The Federal Court of Appeal in Western Oilfield Rentals Ltd. v. M-I LLC, 2021 FCA 24 recently affirmed that several claims in a patent for certain drilling technology are valid and infringed. This appeal had everything: standard of review, claim construction (including section 53.1), infringement, inducement, the Gillette defence, anticipation, obviousness, insufficiency (including best mode!), ambiguity, inutility, overbreadth, and that thing where applicants are not supposed to add new matter during prosecution but it is not entirely clear what if anything will happen to a patent if they do. The Court of Appeal did not, however, view quantity as a

This January Canada’s Federal Court of Appeal in Canmar Foods Ltd. v. TA Foods Ltd., 2021 FCA 7 affirmed a decision dismissing a patent infringement action for a lack of infringement on a motion by the defendant for summary judgment (see here for the decision on the motion). While recent years have seen several other examples of successful motions for summary judgment in patent cases (see here, here, and here), such motions have historically been rare. Accordingly, a decision of the Federal Court of Appeal affirming a summary judgment in a patent case is significant and lends support to the

The Court of Appeal for British Columbia in GEA Refrigeration Canada Inc. v. Chang, 2020 BCCA 361 recently affirmed a significant award (over $10 million) in a breach of confidence case relating to industrial freezer designs. This case illustrates that an action for breach of confidence can be a powerful tool in defending one’s intellectual property.   The plaintiff in the case was a manufacturer of industrial freezers for the food industry. During a period spanning 2009 and 2010, a group of its employees, including several engineers, left the plaintiff to start a new company, which within a year or

Here is something that does not come up often in the case law: earlier this fall in Loops L.L.C. v. Maxill Inc., 2020 ONSC 5438, Ontario’s Divisional Court issued an interlocutory injunction against a defendant in a US patent litigation to enforce a “no-challenge” clause contained in a settlement of a patent infringement action in Canada’s Federal Court. The defendant in the case, Maxill Inc. (“Maxill Canada”), was a Canadian company which previously had been sued by Loops L.L.C. (“Loops”, a US company) for patent infringement in Canada’s Federal Court. The Federal Court case was settled, and the settlement agreement

In the wake of the decision of the Federal Court in Choueifaty, in November of this year the Canadian Intellectual Property Office released a Practice Notice ‘Patentable Subject-Matter under the Patent Act’. The new Practice Notice is said to take into account the Choueifaty decision and provide guidance on the current understanding by the Patent Office of the legal principles applicable to assessing whether subject-matter of a particular claim is statutory. The Practice Notice also discusses in more detail the applicability of these principles to computer-implemented inventions, medical diagnostic methods, and medical uses of pharmaceuticals.  By way of background, this

Earlier this summer, in Salt Canada Inc. v. Baker, 2020 FCA 127, Canada’s Federal Court of Appeal clarified the scope of the Federal Court’s power to decide contractual disputes. Prior to this case, whenever a case involved a contractual dispute, there were questions whether the Federal Court, with its powers granted by a federal statute and none of those powers mentioning contracts, had jurisdiction over the matter, and indeed parties would instead go to other courts, such as Ontario’s Superior Court of Justice, to litigate the matter. In Salt, however, the Federal Court of Appeal has made it clear that

In the recent decision Choueifaty v. AG, 2020 FC 837, Canada’s Federal Court rejected the problem-solution approach to patent claim construction that has been used by the Canadian Intellectual Property Office (“CIPO”) for assessing whether claimed subject-matter meets the definition of invention, i.e., whether the claimed subject-matter is patentable. The Court found that CIPO’s approach, which has often resulted in the computer being considered not a part of the invention, has improperly ignored the patentee’s intention as to which elements of a claim are essential. The Court in so doing has potentially opened the door to making it easier to

Due to COVID-19, starting in March of this year through a series of directions and orders the Federal Court (the “FC”) implemented the Suspension Period which suspended for its duration deadlines and timelines under the rules and orders of the FC and under several other federal statutes. The Suspension Period ran from March 16 to June 15 in the Atlantic and Western provinces, and to June 29 in Ontario, Quebec, and the Territories. The FC also provided for an additional 14-day period to provide parties and their counsel with the opportunity to prepare for the resumption of their cases.  

In ViiV Healthcare ULC v. Canada (Health), 2020 FC 756 the Federal Court for the second time this year considered Canada’s Certificate of Supplementary Protection (“CSP”) regime. The issue was whether a company could receive a CSP on a product combining two active ingredients where the patent in question covered only one of the two ingredients. The Court appeared sympathetic to granting a CSP, but remitted the case back to the Minister of Health for redetermination, leaving the question open for now. Background A CSP allows for up to two years of additional patent-like protection on certain patented drugs, which

The Federal Court’s COVID-19 suspension period expired on June 29, 2020 in all provinces. Previously, the suspension period expired on June 15 for Western and Atlantic Canada. Also earlier, the Federal Court of Appeal extended its suspension period indefinitely but at the same began a gradual phase-out of the suspension period by selecting files that will proceed. Please refer for more details to the Consolidated COVID-19 Practice Direction of the Federal Court and Notice to the Parties and the Profession of the Federal Court of Appeal.

The Canadian Intellectual Property Office has extended to May 19, 2020 most time limits falling between March 16, 2020 and May 15, 2020, due to COVID-19. For details please refer to CIPO’s website.

The Federal Court in a new Practice Direction has once again extended the COVID-19 suspension period, this time to May 29. Subject to the exceptions listed below, the Court will not hold hearings until June 29, 2020, and, for cases that are NOT case managed, timelines for the filing of documents and taking of other steps will be extended by 14 days following the end of the suspension period, namely to June 12. The exceptions as to what hearings may be held before June 29 are as follows: Urgent or exceptional matters; Case management hearings; By request of a party;