Expertise
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Practice Areas:
- Bar Admissions:
- Education:
- University of Toronto Faculty of Law (2009) JD
- McGill University (2005) MSc (Biology)
- McGill University (2001) BSc (Biology)
Details
- Bio
- Cases
- Associations
- Blog Posts
- News & Media
- Publications & Presentations
- Recognition
Andrew Moeser
is a partner at Lenczner Slaght.
Andrew’s practice is primarily focused on intellectual property litigation. In patent matters, Andrew has experience with industries such as pharmaceutical and biologics, information technology, and oil and gas. In trademark, copyright, and trade secret matters, Andrew has represented clients in disputes relating to software, gaming, and beauty products. Andrew also has experience in commercial litigation relating to environmental contamination, and in judicial reviews in regulated industries such as pharmaceuticals and renewable energy.
Andrew has represented clients before all levels of court in Ontario, the Federal Court and Federal Court of Appeal, and the Alberta Court of Appeal.
He has also acted pro hac vice in proceedings in the United States and has extensive experience as part of international teams litigating large cross-border disputes.
Andrew is also an Adjunct Professor at the University of Toronto Faculty of Law, where he supervises a legal clinic providing assistance to the Structural Genomics Consortium, a not-for-profit public-private partnership that engages in precompetitive basic science research to facilitate and enable the discovery of new medicines.
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Counsel to Rovi Guides (a subsidiary of Xperi Holding Corporation) in a patent infringement action involving four patents related to digital entertainment technologies.
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Merck Sharp & Dohme Corp et al v JAMP Pharma Corporation
Counsel to JAMP in NOC action relating to JANUVIA (sitagliptin), a medication used to control high blood sugar in people with type 2 diabetes.
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Sakab Saudi Holding Company v Al Jabri et al
Counsel to Canadian cybersecurity suppliers in dispute between Saudi companies and former Minister of Saudi government. Successfully set aside Norwich Orders affecting the Canadian suppliers that had been obtained on an ex parte basis.
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Eli Lilly Canada Inc v Mylan Pharmaceuticals ULC
Counsel to Mylan in multiple related NOC proceedings and appeals relating to patents over CIALIS® (tadalafil); first generic challenge to CIALIS®. Mylan successfully justified allegations of invalidity and non-infringement in respect of a dosage patent and a formulation patent, which allowed Mylan to enter the market four years earlier than it would have otherwise. Lilly abandoned its appeal of the decision on the dosage patent, and the decision on the formulation patent was upheld by the Federal Court of Appeal. (Prior to joining Lenczner Slaght)
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Teva Pharmaceutical Industries Ltd v Mylan Pharmaceuticals ULC
Counsel to Mylan in a NOC proceeding relating to a composition of matter patent over COPAXONE® (glatiramer acetate – a random polypeptide); this was the first and only Canadian generic challenge to COPAXONE®. Teva and Mylan also litigated in the U.S., U.K., Netherlands and elsewhere over this blockbuster product. Canadian proceeding settled before hearing. (Prior to joining Lenczner Slaght)
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Halliburton Energy Services Inc v BJ Services Company
Counsel to Halliburton Energy Services in patent infringement litigation regarding wellbore completion patented methods used in North American shale formations. McKool Smith and Gilbert’s formed a cross-border team, and the U.S. and Canadian actions were launched on same day. The proceedings were converted to an arbitration. (Prior to joining Lenczner Slaght)
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Bayer Inc v Fresenius Kabi Canada Ltd
Counsel to Fresenius in a NOC proceeding relating to patents over AVELOX I.V.TM (moxifloxacin hydrochloride). On a preliminary motion, Fresenius successfully struck the portion of the proceeding relating to a formulation patent. (Prior to joining Lenczner Slaght)
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Skypower CL 1 LP v Minister of Energy
Counsel to Skypower, a renewable energy developer, in a judicial review relating to an Ontario government program for renewable energy projects. (Prior to joining Lenczner Slaght)
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Counsel to Microsoft in copyright infringement litigation relating to unlicensed software. Microsoft was awarded statutory and exemplary and punitive damages. (Prior to joining Lenczner Slaght)
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AmTote International v Exacta Systems
Counsel to AmTote, a subsidiary of The Stronach Group, in trade secret and false advertising litigation relating to historical horse racing gaming technology. (Prior to joining Lenczner Slaght)
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University of Toronto Faculty of Law - Adjunct Professor, Clinical Legal Education: Externship - Structural Genomics Consortium (2016 - present)
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Intellectual Property Institute of Canada - Conference Committee (2021-present); CPD Committee (2021-present)
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The Advocates’ Society
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Canadian Bar Association
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Ontario Bar Association
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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.
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Partial Summary Judgment Narrows Patent Infringement Case
The recent patent infringement case of Kobold Corporation v NCS Multistage Inc is interesting for two reasons: (1) it shows how a summary judgment motion can advance a case even if certain issues require a full trial; and (2) it is the first time a court has interpreted the defence of prior use since the 2018 amendments to section 56 of the Patent Act. This post considers the use of summary adjudication. Click here to read our companion post which considers the substance of the prior use defence.
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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.
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As part of our series on summary adjudication, we previously commented on the Federal Court’s recent use of a summary trial to resolve a patent infringement dispute. The abbreviated procedure of a summary trial addresses many of the Federal Court’s traditional concerns with summary judgment (e.g., lacking live evidence).
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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.
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The Federal Court of Appeal has historically held that summary judgment is usually not the preferred means of resolving patent infringement actions. These cases are inherently complex and technical, and usually involve expert evidence. In the Federal Court of Appeal’s view, a trial judge who has had the opportunity to hear all of the evidence live is best suited to resolve these disputes (see Suntec Environmental Inc v Trojan Technologies Inc).
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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.
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Legal 500 Highlights Lenczner Slaght’s Litigation Dominance
Legal 500 recognizes Canada’s leading litigation firm as “a regular fixture in the country’s ground-breaking contentious cases”.
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Lenczner Slaght Welcomes New IP Partner
Canada’s leading litigation firm adds Andrew Moeser to its formidable Intellectual Property team.
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Our expert IP litigators, Sana Halwani and Andrew Moeser, were invited to speak at IPIC's Annual Conference.
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IP Culture Shift: The Rise of Summary Disposition
Andrew Moeser authored the Lexpert article "IP Culture Shift: The Rise of Summary Disposition". In this article, Andrew comments on the shift towards summary disposition in Canadian IP litigation.
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Commissioned by the Federal Government (Innovation, Science and Economic Development Canada), Andrew Moeser prepared a report on strategies to integrate and exploit intellectual property for idea-based enterprises.
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A trust approach for sharing research reagents
Andrew Moeser co-authored the article “A trust approach for sharing research reagents”, which was published in Science Translational Medicine: Volume 9, Issue 392.
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Patents and Pills: Linkage, Litigation and Generic Drug Approval
Andrew Moeser lectured at the Faculty of Law, University of Toronto, Pharmaceutical Governance Course.
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Canada: Modernisation and Flux
Andrew Moeser co-authored the article Canada: Modernisation and Flux, which was published in IAM Magazine – IP Value: 2013. The article provided a review of Canada's IP regime, with discussions of the 2012 Copyright legislative reform and Supreme Court decisions, nontraditional Trademarks updates, Canada's unique sound prediction disclosure requirement, and the role of IP in Canada's trade talks.
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Andrew Moeser’s article A shift in the Canadian law of obviousness: a comment on Sanofi- Synthelabo Canada Inc. v. Apotex Inc., was published in the University of Toronto Faculty of Law Review: Volume 67.
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The Legal 500 Canada (2022)
Intellectual Property (Recommended Lawyer)