Patent Cases
Patent held Invalid for Ambiguity and Obviousness
Pollard
Banknote Limited v. BABN Technologies Corp., 2016 FC 883
Pollard challenged the validity of Scientific Games' (the successor to BABN) patent. Scientific Games
counterclaimed with allegations of infringement. The Court held that the patent was invalid, and in
any event, not infringed.
The Court considered construction and held that there is arguably an inconsistency between the principle
that claim construction should be done before consideration of validity, and the principle that if
more than one construction can reasonably be reached, the Court must favour the one that upholds validity.
However, the Court held that this can be reconciled by the guidance that the Court is not to construe
a claim without knowing where "the shoe pinches". Thus, the principles must work hand in hand.
In obiter,
the Court commented on the file history and the problems associated with not permitting the use of
extrinsic evidence in claims construction.
Scientific Games argued that due to Pollard's involvement in filing numerous protests, the patent
was delayed in issuance, and deference should be given to the Patent Examiner. The Court disagreed,
holding that a more direct reason for the delay was that the arguments from the protests were accepted
by the examiner, and communicated to Scientific Games in Office Actions. Furthermore, Scientific Games
waited until the end of the 6-month period to respond to each of those office actions, so it was not
concerned with delay. In addition, this is not a judicial review proceeding, so there is no standard
of review to be applied to the Examiner's decision. Validity is to be assessed on a balance of probabilities.
The Court found one of the dependant claims invalid for ambiguity, holding that the bar code cannot
be located in two mutually exclusive areas on the same ticket, thus, no reasonable interpretation can
be given to the language of the claims. The Court held that the patent was not invalid for overbreadth,
inutility or anticipation. However, the patent was held invalid for obviousness. The patent was also
held to not be infringed.
Bifurcation of Infringement and Validity Issues in Section 8 Action
Apotex
Inc. v. Alcon Canada Inc., 2016 FC 720
Drug: Apo-Travoprost Z topical ophthalmic solution
This is a motion for bifurcation in an action brought pursuant to section 8 of the Patented Medicines
(Notice of Compliance) Regulations ("Regulations"). Alcon was unsuccessful in
proceedings brought pursuant to the Regulations relating to the '287 Patent and the '370
Patent. After Apotex came to market with its product, Alcon commenced an action alleging infringement
of the '370
Patent and Apotex counterclaimed, alleging invalidity. Apotex commenced the within section 8 action.
Alcon defended this section 8 action on the basis of, inter alia, infringement of the '370
Patent, the '287 Patent and the '172 Patent, which was not the subject of a proceeding pursuant the Regulations.
The infringement action has proceeded quickly and trial dates for fall 2017 have been requested.
The section 8 action has not proceeded quickly.
Apotex brought this motion in the section 8 action, seeking to have Alcon's allegations of infringement,
and its allegations of invalidity, of the '287 Patent and the '172 Patent determined before any of
the other issues. The parties agreed that the findings in Alcon's infringement action relating to the
'370 will be binding in the section 8 action. Alcon opposed bifurcation on the basis that Apotex was
attempting to consolidate the infringement of the '287 Patent and the '172 Patent with the '370 Patent.
Apotex responded that it was not seeking to consolidate. To address Alcon's other concern, Apotex offered
to stipulate that its product would have been the same in the hypothetical world as in the real world.
The Prothonotary considered the factors governing bifurcation and granted Apotex's motion. The Prothonotary
noted that Alcon took the position that infringement would be a full defence to the section 8 claim
or reduce Apotex's damages to zero, and thus found that there is a high likelihood that a finding of
infringement would determine the second phase of the action or lead to settlement. The Prothonotary
also noted that Alcon's infringement action is bifurcated. Costs were awarded in the cause and fixed
in the amount of $3,750.
Copyright Cases
Application Challenging Service Ex Juris Dismissed
Geophysical
Service Incorporated v. Jebco Seismic UK Limited, 2016 ABQB 402
The issue before the Court of Queen's Bench of Alberta is a challenge to a service ex juris order
that was granted ex parte. The foreign Defendants sought to set aside service of the Statement
of Claim. The action relates to alleged copyright infringement. The Court determined that the threshold
for an arguable case had been met, and found that the Alberta Court has jurisdiction. In particular,
the Court found that the foreign parties are necessary and proper parties to the action. The Court
held that there was jurisdiction simpliciter on the basis of the Court's statutory jurisdiction
in copyright matters, Once there is jurisdiction simpliciter, the court relied on case law
that states that the Court can then assume jurisdiction over all aspects. The Court concluded that
service ex juris was appropriate.
Other Industry News
CPIO has announced that the Process
for Issuance of Patents will be reduced from 10 weeks to 8 weeks.
Health Canada has announced a Consultation:
Release of Draft (Step 2) ICH S9 Q&As: Questions and Answers: Nonclinical Evaluation for Anticancer
Pharmaceuticals.
Health Canada has announced a Consultation:
Release of Draft (Step 2) International Council for Harmonisation of Technical Requirements for the
Registration of Pharmaceuticals for Human Use (ICH) Guidance: E17: General principles on planning/designing
Multi-Regional Clinical Trials.
