NOC Cases

Appeal Decision Addresses the Promise Doctrine
Apotex Inc. v. Pfizer Canada Inc., 2014 FCA 250

This decision relates to two appeals that were heard together and the reasons apply to both. The decision set out the parties’ positions and then noted the standard of review for the issues. In particular, patent construction is a question of law, which is assessed on a standard of correctness. Whether utility has been established, either demonstrated or predicted, is a question of fact to be reviewed for a palpable and overriding error, and sufficiency of disclosure is a mixed question of fact and law and therefore is reviewed for a palpable and overriding error unless there is an error of law.

The Court of Appeal noted “[t]he promise doctrine will hold an inventor to an elevated standard only where a clear and unambiguous promise has been made. Where the validity of a patent is challenged on the basis of an alleged unfulfilled promise, the patent will be construed in favour of the patentee where it can reasonably be read by the skilled person as excluding this promise.” The Court of Appeal then determined that the Application Judge correctly construed the promise of the patent, noting that while a promise can appear in the specification provided that the language is clear and explicit, there was no error in the Judge acknowledging that statements that are not in the claim should not be presumed to be promises.

The Court of Appeal addressed a number of alleged promises. Apotex argued that any given promise must be construed as an overarching promise, but the Court of Appeal indicated that there was no support in the jurisprudence for this argument.

The Court of Appeal also addressed abuse of process, stare decisis and comity in light of an apparent concession made with respect to the promise in previous proceedings under the Patented Medicines (Notice of Compliance) Regulations. The Court of Appeal dismissed these arguments. Both appeals were dismissed with costs.

Patent Cases

New trial ordered and injunction set aside due to a refusal to allow an amendment to the Defence and Counterclaim
Janssen Inc. v. AbbVie Corporation, 2014 FCA 242

The Federal Court of Appeal has heard three related appeals from this proceeding in the Federal Court, and in the result, has sent the matter back down for re-hearing.

One appeal related to the finding that the patent was valid and infringed (2014 FC 55). A second appeal related to the Federal Court’s dismissal of Janssen’s pre-trial motion to amend Schedule A to its Defence and Counterclaim so as to remove and add other prior art references (2013 FC 1148). Janssen also appealed the Judge’s post-trial injunction order (2014 FC 489).

The Court of Appeal looked to the appeal refusing the amendment first, and found that Janssen’s amendment should have been allowed. The Court of Appeal noted that although the Judge was concerned with delay, both parties kept changing the case, and the landscape in which the PSA was operating was also changing. Both parties were still retaining experts to address, in part, the prior art.

The Court of Appeal focused on two independent criteria to allow an amendment: (a) any injustice to the other party is capable of being compensated by an award of costs, and (b) the interests of justice would be served. Janssen was found to meet both.

Obviousness was found to be one of the major invalidity issues and the prior art also impacted the issue of overbreadth. To that end, it was held that it would have served the interests of justice that all the relevant prior art be before the Judge to allow him to fully address the issue of obviousness.

In the end, Janssen is permitted to amend, the judgment that the patent was valid and infringed was set aside, and the matter was remitted back to the Federal Court for a new trial before another judge. The injunction that had been issued on May 22, 2014 was also set aside.

Leave to Appeal to SCC Granted for a section 8 damages case
Sanofi-Aventis v. Apotex Inc., Docket 35886

The Supreme Court has granted leave in a proceeding pursuant to section 8 of the PM(NOC) Regulations. Some of the issues to be decided in this proceeding, as listed by the Supreme Court, include:

  1. What is the correct interpretation of, and correct legal framework applicable to determination of appropriate compensation owed under s. 8?
  2. What is the status and legal implications of the PM(NOC) Regulations in the hypothetical “but for” world?
  3. Whether the legal framework applicable to s. 8 requires the construction of a hypothetical market in which failed prohibition proceedings against plaintiff are excluded, while those against its competitors are legally considered extant.

The decision of the Federal Court can be accessed here (summarized here), while the decision of the Federal Court of Appeal can be accessed here (summarized here).

Pleadings amendment to a damages reference not allowed – found to be a collateral attack on the final judgment
Merck & Co. Inc. v. Apotex Inc., 2014 FC 883

Apotex moved to file an amended Responding Statement of Issues on a reference pursuant to Rule 153. According to the Court, Apotex wants to argue that the Plaintiffs are not entitled to any damages for infringement of their patent because, after issuance of the liability judgment against Apotex and exhaustion of Apotex’s appeals, but before the hearing of the damages reference, the Supreme Court of Canada rendered a decision in another proceeding rejecting one of the principles upon which the trial judge relied in finding that the Plaintiffs’ patent had been validly issued. Apotex also seeks leave to allege that the Plaintiffs have breached specific provisions of the Competition Act, such as to disentitle them to damages.

The Court held that the essence of the amendments were a collateral attack on the ruling that Apotex infringed a valid patent. Both res judicata and issue estoppel were found to prevent Apotex from re-opening the question of validity, as that question was finally determined as between the parties. Since a change in the law was not found to be sufficient reason to re-open a previously decided case, there was insufficient reason to allow the amendment.

As for the claims sought to be added pursuant to the Competition Act, those were found to be better decided in a separate action, and not grafted onto a damages reference.

Copyright Cases

Appeal Dismissed: Federal Court Finds Real and Substantial Connection, Jurisdiction
Davydiuk v. Internet Archive Canada, 2014 FC 944

The Defendant, Internet Archive Canada (“IAC”), appealed the order of Prothonotary Aalto, who dismissed IAC’s motion for a permanent stay of the proceedings by the Plaintiff, Daniel Davydiuk (“Davydiuk”) in Ontario. The Prothonotary found that the Court had jurisdiction to hear the claim, and the circumstances in the case favoured hearing the claim in Canada. IAC argued that the matter should be heard in California.

Davydiuk commenced this action against IAC, alleging that IAC infringed his copyright by reproducing certain works on websites located on various website archive domains (e.g. the “Wayback Machine”) that he submitted are owned and controlled by IAC.

The Court heard this matter on a de novo basis, and agreed with the Prothonotary’s decision with respect to the ‘real and substantial connection’ analysis: the Court found that there is a real and substantial connection between the action and Canada. Furthermore, the Court considered the forum non conveniens argument advanced by IAC, and held that while some factors favoured California, it is “not clearly more appropriate”. Therefore, IAC failed to meet its burden.

The Court therefore came to the same conclusion as the Prothonotary, and dismissed the appeal.

Applicant Avoids Finding of Copyright and Trademark Infringement, Successful in Having Certification Mark Struck from the Register
Denturist Group of Ontario v. Denturist Association of Canada, 2014 FC 989

The Applicant, the Denturist Group of Ontario (“DGO”) was seeking declaratory, injunctive and monetary relief against the Respondents (the Denturist Association of Canada (“DAC”) and the Denturist Association of Ontario (“DAO”)) to invalidate the DAC’s registered copyrights and certification mark, “DD”. The DAC owns four (4) copyright registrations that relate to “Denturism Codes” (the “DAC Copyright Registrations”), which identify the services denturists use when submitting claims to insurance companies or third party payers. The DAC was also granted a trademark registration for the certification mark “DD” for denturist services. The DAC’s members may use the mark, and others (non-members) may pay a fee to use it. The DGO was established as a cost-effective alternative organization to the DAO, and the DAO/DAC view the DGO as a competitor for membership fees. The Respondents attempted to pursue the DGO for the payment of “non-member” fees claiming copyright in certain Denturism Codes and fee guides used for billing, and for the right to use the professional designation “DD”.

The Court considered a number of issues in this case, namely: (1) whether copyright subsists in the works covered by the DAC Copyright Registrations (e.g. the DAC Procedural and Fee Guides); (2) whether copyright subsists in the 5-digit codes (and corresponding descriptions of denturist services covered by several of the DAC Copyright Registrations); (3) whether the DGO infringed copyright in the DAC Copyright Registrations; and (4) whether the “DD” certification mark is valid (clearly descriptive or non-distinctive).

First, the Court held that the DAC is the owner of the DAC Procedural and Fee Guides, and that copyright subsists in the DAC Copyright Registrations. However, the Court held that copyright does not subsist in the 5-digit codes (and corresponding descriptions) on the basis of insufficient originality or skill and judgment, and, as a result, that the DGO has not infringed the DAC’s copyright in the DAC Procedural and Fee Guides. Furthermore, the evidence before the Court was not sufficient to establish that the “DD” certification mark was clearly descriptive, but it did establish that it was not distinctive of the DAC and its licensees as of the relevant date. Accordingly, while the DGO members have used the “DD” designation, the Court held that it was not an infringement to do so.

Therefore, the DGO’s application to strike the DAC Copyright Registrations was dismissed, the DGO was held not to have infringed the copyright owned by the DAC, and the “DD” certification mark was invalidated and struck from the Register of Trademarks. The Court refused to award aggravated punitive or exemplary damages, but awarded damages to DGO in the amount of $10,000. Costs were also awarded to DGO.

Industry News

CIPO is now offering a phone appointment service. Clients may now request a meeting with one of CIPO’s Information Officers at the Client Service Centre.

CIPO announced that Austria and Singapore will join the Global Patent Prosecution Highway (GPPH) pilot. There are now 19 countries, including Canada, that are participating in the GPPH.

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.


Chantal Saunders

Beverley Moore

Adrian J. Howard


Intellectual Property