Patent Cases

Court of Appeal Orders that Appeals be Re-Argued Following Death of Judge
Apotex Inc. v. Novartis AG, A-98-13

The appeals of the decisions by Justice Snider of the Federal Court relating to the drug GLEEVEC® (cited as 2013 FC 141), were heard in February of this year. Following the hearing of the appeals one of the members of the panel has died. Since the Court of Appeal had not completed its deliberations at the time of his death, the Court of Appeal has ordered that the appeals be re-argued.

Federal Court Overturns Prothonotary’s Order Striking Paragraphs from Defence
NOV Downhole Eurasia Limited v. TLL Oil Field Consulting, 2014 FC 889

This was a motion appealing the order of a prothonotary in the context of a patent infringement case. In the order appealed from, the Prothonotary granted the Plaintiffs’ motion and struck a number of paragraphs (and portions thereof) from the Defendants’ Amended Statement of Defence and Counterclaim (the “Defence”), without leave to amend. In the pleadings at issue, the Defendants had alleged that wilfully misleading statements made to the Patent Office either void the Patent (per s. 53 of the Patent Act ) or disentitle the Plaintiffs from equitable remedies. The Prothonotary found that the allegations of misrepresentation related to a non-party to the action, and there were no material facts connecting that party to the Plaintiffs at the time of the filing. Further, the Prothonotary found that the impugned pleading relied upon the prosecution history to ask the court to draw certain inferences in construing the scope of the claims, which was held to be improper.

The Court disagreed with the Prothonotary’s approach in striking portions of the Defence, and held that in considering a motion under Rule 221(1)(a) of the Federal Court Rules, the reviewing court is limited to the language of the pleadings. The Court held that the reviewing court cannot consider any evidence in support of the motion, and thus, the Prothonotary was bound to take the Plaintiffs’ pleadings as she found them. The Court held that the Prothonotary “erroneously relied upon affidavit evidence to the effect that [the “non-party”] and the Plaintiffs were not related at the time of the filing of the patent application.”

With respect to Defendants’ reliance on the Patent’s prosecution history, the Court held that “it remains a live issue whether section 53 of the Patent Act may void an entire patent due to steps taken in the application process.” The Court therefore found that the Prothonotary erred in finding that it was plain and obvious that the Defence had no chance of success.

The Court granted the appeal and overturned the order of the Prothonotary striking certain paragraphs (and portions thereof). As the Court concluded that the questions before it were vital to the final issues of the case and that the Prothonotary had erred, it exercised its discretion de novo and upheld the proposed amendments to the Defence.

Industry News

CIPO has published proposed amendments to the Trade-marks Regulations that follow the recent amendments to the Trademarks Act. CIPO has also announced that a public Consultation period will be open from October 1, 2014 to November 30, 2014.

CIPO has also announced that the 2015 Patent Agent Examination will be held on April 28, 29, 30 and May 1, 2015. The deadline to apply is December 2, 2014.

The BLG Life Sciences Group has published LIFESIGNS: Life Sciences Legal Trends in Canada, a Report on Intellectual Property, Litigation, Corporate Commercial legal trends and industry developments in Canada.

Authors

Chantal Saunders 
CSaunders@blg.com
613.369.4783

Adrian J. Howard 
AJHoward@blg.com
613.787.3557

Beverley Moore 
BMoore@blg.com
613.369.4784

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