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
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.
Withdrawal of trademark applications makes appeal of a rejected
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withdrawn the trademark applications without prejudice, and took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
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.
Later made architectural drawings did not infringe earlier made
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.
The Federal Court dismissed a motion by Apotex seeking particulars from Allergan's pleading relating to the prior art, inventive concept, promised utility and sound prediction of utility of the patents at issue.
Last year we saw the Canadian Courts release trademark decisions that granted a rare interlocutory injunction, issued jailed sentences for failure to comply with injunctive relief, grappled with trademark and internet issues...
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