Canada: Motion For Interim Injunction Dismissed For Failing To Establish Irreparable Harm (Intellectual Property Weekly Abstracts Bulletin – Week Of April 11)

PATENT CASES 

Motion for Interim Injunction Dismissed for Failing to Establish Irreparable Harm

University of California v I-Med Pharma Inc, 2016 FC 350

TearLab brought a motion for an interim injunction, with the hearing for an interlocutory injunction being scheduled in late April or May. TearLab is the exclusive licensee under the patent in issue and markets the TearLab Osmolarity System (TearLab System). The Court noted that almost all of the users of the TearLab System rent the system and have a contract that can be cancelled at the end of the first year or on the anniversary of each year, thereby allowing users to return the system if a competitor entered the market. The Court also described the approval process and the need to convince clinicians to use the system, noting the costs of such efforts. I-Med Pharma began to offer for sale a system, available in March 2016, that TearLab alleges falls within the scope of the claims of the patent in issue. TearLab brought the motion for an interim injunction to prevent I-Med Pharma from launching its system before the motion for an interlocutory injunction could be heard.

For an interim injunction, the Court noted that it is necessary for the moving party to demonstrate that the need for an injunction is urgent. The Court also set out that the test to be met on the motion was established by the Supreme Court of Canada in RJR MacDonald, namely that there is a serious issue to be tried, that the moving party will suffer irreparable harm if the injunction is not granted, and that the balance of convenience favours the granting of an injunction . The Court concluded that TearLab did not establish the irreparable harm or balance of convenience elements of the test. In particular, the Court found that the evidence was not provided by affiants qualified to establish that the harm could not be compensated by damages. The Court stated: "It is entirely understandable that, given the context of this dispute, TearLab fears it will suffer an unquantifiable loss of market opportunity, loss of an industry opportunity and potential customer opportunity, lost sales, and loss of goodwill. However, these fears need objective support from someone with the expertise to say that they cannot be quantified in the event that the injunction is not granted. Without such evidence, the alleged harm remains speculative."

The Court described the TearLab evidence as being from corporate witnesses and witnesses who provided evidence that was unsupported or outside their respective areas of expertise. The Court preferred the evidence of I-Med Pharma's witness. The motion was dismissed and costs are to be addressed after the motion for an interlocutory injunction.

Patent held to not be infringed based on the construction of the claims

Shire Canada Inc v Apotex Inc, 2016 FC 382
Drug: amphetamine mixed salts XR

Apotex sent a NOA to Shire alleging its patent was invalid and will not be infringed by Apotex. The issues were narrowed for the hearing, where issues of non-infringement, overbreadth, ambiguity, insufficiency and lack of utility were argued, as well as an argument that the claims were not relevant under the PM(NOC) Regulations because Shire's product does not fall within the scope of the claims.

Following a lengthy discussion on claim construction the Court found that Apotex will not infringe the patent and did not address the remaining allegations. The patent was described as claiming an extended-release by a combination of coated (delayed release) and uncoated (immediate release) tablets. In contrast, Apotex's product was described as achieving its extended-release characteristics first by a mechanism of diffusion (while in the stomach) and later by a mechanism of diffusion and erosion (once the tablets have entered the intestines).

In its discussion regarding non-essential elements, the Court held that the SCC in Free World Trust likely did not intend for a patentee to establish that a claim element is not essential by succeeding on just one part of the Improver test. The Court held that the SCC likely intended that, in order for a patentee to establish that a claim element is non-essential, it must show both (1) that on a purposive construction of the words of the claim it was clearly not intended to be essential, and (2) that at the date of publication of the patent, the skilled addressees would have appreciated that a particular element could be substituted without affecting the working of the invention.

It can be noted that Apotex advocated that their witnesses should be preferred because they were blinded to the NOA and never told Apotex's legal position. Apotex argued that since claim construction should precede analysis of issues like patent infringement and validity, exposing experts to information about the allegedly infringing product or the relevant prior art could improperly taint their analysis on claim construction. Shire argued blinding of experts is not a requirement and there is no principle of law whereby testimony of blinded experts must be favoured. The Court found that blinding has not been raised to the level of a legal principle, and is merely persuasive. If the opinion is well-reasoned, there may be no reason for the Court to be concerned if the witness was blinded to certain facts, but a concern may arise where the expert's opinion seems tortured or less well-reasoned.

The Court further noted that blinding is no guarantee that the expert evidence is reliable. It would not be difficult to seek opinions from a number of experts, keeping them all blind to unnecessary information, then selecting the one expert who provides the opinion that the party sought.

Motion to Strike and for Particulars Denied; Elevated Costs Ordered for Breach of Settlement Privilege

Stryker Corporation v. Umano Medical Inc., 2016 FC 378

Umano brought a motion to strike portions of the Statement of Claim, and in the alternative for further and better particulars. The motion further requested documents pursuant to Rule 206. The Court denied the motion in its entirety.

The Court held that in order to succeed in a motion to strike, the moving party must demonstrate, beyond doubt, that the case cannot possibly succeed at trial. In this case, the Court held that the Defendants are told which physical characteristics infringe, and are thus capable of reviewing the claims. Furthermore, there was no reason to find the claim of inducement has no reasonable chance of success. In addition, while the Court has held that allegations of wilful and knowing infringement are alone insufficient to support a claim for punitive damages, where those allegations are sufficiently supported in the statement of claim, the punitive damages claim can be maintained, as it is not for the Court on a motion to strike to determine the chances of success.

With respect to particulars, the Court held that in order to be successful on such a motion, details are required as to what information is needed for pleading and why the party would be unable to instruct counsel without such information. In this case, the affidavit did not contain such information. With respect to the Rule 206 request, the Court held that the fact that there may be documents in existence which relate to the issues in the pleadings, does not transform these documents into documents referred to in the pleading.

The Plaintiffs requested solicitor client costs in the amount of $10,000 because the Defendants disclosed in their motion materials, an offer to settle with particulars. The Plaintiffs contended this was a breach of settlement privilege which undermined their position on the issue before the Court. The Court held that this was a breach of confidence. However, although it was of the utmost serious nature, it did not undermine the Plaintiff's position on the merits of the case or on the request for particulars. But, this sort of behaviour ought to be discouraged, as it is in the nature of improperly affecting the course of justice. Thus costs from the high end of Column IV of Tariff B were ordered, payable forthwith.

NOC PROCEEDINGS

Witness' Evidence Given Less Weight because not Blinded to Patent or Issues; NOC Proceeding Dismissed

Allergan Inc. v. Apotex Inc., 2016 FC 344
Drug: gatifloxacin

Apotex sent a NOA in respect of a single patent, alleging obviousness and lack of utility. The Court held that allegation was justified.

In considering the evidence, the Court preferred the evidence of Apotex's expert witnesses. In particular, the Court held that greater weight is to be given to evidence on obviousness and patent construction from experts who have not seen the patent nor been apprised of the position of the litigants. The Court also held that Allergan's objections that Apotex's experts took the references cited in the NOA without doing their own search was without merit.

On the issue of obviousness, the Court agreed with Apotex's expert that a POSITA would have a fair and reasonable expectation that combining gatifloxacin with EDTA would produce an effective ophthalmic compound that would have the three advantages set out in the Patent. On the issue of utility, the Court agreed with Apotex's expert that those three advantages were promises. Despite several experiments being listed in the patent, utility was not held to be demonstrated as the claim at issue covered more compositions than those tested. Sound prediction was also held not to be established.

COPYRIGHT CASES 

Interlocutory injunction orders removal of 15 segments from published movie

Vancouver Aquarium Marine Science Centre v Charbonneau, 2016 BCSC 625

The BC Supreme Court has restrained the defendants from publishing the original version of their video entitled "Vancouver Aquarium Uncovered", ordering that only a modified version with 15 segments removed may be published. Those segments are alleged to be subject to copyright protection or were used in breach of contract.

In ordering the removal, the Court held that the questions relating to fair dealing were a matter for trial. This included the issue of whether there was a commercial purpose for the film, the defences of criticism or review, or whether the film was within the category of research or education.

TRADEMARK CASES 

Special Circumstances Found to Refuse Expungement of Trademark for Non-Use

The One Group LLC v. Gouverneur Inc. 2016 FCA 109

The Trademarks Opposition Board refused to expunge the trademark registration STK (the Trademark) owned by The One Group LLC (One Group) for non-use pursuant to section 45 of the Trademarks Act. The Court noted that One Group operates a number of restaurants under the name STK, and registered the Trademark in association with bar services; restaurants. After the registration of the Trademark, One Group entered into a number of discussions with different hotel chains, unsuccessfully seeking to establish a restaurant location in hotels that were to be built. When notice was received pursuant to section 45, One Group stated that it was close to reaching an agreement and on this basis, the Registrar did not expunge the trademark, finding special circumstances. The Registrar set out the criteria to be met for a finding of special circumstances, namely the length of time during which the trademark has not been used, whether the reasons for non-use were beyond the owner's control, and whether the owner has a serious intention to shortly resume use of the trademark.

On appeal, the Court found that the standard of review was reasonableness. The Court found that the Registrar applied the correct principles of law but that the evidence did not support the Registrar's decision, allowed the appeal and ordered the Registrar to expunge the trademark.

The Court of Appeal also found that the Registrar applied the applicable case law, focusing on whether there were special circumstances explaining the non-use of the Trademark. The Court of Appeal noted that the Registrar has expertise with respect to trademarks and deference should be shown on findings of fact, especially regarding the discretion given to the Registrar in determining special circumstances. The Court of Appeal concluded that the evidence could support the Registrar's finding and thus allowed the appeal, confirming the Registrar's decision to maintain the Trademark.

SUPREME COURT — LEAVES TO APPEAL

Pfizer Canada Inc., et al. v. Teva Canada Limited (36772) — dismissed

The Supreme Court has dismissed Pfizer's leave to appeal in Pfizer Canada Inc., et al. v. Teva Canada Limited (36772). The Supreme Court has provided the following summary of the case:

The applicant Pfizer Canada Inc. is a pharmaceutical company authorized to sell sildenafil citrate tablets in Canada under the name VIAGRA®, and the other applicants are affiliated companies (collectively, "Pfizer"). The respondent Teva Canada Limited ("Teva") is a pharmaceutical company which was called Novopharm Limited before February 2010. In August 2010, Teva and ratiopharm Inc. ("ratiopharm"), along with a few other companies, amalgamated under s. 185 of the Canada Business Corporations Act, R.S.C. 1985, c. C-44. The amalgamated company continued as Teva.

In 2012, following the dismissal of an application by Pfizer for a prohibition order relating to Teva's generic version of VIAGRA®, Teva-Sildenafil (formerly Novo-Sildenafil), Teva brought an action against Pfizer for damages under s. 8 of the Patented Medicines (Notice of Compliance) Regulations, SOR/93-133, seeking to recover the losses it allegedly suffered from Teva-Sildenafil's delayed entry into the market. Pfizer brought a motion for summary judgment, on the basis that Teva's action was barred by an agreement between Pfizer and ratiopharm Inc., entered into before the amalgamation, settling proceedings related to ratiopharm's generic version of VIAGRA®, ratio-Sildenafil. Teva also brought a motion for summary judgment, alleging that use of the agreement to preclude the action was not a genuine issue for trial.

Apotex Inc., et al. v. Merck & Co. Inc. (36655) — dismissed   

The Supreme Court has dismissed Apotex's leave to appeal from Apotex Inc. v. Merck & Co., Inc., 2015 FCA 171. The Supreme Court has provided the following summary of the case:

The respondents (collectively, "Merck") own the product-by-process 380 patent for the anti-cholesterol drug lovastatin ("AFI-1 process"), which they sold in Canada under the trade name Mevacor. The patent was issued to Merck in 1984 and expired on January 31, 2001. In 1993, the applicants (collectively, "Apotex") applied to the Minister of Health for a notice of compliance that would enable it to market a generic version of lovastatin in Canada. Apotex alleged it would not infringe the patent because it would use a process to produce lovastatin that would not fall within the scope of the patent ("AFI-4 process"). A notice of compliance was issued to Apotex on March 27, 1997. Later that year, Merck commenced an action against Apotex alleging infringement of the 380 patent. After a lengthy trial, the patent was held to be valid and infringed by Apotex. The judge found that Merck was entitled to compensatory damages rather than an accounting of profits. Following the exhaustion of all rights of appeal relating to the liability phase, the judge found that Merck was entitled to a total damages award of $119,054,327, plus pre-judgment and post-judgment interest. The judge rejected the argument advanced by Apotex that the availability of non-infringing lovastatin should be taken into account in assessing damages. This decision was upheld on appeal.

OTHER INDUSTRY NEWS

Health Canada has published a Guidance Document Questions and Answers: Plain Language Labelling Regulations.

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 Mondaq.com.

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

Authors
 
In association with
Related Topics
 
Related Articles
 
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
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
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

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 or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq 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 of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

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