Canada: Appeal Decision Addresses the Promise Doctrine (Intellectual Property Weekly Abstracts Bulletin - Week Of November 3rd, 2014)

Last Updated: November 6 2014
Article by Chantal Saunders, Beverley Moore, Adrian J. Howard and Ryan Steeves

Most Read Contributor in Canada, November 2017

NOC Cases

Appeal Decision Addresses the Promise Doctrine

Apotex Inc. v. Pfizer Canada Inc., 2014 FCA 250

This decision relates to two appeals that were heard together and the reasons apply to both. The decision set out the parties' positions and then noted the standard of review for the issues. In particular, patent construction is a question of law, which is assessed on a standard of correctness. Whether utility has been established, either demonstrated or predicted, is a question of fact to be reviewed for a palpable and overriding error, and sufficiency of disclosure is a mixed question of fact and law and therefore is reviewed for a palpable and overriding error unless there is an error of law.

The Court of Appeal noted "[t]he promise doctrine will hold an inventor to an elevated standard only where a clear and unambiguous promise has been made. Where the validity of a patent is challenged on the basis of an alleged unfulfilled promise, the patent will be construed in favour of the patentee where it can reasonably be read by the skilled person as excluding this promise." The Court of Appeal then determined that the Application Judge correctly construed the promise of the patent, noting that while a promise can appear in the specification provided that the language is clear and explicit, there was no error in the Judge acknowledging that statements that are not in the claim should not be presumed to be promises.

The Court of Appeal addressed a number of alleged promises. Apotex argued that any given promise must be construed as an overarching promise, but the Court of Appeal indicated that there was no support in the jurisprudence for this argument.

The Court of Appeal also addressed abuse of process, stare decisis and comity in light of an apparent concession made with respect to the promise in previous proceedings under the Patented Medicines (Notice of Compliance) Regulations. The Court of Appeal dismissed these arguments. Both appeals were dismissed with costs.

Patent Cases

New trial ordered and injunction set aside due to a refusal to allow an amendment to the Defence and Counterclaim

Janssen Inc. v. AbbVie Corporation, 2014 FCA 242

The Federal Court of Appeal has heard three related appeals from this proceeding in the Federal Court, and in the result, has sent the matter back down for re-hearing.

One appeal related to the finding that the patent was valid and infringed (2014 FC 55). A second appeal related to the Federal Court's dismissal of Janssen's pre-trial motion to amend Schedule A to its Defence and Counterclaim so as to remove and add other prior art references (2013 FC 1148). Janssen also appealed the Judge's post-trial injunction order (2014 FC 489).

The Court of Appeal looked to the appeal refusing the amendment first, and found that Janssen's amendment should have been allowed. The Court of Appeal noted that although the Judge was concerned with delay, both parties kept changing the case, and the landscape in which the PSA was operating was also changing. Both parties were still retaining experts to address, in part, the prior art.

The Court of Appeal focused on two independent criteria to allow an amendment: (a) any injustice to the other party is capable of being compensated by an award of costs, and (b) the interests of justice would be served. Janssen was found to meet both.

Obviousness was found to be one of the major invalidity issues and the prior art also impacted the issue of overbreadth. To that end, it was held that it would have served the interests of justice that all the relevant prior art be before the Judge to allow him to fully address the issue of obviousness.

In the end, Janssen is permitted to amend, the judgment that the patent was valid and infringed was set aside, and the matter was remitted back to the Federal Court for a new trial before another judge. The injunction that had been issued on May 22, 2014 was also set aside.

Leave to Appeal to SCC Granted for a section 8 damages case

Sanofi-Aventis v. Apotex Inc., Docket 35886

The Supreme Court has granted leave in a proceeding pursuant to section 8 of the PM(NOC) Regulations. Some of the issues to be decided in this proceeding, as listed by the Supreme Court, include:

  1. What is the correct interpretation of, and correct legal framework applicable to determination of appropriate compensation owed under s. 8?
  2. What is the status and legal implications of the PM(NOC) Regulations in the hypothetical "but for" world?
  3. Whether the legal framework applicable to s. 8 requires the construction of a hypothetical market in which failed prohibition proceedings against plaintiff are excluded, while those against its competitors are legally considered extant.

The decision of the Federal Court can be accessed here (summarized here), while the decision of the Federal Court of Appeal can be accessed here (summarized here).

Pleadings amendment to a damages reference not allowed - found to be a collateral attack on the final judgment

Merck & Co. Inc. v. Apotex Inc.

Apotex moved to file an amended Responding Statement of Issues on a reference pursuant to Rule 153. According to the Court, Apotex wants to argue that the Plaintiffs are not entitled to any damages for infringement of their patent because, after issuance of the liability judgment against Apotex and exhaustion of Apotex's appeals, but before the hearing of the damages reference, the Supreme Court of Canada rendered a decision in another proceeding rejecting one of the principles upon which the trial judge relied in finding that the Plaintiffs' patent had been validly issued. Apotex also seeks leave to allege that the Plaintiffs have breached specific provisions of the Competition Act, such as to disentitle them to damages.

The Court held that the essence of the amendments were a collateral attack on the ruling that Apotex infringed a valid patent. Both res judicata and issue estoppel were found to prevent Apotex from re-opening the question of validity, as that question was finally determined as between the parties. Since a change in the law was not found to be sufficient reason to re-open a previously decided case, there was insufficient reason to allow the amendment.

As for the claims sought to be added pursuant to the Competition Act, those were found to be better decided in a separate action, and not grafted onto a damages reference.

Copyright Cases

Appeal Dismissed: Federal Court Finds Real and Substantial Connection, Jurisdiction

Davydiuk v. Internet Archive Canada., 2014 FC 944

The Defendant, Internet Archive Canada ("IAC"), appealed the order of Prothonotary Aalto, who dismissed IAC's motion for a permanent stay of the proceedings by the Plaintiff, Daniel Davydiuk ("Davydiuk") in Ontario. The Prothonotary found that the Court had jurisdiction to hear the claim, and the circumstances in the case favoured hearing the claim in Canada. IAC argued that the matter should be heard in California.

Davydiuk commenced this action against IAC, alleging that IAC infringed his copyright by reproducing certain works on websites located on various website archive domains (e.g. the "Wayback Machine") that he submitted are owned and controlled by IAC.

The Court heard this matter on a de novo basis, and agreed with the Prothonotary's decision with respect to the 'real and substantial connection' analysis: the Court found that there is a real and substantial connection between the action and Canada. Furthermore, the Court considered the forum non conveniens argument advanced by IAC, and held that while some factors favoured California, it is "not clearly more appropriate". Therefore, IAC failed to meet its burden.

The Court therefore came to the same conclusion as the Prothonotary, and dismissed the appeal.

Applicant Avoids Finding of Copyright and Trademark Infringement, Successful in Having Certification Mark Struck from the Register

Denturist Group of Ontario v. Denturist Association of Canada, 2014 FC 989

The Applicant, the Denturist Group of Ontario ("DGO") was seeking declaratory, injunctive and monetary relief against the Respondents (the Denturist Association of Canada ("DAC") and the Denturist Association of Ontario ("DAO")) to invalidate the DAC's registered copyrights and certification mark, "DD". The DAC owns four (4) copyright registrations that relate to "Denturism Codes" (the "DAC Copyright Registrations"), which identify the services denturists use when submitting claims to insurance companies or third party payers. The DAC was also granted a trade-mark registration for the certification mark "DD" for denturist services. The DAC's members may use the mark, and others (non-members) may pay a fee to use it. The DGO was established as a cost-effective alternative organization to the DAO, and the DAO/DAC view the DGO as a competitor for membership fees. The Respondents attempted to pursue the DGO for the payment of "non-member" fees claiming copyright in certain Denturism Codes and fee guides used for billing, and for the right to use the professional designation "DD".

The Court considered a number of issues in this case, namely: (1) whether copyright subsists in the works covered by the DAC Copyright Registrations (e.g. the DAC Procedural and Fee Guides); (2) whether copyright subsists in the 5-digit codes (and corresponding descriptions of denturist services covered by several of the DAC Copyright Registrations); (3) whether the DGO infringed copyright in the DAC Copyright Registrations; and (4) whether the "DD" certification mark is valid (clearly descriptive or non-distinctive).

First, the Court held that the DAC is the owner of the DAC Procedural and Fee Guides, and that copyright subsists in the DAC Copyright Registrations. However, the Court held that copyright does not subsist in the 5-digit codes (and corresponding descriptions) on the basis of insufficient originality or skill and judgment, and, as a result, that the DGO has not infringed the DAC's copyright in the DAC Procedural and Fee Guides. Furthermore, the evidence before the Court was not sufficient to establish that the "DD" certification mark was clearly descriptive, but it did establish that it was not distinctive of the DAC and its licensees as of the relevant date. Accordingly, while the DGO members have used the "DD" designation, the Court held that it was not an infringement to do so.

Therefore, the DGO's application to strike the DAC Copyright Registrations was dismissed, the DGO was held not to have infringed the copyright owned by the DAC, and the "DD" certification mark was invalidated and struck from the Register of Trademarks. The Court refused to award aggravated punitive or exemplary damages, but awarded damages to DGO in the amount of $10,000. Costs were also awarded to DGO.

Industry News

CIPO is now offering a phone appointment service. Clients may now request a meeting with one of CIPO's Information Officers at the Client Service Centre.

CIPO announced that Austria and Singapore will join the Global Patent Prosecution Highway (GPPH) pilot. There are now 19 countries, including Canada, that are participating in the GPPH.

The BLG Life Sciences Group has published LIFESIGNS: Life Sciences Legal Trends in Canada, a Report on Intellectual Property, Litigation, Corporate Commercial legal trends and industry developments in Canada.

About BLG

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

In association with
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:
  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.
  • Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.
    If you do not want us to provide your name and email address you may opt out by clicking here
    If you do not wish to receive any future announcements of products and services offered by Mondaq you may opt out by clicking here

    Terms & Conditions and Privacy Statement (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

    Use of

    You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


    Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

    The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


    Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

    • To allow you to personalize the Mondaq websites you are visiting.
    • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
    • To produce demographic feedback for our information providers who provide information free for your use.

    Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

    Information Collection and Use

    We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

    We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to with “no disclosure” in the subject heading

    Mondaq News Alerts

    In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


    A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

    Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

    Log Files

    We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


    This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

    Surveys & Contests

    From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


    If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


    From time to time Mondaq may send you emails promoting Mondaq services including new services. You may opt out of receiving such emails by clicking below.

    *** If you do not wish to receive any future announcements of services offered by Mondaq you may opt out by clicking here .


    This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to

    Correcting/Updating Personal Information

    If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to

    Notification of Changes

    If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

    How to contact Mondaq

    You can contact us with comments or queries at

    If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at and we will use commercially reasonable efforts to determine and correct the problem promptly.

    By clicking Register you state you have read and agree to our Terms and Conditions