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Intellectual Property - On the Docket
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Few pop icons have navigated the art of protecting their intellectual property as well as Taylor Swift. Not only does Taylor Swift have an outstanding knack for creating number one hits, a keen eye for branding, and an entrepreneurial spirit that is inspiring, she is also business savvy in protecting her trademarks and copyright. On this International Women’s Day 2024 we look to Taylor Swift as an inspiration in IP protection, enforcement, and commercialization, as we celebrate women who “could show you incredible things”.
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.
It has been approximately six months since the Federal Court of Appeal’s decision in Canada (Attorney General) v Benjamin Moore & Co (the “Benjamin Moore Appeal”) was released, yet no practice direction has been issued from the Canadian Intellectual Property Office (“CIPO”) to address the decision, and there is no consistency in the way that computer-implemented inventions are being examined. As the patent bar awaits a decision on the leave application to the Supreme Court of Canada, we provide our thoughts on the Federal Court of Appeal’s decision, and the missed opportunity it was.
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).
The “Creativity Machine”, owned by Stephen Thaler, generated a work of art of its own accord. Thaler applied to register copyright in the artistic work titled ‘A Recent Entrance to Paradise’ with the United States Copyright Office. The application stated the Creativity Machine created the work and it was listed as the author. Thaler sought to transfer the copyright to himself as owner. The registration was denied.
In the recently released decision Boehringer Ingelheim Ltd v Jamp Pharma Corporation, Jamp brought a motion seeking an order that would require Boehringer to make their employee inventors attend to be examined for discovery, failing which the order could be enforced against Boehringer themselves. Boehringer argued that the Rules do not contemplate such an order. Associate Judge Duchesne agreed.
Andrew Moeser will be sharing his expertise on patent enforcement at the joint Intellectual Property Institute of Canada and McGill University Summer IP Course. Andrew will lead a discussion on Patent Enforement: Infringement, as well as participate on a Mock Trial focused on Expert Reports and Cross-Examination of a Witness.
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.
Patent infringement cases are complex and technical, and historically Canadian courts were reluctant to endorse summary disposition in the patent context. However, in recent years there has been an increased trend towards the application of summary proceedings in this area. In particular, we have previously commented on decisions of the Federal Court (“FC”) (Canmar, Kobold, and Janssen) and Federal Court of Appeal (“FCA”) (Canmar and ViiV) that demonstrate the Court’s willingness to approve summary proceedings in patent cases under the appropriate circumstances. Last fall, the FCA decision in Gemak was interpreted by some commentators as a return to the historical position, but in our view, Gemak can be viewed as tapping the brakes on summary judgment rather than signalling a more sweeping reversal of the trend towards summary adjudication.
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.