Our Blog

• 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.

  March 1, 2023
  Jordana Sanft
• To Consolidate or Not to Consolidate – This is the Federal Court’s Question

  In a recent decision, Takeda Canada Inc v Apotex Inc, the Federal Court dismissed the Plaintiff, Takeda’s, motion for consolidation of two actions against Apotex relating to Takeda’s dexlansoprazole (DEXILANT) under section 6 of the Patented Medicines (Notice of Compliance) Regulations (the “PM(NOC) Regulations”).

  January 30, 2023
  Jordana Sanft

  Andrew Moeser

  Amber Blair
• 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.

  November 3, 2022
  Jordana Sanft

  Andrew Moeser
• FCA Taps the Brakes on Summary Judgment in Patent Cases

  Over the last several years there has been a trend towards increased adoption of summary proceedings for resolving patent cases in Canada. In particular, we have previously commented on decisions of the Federal Court (e.g., Kobold partial SJ motion) and Federal Court of Appeal (e.g., Canmar Appeal) that signalled a willingness to move away from the historic reluctance of those courts to approve summary judgment for patent infringement actions. We had also noted that summary proceedings were a trend to watch this year.

  September 8, 2022
  Andrew Moeser

  Jordana Sanft
• 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.

  August 19, 2022
  Jordana Sanft
• Public Disclosure vs. Confidentiality Protection: The FCA Finds the Proper Balance

  In FibroGen, Inc v Akebia Therapeutics, Inc, the Federal Court of Appeal set aside an order requiring a party to make certain fact witness statements from a discontinued action public, restoring the proper balance and safeguarding the confidentiality of documents that had been designated as confidential or highly confidential information.

  August 10, 2022
  Jordana Sanft
• 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).

  July 21, 2022
  Sana Halwani

  Andrew Moeser
• Don’t Make Me Say It a Fourth Time: Federal Court Weighs in (Again) on Patentable Subject Matter

  Associate Chief Justice Gagné’s decision in Benjamin Moore & Co v Attorney General of Canada, 2022 FC 923 (“Benjamin Moore”) marks the second time that the Federal Court has had to weigh in to tell the Commissioner that it was not applying the correct test for patentability of computer-implemented inventions. Unlike past decisions (discussed below), the Court in Benjamin Moore, provided instruction on how the Commissioner ought to assess patentability of such inventions. As a top line, these instructions appear to level the playing field – reducing the artificially high standard that computer-implemented inventions face during patent examination.

  June 28, 2022
  Sana Halwani

  Jim Lepore
• 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).

  June 27, 2022
  Jordana Sanft

  Jim Lepore
• Bill C-27 and the Proposed Artificial Intelligence and Data Act: Oversight of AI in Canada is Coming

  On June 16, 2022, Canada’s Minister of Innovation, Science and Industry introduced Bill C-27, titled “An Act to enact the Consumer Privacy Protection Act, the Personal Information and Data Protection Tribunal Act and the Artificial Intelligence and Data Act and to make consequential and related amendments to other Acts” (short title, the Digital Charter Implementation Act, 2022), in the House of Commons.

  June 21, 2022
  Jordana Sanft
• 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.

  April 19, 2022
  Jordana Sanft
• SCC Leave Denied in Alexion Pharmaceuticals Inc v Canada (Attorney General)

  In our blog 2021 Year in Review & 2022 Trends to Watch for Pharmaceutical Patents, we identified Alexion Pharmaceuticals Inc v Canada (Attorney General) as an important case to watch in 2022 as leave to the Supreme Court was filed.

  March 28, 2022
  Jordana Sanft
• 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”).

  March 25, 2022
  Jordana Sanft

  Cynthia L. Tape
• Amendments to the Patented Medicines Regulations Lose Some Teeth

  The proposed amendments to the Patented Medicines Regulations had the projected effect of lowering drug prices by billions of dollars over the next ten years. But by overreaching its jurisdiction, these amendments have lost some of its bite. The Quebec Court of Appeal determined several provisions to be ultra vires.

  March 2, 2022
  Jordana Sanft

  Sana Halwani

  Veronica C. Tsou
• 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.

  February 23, 2022
  Jordana Sanft
• AI and IP: Who or What Can Be an Author or Inventor in Canada?

  There have been two recent and notable developments with respect to artificial intelligence (“AI”) and intellectual property (“IP”) rights in Canada. A preliminary legal question at the intersection of AI and IP is whether AI can be granted authorship in the case of copyright or inventorship in the case of patents for something that it generated. Jurisdictions around the world are facing the same issues. This blog post discusses Canada’s first foray into this new frontier.

  February 17, 2022
  Jordana Sanft
• 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:

  January 26, 2022
  Jordana Sanft

  Andrew Moeser
• 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.

  January 13, 2022
  Andrew Moeser
• 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.

  January 13, 2022
  Andrew Moeser
• 2021 Year in Review & 2022 Trends to Watch: Pharmaceutical Patents

  In 2021, the Canadian pharmaceutical and life sciences industries were once again at the forefront of innovation, developing and commercializing new vaccines, drugs, and medical devices. The media continued to shine a light on the advances made to protect the public from COVID-19, including regulatory approvals for new mRNA and adenovirus vector vaccines. In the pharmaceutical patent litigation arena in particular, we saw some new trends develop. There were important developments in proceedings relating to pharmaceutical patents, advances in cases and legislative developments relating to the Patented Medicine Prices Review Board (“PMPRB”) as well as judicial review applications and appeals in patent-related fields.

  January 6, 2022
  Jordana Sanft
• 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.

  November 17, 2021
  Andrew Moeser
• Inside or Out: Jurisdiction in the Context of Copyright

  The application of the test for jurisdiction in the copyright context can sometimes be an exercise in gut feel. Luckily for litigants who prefer to make decisions based more on case law than feelings, the Divisional Court recently provided clarification on the application of the test for jurisdiction for statutory torts, like copyright infringement. The Ontario Divisional Court’s decision in Pourshian v Walt Disney Company (“Pourshian”), an appeal of a motion for an order to stay the plaintiff’s copyright infringement action on the basis of lack of jurisdiction, will hopefully take some of the guess work out of jurisdictional issues in the future.

  October 26, 2021
  Margaret Robbins

  Alexis Vaughan
• An Ode to Users’ Rights

  In the last case heard before her retirement from the Supreme Court of Canada, and writing for a unanimous Court, Justice Rosalie Abella affirmed the Federal Court of Appeal’s ruling that tariffs set by the Copyright Board are not mandatory (York University v Access Copyright). Justice Abella also rejected the FCA’s narrow approach to fair dealing and reiterated the nature of fair dealing as a user’s right, to be approached in the educational context from a student’s perspective and not exclusively from the institutional perspective.

  August 5, 2021
  Sana Halwani
• The Train Has Left the Station: The Federal Court of Appeal Confirms That Opposition Won’t Derail a Summary Trial

  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).

  June 21, 2021
  Andrew Moeser

  Jim Lepore
• Online Pirates Can Be Blocked

  Copyright holders in Canada have scored a major victory in the fight against online piracy. The Federal Court of Appeal (“FCA”) in Teksavvy Solutions Inc v Bell Media Inc recently affirmed that site blocking injunctions may be ordered against Internet Service Providers (or ISPs), even as third parties to a copyright infringement action.

  June 18, 2021
  Sana Halwani
• 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.

  June 11, 2021
  Andrew Moeser

  Veronica C. Tsou
• Don’t Sit Back During Summary Judgment: Federal Court of Appeal Weighs in on Summary Judgment for Patent Infringement Actions

  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).

  January 26, 2021
  Sana Halwani

  Andrew Moeser

  Jim Lepore
• 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.

  January 25, 2021
  Andrew Moeser

  Alexis Vaughan
• The Other Shoe Has Dropped: Summary Judgment in the Federal Court

  Patent infringement actions are inherently complex and technical. They often involve complex scientific inquiries and expert evidence. The Federal Court has historically held that summary judgment—which does not include live evidence—is generally not the preferred means of resolving patent infringement actions. Instead, such determinations are best left to a trial judge who has had the opportunity to hear all of the evidence live (e.g., Suntec Environmental Inc v Trojan Technologies Inc).

  November 25, 2020
  Sana Halwani

  Jim Lepore
• The Federal Court of Appeal Clarifies the “Obvious to Try” Test

  The Federal Court of Appeal (“FCA”) has clarified the extent of flexibility afforded when undertaking the “Obvious to Try” test in Amgen v Pfizer, 2020 FCA 188. Although it ultimately cautioned against a segmented approach, the FCA did not dismiss the possibility that experimental steps could be assessed individually in order to make conclusions about an experiment as a whole, particularly with respect to the Self-Evident and Extent of Effort factors of the test. Despite agreeing that the Federal Court (“FC”) could have been more expansive and all-embracing in its overall conclusion, the FCA did not deem the FC’s lack of analysis to have amounted to a palpable and overriding error.

  November 16, 2020
  Sana Halwani
• A Decade in the Making: Federal Court Weighs in on Non-patentable Subject Matter

  Many know Amazon as the world’s largest online retailer, a mantle it carries, in part, because of just how easy it is to buy about anything. In fact, as many Canadians know, you can buy something on Amazon with as little as “1-Click”.

  November 12, 2020
  Jim Lepore
• Update to the Federal Court Case and Trial Management Guidelines

  Last week, the Federal Court published a consolidated practice notice, updating and consolidating four other case and trial management guidelines for complex proceedings and proceedings under the PM(NOC) Regulations from 2015, 2016, and 2017 (available here, here, here, and here).

  November 9, 2020
  Sana Halwani

  Veronica C. Tsou
• Patent Injunctions: “Anything but Unusual”

  The popular Canadian pastime of snowmobile litigation has turned up yet another interesting decision (Bombardier Recreational Products Inc v Arctic Cat Inc, 2020 FC 946) – this time on the topic of injunctions. This decision of Justice Roy arose from the moving parties’ attempt to vary an Order issued by the Federal Court in Bombardier Recreational Products Inc v Arctic Cat Inc, 2020 FC 691. As Justice Roy noted, the Order itself was “anything but unusual,” and was representative of injunctions issued in patent cases time and time again. Given this and the existing jurisprudence, it was perhaps a predictable result that the parties were denied any relief.

  October 16, 2020
  Veronica C. Tsou
• Trial Advocacy is (Mostly) the Same Online: Lessons Learned from a Virtual Patent Trial

  The COVID-19 pandemic has required courts to adapt to new ways of providing access to justice. We have first-hand experience with this new reality.  

  June 30, 2020
  Sana Halwani

  Paul-Erik Veel
• The Times They Are a-Changin’: Summary Judgment in the Federal Court

  Patent infringement actions are inherently complex and technical. They often involve complex scientific inquiries and expert evidence. The Federal Court has historically held that summary judgment—which does not include live evidence—is generally not the preferred means of resolving patent infringement actions. Instead, such determinations are best left to a trial judge who has had the opportunity to hear all of the evidence live (e.g. Suntec Environmental Inc v Trojan Technologies Inc).

  June 9, 2020
  Sana Halwani

  Jim Lepore
• Board Man Doesn't Get Paid

  During last year's NBA Finals, Kawhi Leonard was taking on more than the Golden State Warriors. In the middle of the Finals, he filed a lawsuit against the company he formerly endorsed—Nike—in the Southern District of California (original complaint here). At issue was Leonard's "Klaw Logo," which he claimed to have conceived before his contract with Nike. An early sketch of the logo and the design Nike ultimately used are shown side-by-side here.

  May 13, 2020
  Jim Lepore
• The Disaster Plaintiff: The Best Worst Litigation Strategy Created by and Starring Tommy Wiseau

  The legacy of the movie The Room, Tommy Wiseau’s infamously terrible 2003 cult classic, reached new heights (or lows depending on your point of view) last week when it made its mark on Canadian law in Justice Schabas’ decision in Wiseau Studio, LLC v Harper. A movie lovingly advertised as providing a viewing experience akin to “getting stabbed in the head” prompted copyright litigation and, in the process, has provided a new story of the risks of pursuing an ill-advised litigation strategy through trial.

  May 7, 2020
  Margaret Robbins
• The Federal Court of Appeal Takes No Prisoners

  On October 15, 2020, both parties were granted leave to appeal to the Supreme Court of Canada. We will continue to follow the developments of the appeal.

  April 27, 2020
  Sana Halwani
• Full Steam Ahead: Opposition Won’t Derail a Patent Infringement Summary Trial

  In 2014, the Supreme Court of Canada recognized that the most painstaking procedure is not always the best procedure to resolve disputes – a culture shift was required to create timely and affordable access to the civil justice system (see Hryniak). This touchstone for access to justice is reflected in several courts’ rules of procedure, including the Federal Court of Canada.

  April 9, 2020
  Sana Halwani

  Jim Lepore
• Patent vs Pandemic: Ensuring Patents Save Lives

  These are trying, stressful, and uncertain times, even for the optimist. As the number of confirmed cases of COVID-19 rise and hospitals begin to fill, the need for medicine and medical supplies is at the forefront of everyone’s mind. The search is on for rapid and innovative solutions. But what if that brilliant solution treads on a patent?

  March 27, 2020
  Veronica C. Tsou
• FCA Narrows Jurisdiction of Drug Price Regulator

  The Patented Medicine Prices Review Board (“Board”) regulates the prices of patented medicines in Canada when a patent is found to “pertain” to a medicine. Since 1996, based on the Federal Court of Appeal’s decision in ICN Pharmaceuticals Inc v Canada (Staff of the Patented Medicine Prices Review Board) (“ICN”), the “pertains to” test could be satisfied on the basis of the “merest slender thread” of a relationship between the patent and the medicine.

  July 17, 2019
  Cynthia L. Tape

  Sana Halwani
• Sweet Justice for IP Rights Holder: Agreement not in Restraint of Trade

  The intersection of intellectual property law and competition law is an area that gains greater significance with each passing year. Much of the focus in this area recently has been on the appropriate scope of action to take by regulators. For example, in Canada, the Intellectual Property Enforcement Guidelines promulgated by the Competition Bureau in 2016 have attracted significant attention.

  April 3, 2018
  Paul-Erik Veel
• Procedural Skirmishes and Unintended Effects: The Proposed NOC Regulations

  The proposed regulations amending the Patented Medicines (Notice of Compliance) Regulations were released on July 14, 2017. These Proposed Regulations are a dramatic change from the existing Regulations, both substantively and procedurally.

  July 19, 2017
  Sana Halwani
• The Death Knell of the Rocket Docket

  For those of us who take an interest in American patent litigation, the US District Court for the Eastern District of Texas (also known as the “Rocket Docket”) has been a fabled place where a third (or more) of US patent suits are heard, cases get to trial in two years or less, and patentees are king. It has also been the venue of choice for patent suits brought by non-practicing entities (NPEs...

  May 25, 2017
  Sana Halwani
• The Rules of Evidence Still Apply in PMNOC Section 8 Cases

  It’s no surprise to litigators that some courts tend to be relaxed with the rules of evidence in civil cases.  In many contexts, courts are prepared to admit inadmissible hearsay evidence and simply address evidentiary concerns by noting that such evidence may be given less weight. That type of approach was often taken in cases under section 8 of the Patented Medicine (Notice of Compliance) Regulations.

  June 7, 2016
  Monique Jilesen

  Paul-Erik Veel
• Not every question deserves an answer

  Refusals motions have long been the scourge of the intellectual property bar. Prothonotary Aalto recently observed: "Refusals motions that last days on...

  July 21, 2015
• Computation of Interest on Damages in Patent Infringement Cases

  A decision issued last month contains a useful synopsis by Justice Zinn of principles applicable to damages awards in patent infringement cases:  Eli...

  February 27, 2015
• BC Court Signals Change in Patent Landscape with Viagra Decision

  The British Columbia Supreme Court's decision in Low v. Pfizer Canada Inc., 2014 BCSC 1469 could radically change the legal landscape for patent law in Canada. Patent law has thus far been entirely statutory rather than a product of the common law; courts had not recognized any common law rights or remedies in relation to patents. The decision of Justice Smith changes that, and in so doing changes the risks innovators must consider.

  September 18, 2014
  Paul-Erik Veel