Patent Decisions
An unsuccessful defendant is not entitled to elect an accounting of profits to shield itself from an award of damages
Bayer Inc. v Cobalt Pharmaceuticals Company, 2016
FC 1192
On September 7, 2016, the Court held that Bayer's patent was
valid and infringed (
2016 FC 1013; our summary here). The parties were given an
opportunity to make written submissions regarding Bayer's
entitlement to elect between damages and an accounting of
profits.
Apotex submitted that it should be entitled to make the election,
and that Bayer should be restricted to an accounting of profits.
The Court disagreed finding that the award of an equitable remedy,
such as an accounting of profits, is at the Court's discretion,
subject to the principles governing its availability. The Court
noted that an unsuccessful defendant cannot invoke the Court's
equitable jurisdiction to shield itself from an award of damages.
Rather, at most, an unsuccessful defendant may oppose the grant of
an equitable remedy based on considerations that have been
recognized in the jurisprudence.
Bayer was entitled to damages and the parties agreed that an
accounting of profits may also be an appropriate remedy. Therefore,
the Court held that Bayer may elect between damages and an
accounting of profits following discovery.
Appeal relating to double patenting and sufficiency of tadalafil patent dismissed
Apotex Inc. v. Eli Lilly Canada Inc., 2016 FCA 267
The Federal Court of Appeal considered an appeal from Apotex relating to double patenting and insufficiency of a patent claiming the use of tadalafil to treat erectile dysfunction. The Court of Appeal had previously considered the issue of double patenting of this patent with a different generic company, Mylan ( 2016 FCA 119; our summary here). The Court of Appeal dismissed Apotex's argument that the Mylan case was wrongly decided, and did not accept Apotex's arguments relating to insufficiency. The appeal was dismissed with costs.
Supreme Court Updates
Wael Maged Badawy v. Law Society of Alberta, et
al. (SCC Docket No. 37165)
The Supreme Court of Canada announced that judgment in the
following application for leave to appeal will be delivered on
Thursday, November 10, 2016. The following is the summary provided
by the Supreme Court:
Civil procedure – Case management – Applicant seeking
leave to add third parties, to file affidavit of documents and to
have procedure set for summary trial – Whether Law Society of
Alberta and Alberta Lawyers Insurance Association failed in their
mandate and role in protecting the public from abuse and in
advertizing, marketing and selling legal services using
applicant's registered trademark without permission or
authorization.
Mr. Badawy is a plaintiff and a defendant by counterclaim in an
action he launched in the Federal Court. Mr. Badawy sought leave to
file a third party claim against the Alberta Law Society and the
Alberta Law Insurance Association. He also requested leave to file
an affidavit of documents and to have a summary trial procedure
set.
Industry News
On October 31, 2016, Bill C-30 titled "Canada-European
Union Comprehensive Economic and Trade Agreement Implementation
Act" was introduced in the House of Commons. This Bill seeks
to implement the Comprehensive Economic and Trade Agreement between
Canada and the European Union and its Member States, done at
Brussels on October 30, 2016.
The latest publication of the Bill can be found here.
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