Teva Canada Innovation and Teva Pharmaceutical Industries Ltd.
v. Apotex Inc., 2014 FC 1070 Drug: rasagiline AZILECT® Apotex has successfully alleged that Teva's patent to
"Stable Compositions Containing [Rasagiline]" will not be
infringed by Apotex's use of a formulation containing an
excipient that is not a "pentahydric or hexahydric
alcohol". The specific identity of the excipient was redacted
and Apotex has to notify the Court within 48 hours of obtaining an
NOC so that the identity of the excipient may be revealed in the
reasons. In a decision that turned on the facts, the Court construed the
term "pentahydric or hexahydric alcohol" to mean alcohols
that contain in total five or six hydroxyl groups. The Apotex
products were not found to infringe because they contain more than
60% by weight of the redacted excipient. In light of this finding of non-infringement, the Court declined
to consider the arguments relating to the validity of the
patent.
Allergan, Inc. v. Apotex Inc., 2015 FC 367 Drug: gatifloxacin and gatifloxacin ophthalmic solution Allergan brought a motion to enforce a settlement agreement that
Apotex denies was made. Allergan had sued for infringement and
Apotex wrote a without prejudice letter offering terms to settle
the proceeding. The terms included an undertaking to only use
gatifloxacin API for regulatory and/or experimental use, not
commercial use, until the patent expires. The Court found it had jurisdiction to determine whether
settlement had been reached. The Court reviewed the history of the
correspondence between the parties and found that the parties had
essentially reached an agreement early on in the negotiations, and
the later correspondence was "directed largely to
trivia". Finding an offer and acceptance, the Court ordered
enforcement of the settlement agreement.
Sanofi-Aventis, et al. v. Apotex Inc., Supreme Court
Docket 35886 On Monday, April 20, 2015, the Supreme Court of Canada heard the
appeal of 2014 FCA 68, relating to the issue
of damages under section 8 of the PM(NOC) Regulations. The summary
of the appeal provided by the Court states that one issue was
whether lower courts erred in interpreting s. 8 of the PM(NOC)
Regulations as providing a damages framework that overcompensates
claimants and leads to judicial inconsistencies. The Supreme Court has
dismissed the case from the bench, and the oral judgement will
be available within 48 hours.
Eclectic Edge Inc. v. Victoria's Secret Stores Brand
Management, Inc., 2015 FC 453 Eclectic Edge sought to register four marks based on use in
Singapore and on proposed use in Canada. Each was refused by the
Registrar. The four applications concerned VALENTINE SECRET,
VALENTINE SECRET & DESIGN, VALENTINE SECRET LINGERIE &
DESIGN and VS A SECRET THAT WOMEN LOVE & DESIGN. The proposed
marks were to be used with women's clothing, undergarments,
etc. Victoria's Secret had opposed. On appeal to the Federal Court, the first three listed
applications above were allowed. Only VS A SECRET THAT WOMEN LOVE
& DESIGN was refused for likely being confusing with the
Respondent's VS and VICTORIA SECRET marks. New evidence filed on appeal included evidence that
"secret" was a commonly appearing word for trademarks,
applications for trademarks, and business names. As a result, the
Court found a purchaser would focus on the remaining part of the
marks to distinguish the two. For example, given the differences in
appearance and sound between the VICTORIA'S SECRET mark and the
Respondent's VALENTINE SECRET mark, the Court held there was no
likelihood of confusion. As to the last VS mark, the Court found that the
Respondent's marks VS SPORT and VS PRO is extremely well known
as the abbreviation of the VICTORIA'S SECRET marks, and the
proposed mark would likely be confusing. Class Action for Copyright in Plans of Survey Remains Certified
on Appeal
Keatley Surveying Ltd. v. Teranet Inc., 2015 ONCA
248 A proposed class proceeding claims that land surveyors retain
copyright in the plans of survey they prepare and register in
Ontario's land registry system and that the provision of copies
of surveys to users of the system infringes the surveyors'
copyright. The class proceedings judge had refused to certify the action,
but on appeal to the Divisional Court, the action was certified on
the basis of a revised class definition and revised common issues.
Now, the Court of Appeal for Ontario has sided with the Divisional
Court, and the revised litigation plan is adequate and may
proceed. 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.
PATENT CASES
Formulation Patent Found Not to be Infringed as a Redacted
Excipient Was Not a "Pentahydric or Hexahydric
Alcohol"
Court Enforces a Settlement Agreement Even Though One Party
Denied Such an Agreement Existed
Ramipril Section 8 Appeal Dismissed From the Bench by the
Supreme Court of Canada
TRADEMARK CASES
No Likelihood of Confusion Found for VALENTINE SECRET
Application
COPYRIGHT CASES
ARTICLE
27 April 2015
Formulation Patent Found Not To Be Infringed As A Redacted Excipient Was Not A "Pentahydric Or Hexahydric Alcohol" (Intellectual Property Weekly Abstracts Bulletin (Week Of April 20, 2015)
In a decision that turned on the facts, the Court construed the term "pentahydric or hexahydric alcohol" to mean alcohols that contain in total five or six hydroxyl groups.