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Patents - 2016 Year in Review

February 3, 2017

By Ken Bousfield 

In 2016 we discussed a number of interesting patent cases. Leaving aside cases directed toward features related specifically to pharmaceuticals or to the Patent Medicines Notice of Compliance Regulations (PMNOC) the beginning of 2017 provides an opportunity to reflect again on the following cases and events from 2016:

1. File Wrapper Estoppel
    Pollard Banknote v. BABN Technologies Corp

File wrapper estoppel is a long and well developed doctrine in U.S. patent law. By contrast, in Canada prosecution file history materials are generally not admissible in subsequent proceedings. In a trilogy of cases1 in the 1950’s and 1960’s Thorson, P., of the Exchequer Court (the predecessor of the Federal Court) rejected the admissibility of the prosecution file histories. Oddly, Thorson P., cited as support the US case Catalin Corp. of America v. Catalazuli Mfg. Co.2, a decision that is one of the cornerstones of US file wrapper estoppel. The decisions were subject to critical comment at the time.3 More recent case law has occasionally edged toward the admissibility. However, in Pollard Banknote Limited v. BABN Technologies Corp., (2016) FC 883 The Federal Court of Canada was not prepared to countenance clearly contradictory positions in prosecution and litigation. In October, Stephen Beney and Nicholas Aitken had pertinent comments, found here.

2. Promise of the Patent and Utility
    AstraZeneca v. Apotex

Since Turner v. Winter4 where an inventor has made a precise, explicit, disclosure of performance or use, the invention must satisfy that description5. Recently, however, PMNOC proceedings have tended to presume that all patents have “promises”, whether or not such a promise exists. Yet in a non-pharmaceutical case it was possible to overlook remarkably narrow explicit promises that actually did exist.6 The rather strained, unicorn-hunting nature of promise-finding has been controversial, and has put Canada off-side of its U.S. and European trading partners. The Supreme Court of Canada has granted leave to Appeal from the FCA decision in AstraZeneca Canada Inc. v. Apotex Inc.7, on this highly contentious issue. In March, Melanie Szweras and Scott MacKendrick weighed in at "Utility - The Heightened Disclosure Pendulum Swings Again", Mike Fenwick at "Supreme Court Promises to Review Contentious Patent Matter" and Adam Bobker and Daniel MacKay at "Leave to Appeal to SCC: AstraZeneca Canada Inc et al v Apotex Inc et al (FCCA)".

3. The Problems of Internet Enforcement

Finding a remedy for sales of infringing goods over the internet is often an enormous challenge to patent, trade mark, copyright, and design owners, and one that raises thorny issues of extra-territorial effect. Rather than leave IP owners without a remedy, in Google Inc., v. Equustek Solutions Inc.8, the BC Court of Appeal granted an injunction requiring Google to take down web-sites not merely on, but also on The Supreme Court of Canada granted Google leave to appeal. Adam Bobker and Janice Calzavara discussed the issue in "Leave to Appeal to SCC: Google Inc v Equustek Solutions Inc (BCCA)".

4. Patents and Competition
    New Intellectual Property Enforcement Guidelines

The Competition Bureau issue a set of updated guidelines for the enforcement of Competition law in respect of Standard Essential Patents. Paul Horbal and Victor Krichker wrote about the new guidelines in "How will the Canadian Competition Bureau deal with enforcement of Standard Essential Patents?".

5. Other Topics and Cases

Rule 216 – Summary Decisions

In October, Alain Alphonse discussed the Federal Court of Canada’s use of Rule 216 of the Federal Court Rules in Cascade Corporation v. Kinshofer GmbH 9 o resolve a patent dispute by summary procedure in "Patent Infringement Claim Dismissed after Summary Trial - Cascade Corporation v. Kinshofer GmbH et al., 2016 FC 1117."

PMNOC s. 8 – Not a Vehicle for Unjust Enrichment Claims

In February, Adam Bobker and Anastassia Trifonova discussed the Supreme Court of Canada’s dismissal of an attempt by Apotex to use s. 8 of the PMNOC to ground an action for unjust enrichment in Apotex Inc. v. Eli Lilly and Company10 at "Striking Out Unjust Enrichment Claims under s. 8 for Good - the Supreme Court of Canada Denies Leave to Appeal".

Patent Act s. 8 Corrections - Gray Manufacturing

The reluctance of the Patent Office to exercise the Commissioner’s discretion to correct documents in the Patent Office Records has been notable in recent years. Commenting on Gray Mfg Co. Inc., v. Canada (A.G.)11. Ken Bousfield poked fun at the Office in "Sunny Days, Sunny Ways? Gray Manufacturing: Federal Court Becomes Office of Administrative Corrections". 

Inventions by Government Employees – Brown v. Canada12

In a move that caused some concern in the profession, the Federal Government attempted to employ a rarely used section of the Patent Act to defeat the reasonable interests of a patentee where the inventor was alleged to have been a government employee. The Court viewed the effort with skepticism. Noel Courage commented at "Canadian Feds Issue Patent, Then Try to Invalidate It in Court".

1 O’Cedar of Canada Ltd., v. Mallory Hardware Products Ltd., (1956) 24 CPR 103; Riddell v. Patrick Harrison & Co., (1957), 28 C.P.R. 85; and Lovell Mfg. Co. v. Beatty Bros. Ltd., (1962) 41 C.P.R. 18.

2 79 F. 2d 593 (1935), per L. Hand at 594, pointing out that file wrapper estoppel should apply whenever the applicant makes a substantive amendment directed toward allowability, but not where the amendment is formal.

3 See Gordon Henderson Editorial Note in Lovell, supra., at p. 23, for example.

4 Turner v. Winter (1787), 1. Webst P.C. 77 at 82, cited by Parker J., in Alsop’s Patent at (1907), 24 RPC 733 at 753.

5 “[If] the Patentee says that by one process he can produce three things and he fails in any one, the consideration of his merit, and for which the patent was granted, fails, and the Crown has been deceived in the grant.”

6 See CA 2 207 787 at p. 2, lines 2 – 14; 2012; Eurocopter, s.a. v. Bell Helicopter Textron Canada, 2012 FC 113; upheld 2013 FCA 219.

7 AstraZeneca Canada Inc. v. Apotex Inc., 2015 FCA 158

8 Equustek Solutions v. Google Inc., 2015 BCCA 265

9 Cascade Corporation v. Kinshofer GmbH, 2016 FC 1117

10 Apotex Inc. v. Eli Lilly and Co., 2015 ONCA 305

11 Gray Manufacturing Company, Inc., v. Canada, 2016 FC 55

12 Brown v. Canada, 2016 FCA 37

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