Close Only Counts in Horseshoes: Federal Court of Appeal Reins in the PMPRB

The Federal Court of Appeal’s decision in Galderma Canada Inc v Canada (Attorney General) (“Galderma FCA”) arose from what seemed like a straightforward production order, but ended up providing clear guidance on the jurisdiction of Canada’s Patent Medicine Prices Review Board (PMPRB). The key takeaway: the PMPRB’s jurisdiction extends only to patented medicines, not all medicines.

Jordana Sanft & Jim Lepore | December 6, 2024

A New Test for the Validity of Subordinate Legislation: Auern’t You Glad the Supreme Court Weighed In?

When we think about the broad direction of government policy, we generally think about the statutes introduced by the legislature. However, the reality is that much of the laws that impact us are subordinate legislation: regulations, rules, and policies that are enacted by Ministers, boards and agencies, or other government actors pursuant to rule-making power provided to them under legislation. For nearly a decade, challenges to subordinate legislation were extremely challenging. The Supreme Court of Canada’s 2013 decision in Katz Group Canada Inc v Ontario (Health and Long‑Term Care) set a high bar for challenging such subordinate legislation. The Court in that case held subordinate legislation “must be ‘irrelevant’, ‘extraneous’ or ‘completely unrelated’ to the statutory purpose to be found to be ultra vires on the basis of inconsistency with statutory purpose.”

Jordana Sanft & Paul-Erik Veel | November 11, 2024

Fall Regulatory Round Up – The Shifting Shape of the Canadian Landscape

Fall Regulatory Round Up

Activity abounds on the regulatory landscape from modernization and transparency initiatives to consultations, collaborations, and even potential implementations. Our Fall Regulatory Round Up highlights significant developments for drug products and patents that are of interest to those in the life sciences and biotech spaces. We will be following these important regulatory initiatives as they continue to unfold and will provide updates of interest.

Cynthia L. Tape, Jordana Sanft & Corey McClary | September 30, 2024

Summary Judgment Still Appropriate for Certain Patent Infringement Claims

A desire to expedite patent disputes may result in a party pursuing summary adjudication. We have previously commented on a number of cases relating to the use of summary proceedings for resolving patent cases in Canada. In particular, in the Federal Court of Appeal’s 2022 decision in Gemak Trust v Jempak Corporation, the FCA held that summary judgment is not appropriate where there are serious issues with respect to the credibility of witnesses, and the Court observed more generally that “while patent infringement issues are not by definition excluded from the ambit of the summary judgment process, they tend to raise complex issues of fact and law that are usually better left for trial”. We noted that in Gemak, the FCA was tapping the brakes on a trend towards increased adoption of summary proceedings in patent cases, and that for parties interested in summary adjudication, summary trial may be a more attractive option, particularly where witness credibility, and especially expert credibility, is likely to be an issue.

Jordana Sanft & Andrew Moeser | May 15, 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

Policing Scope Creep: Relevance in Canadian Pharma Disputes for Section 8 Damages

In Canada, a generic pharmaceutical company can commence an action for damages under section 8 of the Patented Medicines (Notice of Compliance) Regulations (the “Regulations”), if it successfully defends a patentee’s claims in an earlier section 6 prohibition proceeding. Section 8 actions are often complex, requiring a determination of the alleged loss suffered by assessing a “but-for world” where the generic would have received regulatory approval and commenced sales at an earlier date, but for having been blocked by the operation of the Regulations. Depending on the drug(s) and patent(s) at issue, there may be several independent section 8 actions against a patentee, each started by a different generic plaintiff (see our previous post). When distinct section 8 actions are commenced pertaining to the same drug(s), patent(s), and patentee(s), issues as to relevance and scope of each action may arise. 

Jordana Sanft, Andrew Moeser & Martin Brandsma | April 12, 2024

Sniff, Kleenex Is Snuffed Out of Canada

On August 25, 2023, Canadians were advised that KLEENEX was blowing out of town and would no longer be available in Canada (see Globe & Mail article).

Jordana Sanft | August 30, 2023

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

Let’s Chat(GPT)

The use of generative artificial intelligence (AI) is on the rise and is receiving significant attention across disciplines and industries. The impact of generative AI spans various fields such as healthcare, gaming, education, marketing, visual arts, literature, music, banking and fashion, to name few. In the context of intellectual property law, where the focus is on innovation and creativity, generative AI raises countless complex questions. This blog post focuses on ChatGPT and copyright.

Jordana Sanft | March 1, 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

A Complete Code: Ontario Court of Appeal Denies Remedies Exist Outside the PMNOC Regime

The Patented Medicines (Notice of Compliance) Regulations (PMNOC Regulations ) is a complete code. In Apotex Inc v Eli Lilly Canada Inc, the Ontario Court of Appeal weighs in on the drawn-out battle between patent owners and generics on whether monetary relief is available outside the parameters of the PMNOC regime. It is not.

Jordana Sanft | August 19, 2022

Don’t Be the Author of Your Own Dismissal: Chief Justice Dismisses Dueling Motions for Summary Judgment in the Trademark Context

Summary adjudication can be enticing. In the right circumstances, it saves the parties time and money. Unsurprisingly, there is a growing trend in Canadian intellectual property litigation to use summary adjudication that we have been actively monitoring (see, e.g., our comments here, here, here, here, here and here).

Jordana Sanft & Jim Lepore | June 27, 2022

The Suit Against Iron Man’s Suit is Not Iron Clad

Iron Man’s suit is at the centre of an intergalactic copyright infringement battle brought by Horizon Comics Productions Inc. (“Horizon”) against Marvel Entertainment, LLC et al. (“Marvel”). The alleged infringement is largely directed to Horizon’s Canadian created Radix comic book series (the “Works”) and Marvel’s Iron Man suit from the movie Iron Man 3.

Jordana Sanft | April 19, 2022

Data-Protection Déjà Vu All Over Again

For the second time in less than a year, Justice St. Louis of the Federal Court has set aside the issuance of a Notice of Compliance (“NOC”) to an innovator drug company and remitted the matter to the Minister of Health (“Minister”) for what will be a third determination in Catalyst Pharmaceuticals, Inc v Médunik Canada (“Catalyst 2022”).

Jordana Sanft & Cynthia L. Tape | March 25, 2022

Mirror Mirror on the Wall, Whose IP Will Win It All?

An intellectual property battle among major athletic brands is brewing in the United States. Lululemon is suing Peloton. Peloton is suing Lululemon. And Nike is suing Lululemon.

Jordana Sanft | February 23, 2022

The Federal Court Clarifies the Burden of Proof in Summary Trial

In 2022, the use of summary proceedings in patent matters continues at the Federal Court. In Janssen Inc v Pharmascience Inc, the Court:

Jordana Sanft, Andrew Moeser & Kaitlin Soye | January 26, 2022