Dr. Falk Pharma GMBH v. Canada (Commissioner of
Patents), 2014 FC 1117 The Applicant, Dr. Falk Pharma GMBH sought an order pursuant to
s. 52 of the Patent Act to vary inventorship on a patent.
The Application was uncontested and the Respondent did not appear.
Affidavit evidence was filed indicating that the omission was
inadvertent and due to an absence of knowledge of the different
requirements for inventorship under Canadian and German laws. The
Court was satisfied with the evidence and granted the order. Gilead Sciences Inc. v. Idenix Pharmaceuticals
Inc., 2014 FCA 247 Idenix brought a motion to amend its pleadings. The Prothonotary
granted leave to make certain amendments, however denied leave to
make certain others relating to s. 53 of the Patent Act.
Idenix appealed that decision to a Federal Court Judge, who granted
the appeal. Gilead appealed the Judge's decision to the Federal
Court of Appeal (FCA). The FCA denied the appeal. The FCA was not persuaded that the
Judge's decision was plainly wrong. The Judge held that the
question of whether the disclosure of the names of the inventors of
the patent in the petition is a material allegation pursuant to s.
53(1) of the Patent Act is a matter that should be
considered by the trial judge. Pfizer Canada Inc. v. Teva Canada Limited, 2014 FCA 244 Drug: amlodipine In this case, the Prothonotary refused to strike a Statement of
Claim brought pursuant to s. 8 of the NOC Regulations, and
this decision was upheld by the Federal Court Judge (decision here). The FCA upheld the decision. The underlying facts alleged by Teva are complicated and relate
to a number of different patents and proceedings. They are set out
in the addendum to the Federal Court decision cited above. However,
a prohibition order was granted to Pfizer, against Teva, on appeal
of one NOC Proceeding and that patent was later found invalid in an
impeachment action brought by Teva. The FCA held that this was not an appropriate case to resolve
any uncertainty in the test with respect to de novo
appeals of Prothonotary's decisions. Furthermore, the FCA held
that the law relating to s. 8 of the NOC Regulations is
still evolving, thus it is not plain and obvious that the claim is
doomed to fail. Source Media Group Corp. v. Black Press Group
Ltd., 2014 FC 1014 This was a motion for summary judgment claiming relief under the
Trademarks Act for the infringement of the Plaintiff's
registered trademark NEW HOME LIVING arising from the
Defendant's unauthorized use of the trademark NEW HOME
LIVING. The Defendants admitted using the same registered trademark of
the Plaintiff, NEW HOME LIVING, up until 2012. In 2012, the
Defendants admitted that they stopped using "New Home
Living" on its publication, but continued to use a reference
to the website newhomelivingbc.com until 2014. The Court therefore
found that the Defendants have infringed, as admitted, the
Plaintiff's trademark during this period, and have passed off
their publication, both in print and online form, as being
associated or connected to the Plaintiff's trademark. The Court
held, however, that there was insufficient evidence before it to
support a finding of depreciation of goodwill. The Plaintiff also argued that the Defendants should not have
included settlement discussions in their submissions, as these were
subject to a settlement privilege. The Defendants provided a letter
from the Plaintiff's counsel which discusses an offer made by
the Defendants. The Court held that the Defendants could have
limited their comments to the fact that they participated in
settlement discussions, and that such disclosure, as made by the
Defendants, breached the settlement privilege and should not be
encouraged. The Court held that the Defendants demonstrated a
"reproachable attitude" in using the Plaintiff's
trademark, which added to the damages of infringement sought. While
no evidence of loss and goodwill was submitted, the Plaintiff
submitted that an award in the $15,000 to $25,000 range would be
adequate. The Court considered applicable case law, and noting the
Defendants' "attitude of persistently using the registered
trademark", found that damages in the amount of $15,000 were
reasonable. In respect of the Defendants' inclusion of
documents pertaining to settlement discussions, the Court held that
while the actions were inappropriate, the Defendants' conduct
did not rise to a level where cost sanctions were necessary. In
view of the Defendants' lack of meaningful participation in the
proceedings, failure to stop using the trademark reference online,
and the fact that "the proceedings should not have gone that
far", the Court granted costs in a lump sum amount of $13,000
(plus post-judgment interest at 5%) in favour of the Plaintiff. Industry Canada has announced that the PM(NOC)
Regulations will be amended to address the exclusion of
certain pharmaceutical patents from Health Canada's Patent
Register following recent Federal Court and Federal Court of Appeal
decisions relating to patents claiming single medicinal ingredients
found in combination drugs. There will be a public consultation
once the proposed amendments are pre-published in the Canada
Gazette. The BLG Life Sciences Group has published
LIFESIGNS: Life Sciences Legal Trends in Canada, a Report on
Intellectual Property, Litigation, Corporate Commercial legal
trends and industry developments in Canada.
Patent Cases
Court Grants Order Adding Inventor
Patent Infringement Cases
Pleadings Amendment re s. 53 Allowed – Trial Judge to
Determine Materiality of Inventors Names
S. 8 Case not Struck, Despite Prohibition Order Having Issued
in Underlying S. 6 Proceeding
Trademarks Decisions
Motion for Summary Judgment Granted: Court Awards $15,000 in
Damages, $13,000 in Costs
Industry News