Federal Court Refuses to Schedule a Summary Trial If No Significant Savings of Cost or Time

As part of our series on summary proceedings in IP cases, we previously commented on the Federal Court of Appeal’s guidance on when and how a court should determine if summary trial is appropriate. In this post, we consider Associate Judge Horne’s recent decision in Toronto-Dominion Bank v Dyas (“TD Bank”), which deals with when a Case Management Judge should schedule (or refuse to schedule) a summary trial.

Andrew Moeser & Alexis Vaughan | November 1, 2024

Who Owns This Patent? The FCA Says It’s as Clear as Mud

In its recent decision, Mud Engineering Inc v Secure Energy Services Inc, a divided Federal Court of Appeal considered the effect of the parties’ failure to prove ownership in the context of a summary trial. Though both the majority and the dissenting opinions agreed that the Patent Act creates a rebuttable presumption of ownership, they differed on which party should bear the burden of proving ownership once that presumption has been successfully rebutted and on the effect of that rebuttal on the underlying infringement action.

Sana Halwani, Andrew Moeser & Alexis Vaughan | September 9, 2024

Exploring the Boundaries of Patent Protection: Federal Court of Appeal Holds That Marketing Is Not “Use” Under the Patent Act

The Federal Court of Appeal’s decision in Steelhead v ARC upholds Justice Manson’s summary trial decision finding no infringement by ARC Resources of Steelhead’s 085 Patent. In summary, the FCA held that the marketing of an apparatus that – if built – would infringe the 085 Patent did not constitute “use” (or “exploiter” in the French version) under section 42 of the Patent Act, and therefore could not be infringement.

Sana Halwani, Jordana Sanft & Andrew Moeser | April 29, 2024

Pharma Patent Case Round-Up

If your 2024 has been too busy to keep up with caselaw, below we summarize and provide the key takeaways from pharmaceutical patent decisions that have been issued from the Federal Court and Federal Court of Appeal in the last two months.

Sana Halwani & Andrew Moeser | February 22, 2024

Insights on the Independence of Expert Evidence

In the recently released decision dTechs EPM Ltd v British Columbia Hydro and Power Authority and Awesense Wireless Inc, the Federal Court of Appeal (“FCA”) weighed in on the role and independence of experts in patent cases. In particular, the FCA provided guidance on (1) the role counsel may play in preparing expert reports; (2) an expert’s role in claim construction; and (3) the difference in the role of an expert where anticipation is alleged based on prior use versus prior publication.

May 31, 2023

Clarity on the Test for Inducing Infringement in Canadian Patent Law

Indirect infringement or “inducement” often arises in pharmaceutical patent infringement cases where a defendant generic manufacturer may not ultimately “use” the drug in question (i.e., directly infringe). Since 2011, the Federal Court of Appeal’s (“FCA”) Corlac Inc v Weatherford Canada Inc  decision has frequently been cited as the leading authority for the tripartate test for inducement. In 2020, the Federal Court suggested that Corlac had changed the law of inducement—particularly at the second step determining influence—thereby requiring “a higher threshold for establishing inducement than was applied in the earlier cases”. In the recent decision of Teva Canada Limited v Janssen Inc (“Paliperidone”), the FCA has rejected that interpretation of Corlac. The FCA held that Corlac incorporates the same principles of inducing infringement as had been established in cases dating back to 1906. In doing so, it overturned the lower Court’s inducement determination based on a supposed higher standard and found that the defendant was liable for inducement when the Corlac test was properly applied.

Jordana Sanft, Andrew Moeser & Martin Brandsma | April 13, 2023

Better Together – or Maybe Not

Some things just go better together and probably always will, as Luke Combs sings in ‘Better Together’. Like a cup of coffee and a sunrise; Sunday drives and time to kill. Multiple section 8 actions however have not made the cut. According to the recent decision of Justice Southcott in Apotex Inc v Janssen Inc, multiple actions for section 8 damages should not have common issues heard together.

Jordana Sanft & Andrew Moeser | November 3, 2022

Do I pay the same? Am I only streaming? Or is "making available" a separate, compensable claim?

Last week, the Supreme Court of Canada released its decision in SOCAN and Music Publishers of Canada v ESA, the latest instalment in a decade long battle about whether and how copyright owners should be compensated for making works available online (even if those works are not subsequently downloaded or streamed by a user).

Sana Halwani & Andrew Moeser | July 21, 2022

First Application of the New Prior Use Defence

On January 7, 2022, the Federal Court released the public reasons in Kobold Corporation v NCS Multistage Inc. This summary judgment motion is the first judicial consideration of the prior use defence since the substantial amendments to section 56 of the Patent Act in 2018. Our comments on the procedural aspects of this summary judgment motion are available in a companion post here.

Andrew Moeser & Kaitlin Soye | January 13, 2022

You can call my lawyer(s)?

For the first time, the Federal Court has dealt with the issue of whether a party is permitted to appoint co-solicitors of record. The Court held that a party may not appoint co-solicitors as of right, but it provided guidance on the circumstances in which co-solicitors may be permitted. It remains to be seen how “special” such circumstances must be, especially since such arrangements are not uncommon in modern practice.

Andrew Moeser & Jacqueline Chan | November 17, 2021

In PM(NOC) Litigation, the Pleadings Rule

Since the amendments to the PM(NOC) Regulations in 2017, both generic and brand side litigants have struggled with the question of whether the second person’s Notice of Allegation governs the issues in the proceeding, or the Statement of Defence. The Federal Court of Appeal has answered in this week’s decision in Sunovion Pharmaceuticals Canada Inc v Taro Pharmaceuticals Inc: it is the Statement of Defence.

Andrew Moeser & Veronica C. Tsou | June 11, 2021

Door Left Open for Use of Foreign Patent Prosecution History

Since its enactment in 2018, section 53.1 of the Patent Act has been the subject of much discussion. This provision allows courts tasked with construing the claims of a patent to consider communications previously made by the patentee to the Canadian Patent Office in the course of patent prosecution (known as the “prosecution history” or the “patent file wrapper”). Recently, the Federal Court has provided differing interpretations regarding the limitations of this section.

Andrew Moeser & Alexis Vaughan | January 25, 2021