Canada: FCA Dismisses Appeal; Upholds Finding That Obviousness Allegations Are Justified (Intellectual Property Weekly Abstracts Bulletin (Week Of September 21, 2015)

Last Updated: September 30 2015
Article by Chantal Saunders, Beverley Moore and Adrian J. Howard

Most Read Contributor in Canada, September 2016

NOC Proceedings

FCA Dismisses Appeal; Upholds Finding that Obviousness Allegations are Justified

Alcon Canada Inc. v. Actavis Pharma Company, 2015 FCA 191

Drug: moxifloxacin

The Federal Court of Appeal (FCA) issued two sets of reasons stemming from two appeals between these companies. Both appeals were from the same Federal Court decision (here, summary here). In this case, the Application Judge held that the allegations as to obviousness were justified. The FCA dismissed the appeal.

The FCA held that the patent related to a new dose for a known use of a known compound. The FCA held that as long as a judge does not misidentify or misapply the legal test, the deferential standard of palpable and overriding error applies to the analysis. Furthermore, the FCA held that if the judge's reasons are alive to the issues, the judge is assumed to have considered all of the evidence and there is no palpable and overriding error due to a failure to reference a particular piece of evidence. The FCA held that its role was not to re-weigh evidence on appeal.

FCA Dismisses Appeal; Upholds Grant of Prohibition Order in Face of Lack of Sound Prediction and Obviousness Allegations 

Actavis Pharma Company v. Alcon Canada Inc., 2015 FCA 192

Drug: moxifloxacin

In the second case, Actavis appealed the grant of a prohibition order by the Application Judge. At issue was whether the patent was invalid for lack of sound prediction and utility and for obviousness. The Application Judge held that the allegations were not justified and the FCA dismissed the appeal.

The patent claimed moxifloxacin and its stereoisomers and mixtures. The FCA held that construction of the patent is a matter of law, to be reviewed on a correctness standard; whereas sound prediction and obviousness are matters of mixed fact and law, to be reviewed on a standard of palpable and overriding error. The FCA held that the Appellant was essentially re-arguing its case, asking it to prefer different evidence.

Court Refuses Prohibition Order; Finds Allegations of Non-infringement and Obviousness Justified

Eli Lilly Canada Inc. v. Apotex Inc.,2015 FC 1016

Drug: tadalafil

The Federal Court dismissed the proceeding, refusing to grant Lilly a prohibition order in relation to its formulation patent. The Court held that the allegations of non-infringement and obviousness were justified, however, the allegation of invalidity due to lack of utility was not justified. Furthermore, the proceeding was not an abuse of process. 

Trademark Decision

When Assessing Confusion in Relation to Word marks, One Must Look Beyond any Single Use to the Entire Scope of the Registration

Constellation Brands Inc. v. Domaines Pinnacle Inc., 2015 FC 1083

The Federal Court granted an appeal from the Trademarks Opposition Board (TMOB); quashed its decision and remitted the matter back for further determination. One of the applicants had registered the trademarks PINNACLES and PINNACLES RANCHES in association with wine. A second applicant, another winery, had used the mark PINNACLE under licence. They opposed the respondent's application for DOMAINE PINNACLE & DESIGN in association with inter alia apple based alcoholic beverages.  

The Court held that new evidence may be submitted on appeal, however the question remains: would the fresh evidence have materially affected the TMOB's findings or its exercise of discretion. That determination affects whether the Court will perform a de novo review, or consider the matter on a standard of reasonableness. In this case, the Court did not accept that the fresh evidence would have materially affected the decision.

However, the Court held that the TMOB made an error in its determination of the degree of resemblance between the marks, and that error impacted the TMOB's global analysis of the factors under the confusion test. The Court held that as long as the confusion analysis uses a registered word mark as the basis for the analysis, the teaching of the Supreme Court of Canada in Masterpiece, is pertinent and not distinguishable. In this case, the TMOB's analysis hinged on the visual element and the ideas suggested, when it should have taken into account that the registered word mark PINNACLE could have had different styles of lettering, colour or design.

Other Industry News

Health Canada has published Updates to the Guidance Document: Labelling of Pharmaceutical Drugs for Human Use.

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