Canada: Court Awards Damages For Patent Infringement In Second Part Of A Bifurcated Decision (Intellectual Property Weekly Abstracts - Week Of June 27, 2016)

Last Updated: July 4 2016
Article by Chantal Saunders, Beverley Moore and Adrian J. Howard

Most Read Contributor in Canada, September 2016

Patent Decisions

Court awards damages for patent infringement in second part of a bifurcated decision

Janssen Inc. v. Teva Canada Limited, 2016 FC 593

Drug: levofloxacin

The Court has completed its assessment of damages for an earlier finding of patent infringement by the Federal Court (2006 FC 1234) which was upheld on appeal (2007 FCA 217).

There were still a few outstanding issues to decide. One was that Janssen US argued it was a person claiming under the patentee, which Teva denied. The Court reviewed the jurisprudence and determined that a party is claiming under when:

  • The person is one who, as a user, an assignee, a licensee or a lessee has a title or a right that can be traced back to the patentee;
  • The licensee is exclusive or non-exclusive;
  • The licence is proved but it need not exist in writing;
  • The claim is one in respect of a use in Canada and not elsewhere in the corporate chain.

After reviewing the evidence, the Court concluded that Janssen US has proven it has the licence or permission, by acquiescence, of Daiichi, to be involved in the chain of the sale of tablets made in Puerto Rico, through Janssen US to Janssen Canada. It was found to be immaterial whether Janssen US had title, even momentarily, to the tablets in Canada.

The Court then reviewed the submissions as to damages, looking at the marketplace as it existed in fact and what the "but for" world would have looked like. This analysis turned largely on the facts, on the submissions of experts, and the Court's preference for each side's witnesses.

Damages were ultimately awarded for the period of infringement, as well as beyond. Losses to prescription sales were terminated two months after the patent expired and hospital losses terminated about a year after the patent expired.

Pre-judgment interest was awarded, but not compounded, and a further claim to lost profits was not allowed on the evidence.

Teva unsuccessfully argued that Janssen failed to mitigate its damages, and in the end, the Court awarded damages, inclusive of pre-judgment interest to both Janssen US and Janssen Canada.

Trademark Decisions

Withdrawal of trademark applications makes appeal of a rejected opposition moot

Canada Bread Company Limited v. La Tortilla Factory, 2016 FC 704

Canada Bread Company appealed a decision of the TMOB that rejected its opposition to two trademark applications, one for SMART & DELICIOUS WRAPS, the other for SMART & DELICIOUS TORTILLAS, both in association with "tortillas and sandwich wraps". The appeal has been dismissed for mootness.

La Tortilla Factory wrote to the Court to indicate that it had withdrawn the trademark applications without prejudice, and took the position that the matter was now moot. La Tortilla Factory did not appear at the hearing.

The Court found that the appeal was moot, despite Canada Bread's argument that there are no statutory provisions in the Trade-marks Act which provide for the withdrawal of a trademark application once it has been filed. Canada Bread further argued that the TMOB was functus officio and only the Federal Court had the authority to give effect to the withdrawal of the trademark applications.

Following prior jurisprudence, the Court found that where there is no longer an application for the trademark that gave rise to the litigation, there is no longer any source of dispute and the appeal is moot. The Court was unwilling to side with the argument that an application can never be withdrawn from the registration process, notwithstanding the intentions of the parties.

Copyright Decisions

Later made architectural drawings did not infringe earlier made conceptual drawings

MacNutt v. Acadia University et al., 2016 NSSC 160

A claim of copyright infringement in a series of concept drawings for a new building has been dismissed by the Supreme Court of Nova Scotia.

The applicant provided concept drawings for a potential expansion of an existing building at Acadia University. Once funding was secured, the University hired an architect to proceed with the project. At a public information meeting, the applicant's concept drawings were shown to the public, and they were published in a newspaper article concerning the meeting. No attribution was given to the applicant.

The applicant then sought damages for copyright infringement. The Court dismissed the claim, finding that the concept plans are distinctly different from the architect's design. To the extent there are any similarities, they were found to be a consequence of the mimic architecture in the Georgian style required by Acadia and the Town of Wolfville.

Furthermore, the Court questioned whether these respondents were involved in any unauthorized taking of the work by the named respondents. The Court noted that none of the respondents provided the concept drawings to the newspaper and the respondents did not display the drawings at the public meeting. It was found that, on a balance of probabilities, the named respondents were not involved, even if there was an infringement.

Thus, the application was dismissed.

Industry News

Health Canada published the Therapeutic Products Directorate Statistical Report 2015/2016.

Health Canada published a Notice — Validation rules for regulatory transactions submitted to Health Canada in the electronic Common Technical Document (eCTD) format.

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