Canada: Formulation Patent Found Not To Be Infringed As A Redacted Excipient Was Not A "Pentahydric Or Hexahydric Alcohol" (Intellectual Property Weekly Abstracts Bulletin (Week Of April 20 2015))

Last Updated: April 22 2015
Most Read Contributor in Canada, September 2016

Patent  Cases

Formulation Patent Found Not to be Infringed as a Redacted Excipient Was Not a "Pentahydric or Hexahydric Alcohol"

Teva Canada Innovation and Teva Pharmaceutical Industries Ltd. v. Apotex Inc., 2014 FC 1070

Drug: rasagiline AZILECT®

Apotex has successfully alleged that Teva's patent to "Stable Compositions Containing [Rasagiline]" will not be infringed by Apotex's use of a formulation containing an excipient that is not a "pentahydric or hexahydric alcohol". The specific identity of the excipient was redacted and Apotex has to notify the Court within 48 hours of obtaining an NOC so that the identity of the excipient may be revealed in the reasons.

In a decision that turned on the facts, the Court construed the term "pentahydric or hexahydric alcohol" to mean alcohols that contain in total five or six hydroxyl groups. The Apotex products were not found to infringe because they contain more than 60% by weight of the redacted excipient.

In light of this finding of non-infringement, the Court declined to consider the arguments relating to the validity of the patent.

Court Enforces a Settlement Agreement Even Though One Party Denied Such an Agreement Existed

Allergan, Inc. v. Apotex Inc. , 2015 FC 367

Drug: gatifloxacin and gatifloxacin ophthalmic solution

Allergan brought a motion to enforce a settlement agreement that Apotex denies was made. Allergan had sued for infringement and Apotex wrote a without prejudice letter offering terms to settle the proceeding. The terms included an undertaking to only use gatifloxacin API for regulatory and/or experimental use, not commercial use, until the patent expires.

The Court found it had jurisdiction to determine whether settlement had been reached. The Court reviewed the history of the correspondence between the parties and found that the parties had essentially reached an agreement early on in the negotiations, and the later correspondence was "directed largely to trivia". Finding an offer and acceptance, the Court ordered enforcement of the settlement agreement.

Ramipril Section 8 Appeal Dismissed From the Bench by the Supreme Court of Canada

Sanofi-Aventis, et al. v. Apotex Inc., Supreme Court Docket 35886

On Monday, April 20, 2015, the Supreme Court of Canada heard the appeal of 2014 FCA 68, relating to the issue of damages under section 8 of the PM(NOC) Regulations. The summary of the appeal provided by the Court states that one issue was whether lower courts erred  in interpreting s. 8 of the PM(NOC) Regulations as providing a damages framework that overcompensates claimants and leads to judicial inconsistencies.

The Supreme Court has dismissed the case from the bench, and the oral judgement will be available within 48 hours.

Trademark  Cases

No Likelihood of Confusion Found for VALENTINE SECRET Application

Eclectic Edge Inc. v. Victoria's Secret Stores Brand Management, Inc. 2015 FC 453

Eclectic Edge sought to register four marks based on use in Singapore and on proposed use in Canada. Each was refused by the Registrar. The four applications concerned VALENTINE SECRET, VALENTINE SECRET & DESIGN, VALENTINE SECRET LINGERIE & DESIGN and VS A   SECRET THAT WOMEN LOVE & DESIGN. The proposed marks were to be used with women's clothing, undergarments, etc. Victoria's Secret had  opposed.

On appeal to the Federal Court, the first three listed applications above were allowed. Only VS A SECRET THAT WOMEN LOVE & DESIGN was refused for likely being confusing with the Respondent's VS  and VICTORIA SECRET  marks.

New evidence filed on appeal included evidence that "secret" was a commonly appearing word for
trademarks, applications for trademarks, and business names. As a result, the Court found a purchaser would focus on the remaining part of the marks to distinguish the two. For example, given the differences in appearance and sound between the VICTORIA'S SECRET mark and the Respondent's VALENTINE SECRET mark, the Court held there was no likelihood of confusion.

As to the last VS mark, the Court found that the Respondent's marks VS SPORT and VS PRO is extremely well known as the abbreviation of the VICTORIA'S SECRET marks, and the proposed mark would likely be confusing.

Copyright Cases

Class Action for Copyright in Plans of Survey Remains Certified on Appeal

Keatley Surveying Ltd. v. Teranet Inc., 2015 ONCA 248

A proposed class proceeding claims that land surveyors retain copyright in the plans of survey they prepare and register in Ontario's land registry system and that the provision of copies of surveys to users of the system infringes the surveyors' copyright.

The class proceedings judge had refused to certify the action, but on appeal to the Divisional Court, the action was certified on the basis of a revised class definition and revised common issues. Now, the Court of Appeal for Ontario has sided with the Divisional Court, and the revised litigation plan is adequate and may proceed.

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