand Chinese characters.

The colour orange can be a trade-mark

JTI-Macdonald TM Corp. v. Imperial Tobacco Products Limited, 2013 FC 608

Imperial had applied for two marks, both consisting of the colour orange applied to the visible surface of the packaging, used in association with tobacco products. JTI-Macondald unsuccessfully opposed and appealed to the Federal Court, but the original decision was found to be reasonable. JTI argued that one application was actually a distinguishing guise because the colour formed part of the packaging. The Court held that a mark consisting of one or more colours applied to the whole of a visible surface of a three-dimensional object or ware is not a distinguishing guise, unless it forms part of a mode of wrapping or packaging wares. In this case the colour is the mark, and not an element of the mark.

For the second application, JTI argued that the drawing in the application did not accurately represent the use of the proposed mark. However, it was found that the drawing was sufficiently clear and followed s.28 of the Trade-mark Regulations.

Carbon Trust found to be confusing with Pacific Carbon Trust

The Carbon Trust v. Pacific Carbon Trust, 2013 FC 946

Carbon Trust has unsuccessfully appealed a decision of the Trade-marks Opposition Board that refused to register its proposed "'working with the Carbon Trust' and footprint design" as it was confusing with the "Pacific Carbon Trust" trade-name of the respondent. The Board found that the overlapping nature of the parties' services and the ideas suggested by the respective trade-mark or trade-name may infer an association between them. The Court did find that Pacific Carbon Trust engages in commercial activity in the carbon offset industry, meaning it is a business for the purposes of the Trade-marks Act. Since Pacific Carbon Trust's services were available in Canada and the trade-name has been used in the advertising of those services, the mark was deemed to be used within the meaning of the Act.


Copyright infringement action dismissed due to prior consent

Pinto v. Bronfman Jewish Education Centre, 2013 FC 945

The Court dismissed this action for copyright infringement. The case related to musical works for the TaL AM curriculum. The parties agreed that Pinto owns the copyright, however, the defendants argued that Pinto gave permission to use the music as part of the contract for his services.

The Court held that Pinto bears the burden of proving he did not consent, as he is the party seeking to establish infringement. The Court considered the evidence and held that it established that he consented to and actively facilitated the use of his music. Thus, the Court held there was no copyright infringement. Damages were considered in the alternative.

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