Recent Decisions June 2006
I. FEDERAL COURT DECISIONS
(a) Patents
1. Biovail v. The Minister of Health, March 13, 2006 FCA (Décary, Evans and Malone JJ.A.) Judicial Review/Patent Register/Claim for the Medicine Itself/Paragraph 4(2)(b) Patented Medicines (Notice of Compliance) Regulations
Appeal from a decision dismissing an application for judicial review by Biovail of the refusal by the Minister to include a patent on the patent register, in respect of two drugs, WELBUTRIN SR and TIAZAC XC. The Applications Judge held that the Minister correctly concluded that the patent was ineligible for listing since it did not "contain a claim for the medicine itself" as required by the Regulations. The Judge agreed that, properly construed, the invention claimed in the patent was a system for delivering the named active ingredients to the patient, not the medicine itself. Biovail argued that claim 30 was for a uniformly mixed composition of the active ingredients with two "intelligent polymers" that ensured the slow release of the ingredients and that since the active ingredients were uniformly and intimately mixed with the polymers, and were not separated by any structure, the tablets were not a "delivery system", but the medicine itself.
Held: Appeal dismissed. The claimed invention is properly construed as a delivery system and not "the medicine itself". Whether a patent claims a composition, which can be "the medicine itself" or a delivery system for medicine is a question of construing the patent. Although each claim must be considered individually, it must be construed in context of other claims and the rest of the patent. In the context of the patent as a whole, claim 30 should be construed as a claim for use of the polymers to achieve slow release of six of the 40 or so active ingredients mentioned in the patent.
2. Abbott Laboratories et al. v. The Minister of Health and Pharmascience, March 16, 2006 FCTD (O'Keefe J.) Prohibition Order/Issue Estoppel//Patented Medicines (Notice of Compliance) Regulations
Application by Abbott for an order prohibiting the Minister from issuing an NOC to Pharmascience for the production of clarithromycin 250 mg or 500 mg tablets until after the expiration of the '606, '732, '274, '527, '534, '356 and '361 patents ("Abbott patents"). Pharmascience alleged that the Abbott patents are invalid on the basis of anticipation, obviousness, overly broad claims, insufficiency of description, ambiguous claims, and lack of utility. Abbott claimed that none of Pharmascience's allegations are justified and submitted that res judicata (issue estoppel) applies as Pharmascience raised the issue of the validity of the '732 patent in previous litigation (Pharmascience I) which held the '732 patent valid and a final order of prohibition issued. Pharmascience argued that the Pharmascience I case differed from the present case.
Held: Application granted. The Minister is prohibited from issuing to Pharmascience NOCs for clarithromycin 250 mg or 500 mg tablets until after the expiration of the '732 patent. With respect to the '732 patent, the issue raised in the present case is the same as the issue decided in Pharmascience I. The prior judicial decision in Pharmascience I was upheld by the FCA, accordingly the decision is final. The parties in Pharmascience I were the same as those in the present case. Issue estoppel applies and the invalidity of the '732 patent cannot be re-litigated by Pharmascience. A party is required to use reasonable diligence to bring forth in the first instance all points that relate to an issue. All the points that could have been raised to show the invalidity of the '732 patent should have been raised when the invalidity of the '732 patent was argued in the previous litigation.
3. Bayer et al. v. Novopharm and the Minister of Health, March 24, 2006 FCTD (Phelan J.) Prohibition Order/Obviousness Double Patenting/ Gillette Defence/Selection Patent/Expert Witness/Patented Medicines (Notice of Compliance) Regulations
Application by Bayer for an order prohibiting the Minister from issuing an NOC to Novopharm in respect of an improved intravenous formulation of Ciprofloxacin until after the expiry of the '006 patent. Novopharm alleged invalidity on the basis of obviousness, double patenting, insufficient disclosure for a selection patent, and non-infringement based on the "Gillette defence" with respect to the expired '547 patent.
Held: Application granted. To maintain the defence against the allegation of double patenting (obviousness), the claims must exhibit novelty and ingenuity over the first patent. Bayer met this test as it took a team of experts two years to develop the solution to the intolerance problem embodied in the '006 patent. Bayer did not merely dilute one substance, but found the correct balance between the active compound and other elements of the composition. Inventiveness and ingenuity were required to solve the real and significant problem of physiological intolerance created by the '547 patent, which rendered it virtually useless. The Court favoured Bayer's contention that, with respect to pharmaceutical formulations, the "person ordinarily skilled in the art" is a multi-disciplinary amalgam of skilled people with the skills of a formulator and clinician. Novopharm was unable to show that its activities were taught in the prior art, therefore the Gillette defence could not be established. The issue of selection patent was irrelevant as Bayer had not engaged in obviousness double patenting. The issue should have been originally raised in the NOA. However, even if double patenting had been found, Bayer met the standard required to make out a case for a selection patent with regard to disclosure of the advantage over a previous patent. No special standard of disclosure is required for a selection patent; it is sufficient if the selection patent discloses the inventive step that it has over its parent genus. The Court rejected the suggestion that because a witness is paid for his/her expert opinion or has a long relationship with one of the parties, that his/her evidence will necessarily be less than forthright. Evidence by persons with actual experience in the type of activity, regardless of their academic credentials, is preferable to evidence by those who have merely studied such activities, as it more closely mirrors the realities to which the expert opinion is directed.
4. Proctor & Gamble Pharmaceuticals Canada v. The Minister of Health and AG Canada, March 30, 2006 FCTD (Strayer J.) Judicial Review/Listing of Patents on Patent Register/Dosage Form/Claim for the Medicine Itself/ Paragraph 4(2)(b) and Paragraph 4(7)(b) Patented Medicines (Notice of Compliance) Regulations
Application by Proctor for judicial review seeking the quashing of a decision of the Minister not to list the '479 and '815 patents on the patent register in relation to the drug marketed under the name Actonel, which contains risedronate sodium as its active ingredient. The Minister concluded that neither the '815 nor the '479 patent were eligible for listing because neither patent contains a claim to the medicine risedronate sodium, or its use. The Minister also concluded that the '479 patent was not eligible because the dosage form claimed was not relevant to the dosage form of Actonel, since the '479 patent contemplated an enteric-coated risedronate composition (modified-release) whereas Actonel is a film-coated tablet (rapid release drug). Proctor argued that the relevant dosage form is that of a tablet containing the drug, and that both Actonel and the '479 patent involve the administration of a drug by an oral tablet.
Held: Application dismissed. The standard of review was correctness as the decisions involved the interpretation of the Regulations and patents. Both patents claimed a method of modulating the release of the active ingredient and thus claimed a "delivery system" for the drug rather than the "medicine itself" or "payload". The '479 patent should not be listed because it is not relevant to the dosage form of Actonel. A tablet with an enteric coating for delayed-release is a different dosage form from a tablet with no such coating. The detailed description of the '479 patent consistently refers to "enteric-coated oral dosage form" which clearly associates the coating with the form. The essence of the '815 patent is a film coated tablet dosage designed to carry the active ingredient to the stomach. The claims of the '815 patent clearly indicate that it claims only a delivery system. The summary and detailed description further indicate that the active ingredient may be any ingredient required to be delivered to the stomach. The essence of the '479 patent is an enteric-coated tablet designed to carry the active ingredient farther into the intestinal tract. Claim 1 of the '479 patent makes reference to "an enteric-coated oral dosage form of a risedronate active ingredient…"; however, even though claim 1 is specific as to the form of the dosage attached to its coating, it is unspecific as to what risedronate active ingredient would be involved. The summary and detailed description of the '479 patent also make it clear that the purpose of the invention is to avoid release of risedronate into the upper cavities.
5. Merck et al. v. Apotex, April 26, 2006 FCTD (Hughes J.) Infringement/Validity/ Estoppel/Improper Divisional/Double Patenting/Wilful Delay/Exemptions of Infringement/Sections 55.2 and 56 of Patent Act/Compulsory License
In an action by Merck claiming infringement of the '350 lisinopril patent, Apotex admitted infringement but counterclaimed, alleging invalidity of the '350 patent due to improper divisional of the parent application of the '350 patent, double patenting, and wilful delay. Merck argues that Apotex is estopped from challenging the validity of the claims due to prior litigation regarding the ‘349 patent, a patent covering a related compound and divided out of the same parent '340 application as the ‘350 patent. Alternatively, if the '350 patent is found to be valid, Apotex argues that certain quantities of lisinopril are exempt from infringement as they had either been obtained from an allegedly licensed source or used for allegedly exempted purposes.
Held: Counterclaims dismissed. The '350 lisinopril patent is valid and infringed. Apotex is precluded from raising attacks as to the validity of the ‘350 patent as the same issues (improper divisional, double patenting, and delay) could have been raised in the earlier ‘349 patent litigation since the '349 patent also arises from the same parent application. However, the ‘350 patent is valid regardless. The parent '340 patent application contained not one invention, but rather many separate inventions, and therefore was appropriately divided into separate applications, including the '350 patent. It is not relevant that there was another patent application (which never issued) for lisinopril pending at the time of the divisional. Even if the patent had been improperly divided, division is essentially a procedural matter and the validity of a patent does not depend on it. If several patents claiming the same invention have been granted, a sufficient remedy as to validity exists in the application of the principles of double patenting. The '350 patent is not invalid for reason of double patenting over the '684 patent. The '350 patent for lisinopril is patentably distinct from the '684 patent (enalapril plus a diuretic). There is no evidence that Merck wilfully delayed the issuance of the ‘350 patent. Infringement of the ‘350 patent by Apotex is subject to certain exemptions: (1) lisinopril prepared for the purpose of obtaining permission necessary for its sale is exempt from infringement under s. 55.2 and (2) lisinopril prepared for research and development falls within the common law 'fair dealing' exemption. Apotex cannot claim the benefit of s. 56 as the lisinopril in question was not in its final form prior to grant of the '350 patent. Apotex cannot claim the benefit of lots manufactured by another company under a compulsory license and ultimately acquired by Apotex. Merck is awarded damages and is not entitled to elect an award of profits since Merck chose to stop marketing lisinopril once Apotex entered the market.
6. Axcan Pharma v. Pharmascience and the Minister of Health, April 26, 2006 FCTD (Harrington J.) Prohibition Order/Prior Publication/Date of Invention/Method of Medical Treatment/Patented Medicines (Notice of Compliance) Regulations
Application by Axcan for an order prohibiting the Minister from issuing an NOC to Pharmascience with respect to ursodiol, until after expiry of its patent. The patent contains a single claim which describes a new use of ursodiol for treating primary biliary cirrhosis (PBC) and specifies a dosage range based on the patient's weight. Pharmascience alleged that the patent is invalid on the basis of lack of novelty, obviousness, unpatentability of medical treatments and having a claim broader than the invention disclosed.
Held: Application dismissed. The patent is invalid as it concerns a method of medical treatment which is not patentable. By giving the language of the claim its plain and ordinary meaning, the dosage is clearly an essential element of the patent. As the claimed dosage is an essential element, the patent is invalid as it claims a method of medical treatment. It is up to the physician, based on his/her knowledge of a patient's rate of metabolism and other factors, to determine the appropriate daily dosage. Axcan cannot claim exclusive property in the dosage. There is a distinction between the dosage in a capsule, which is a vendable product, and a dosage range based on the patient's weight. A reading of the claim reveals an emphasis on the dosage range, and a dosage range is not a vendable product. An abstract published in May 1986 does not invalidate the patent because the date of invention was held to date back to December 31 1984.
(b) Trade Marks
1. Lendingtree v. Lending Tree, March 22, 2006 FCTD (Dawson J.) Judicial Review/Amendment of Applicant’s Name during Opposition Proceedings
Application by the opponent for judicial review, seeking the quashing of the Opposition Board’s decision to accept an amendment to the applicant’s name. The application stood in the name of Lending Tree Corp. One of the grounds of opposition was that such party could not have used the applied-for mark as claimed. An affidavit was filed in support of a request to amend the applicant’s name to “Alex Haditaghi, trading as Lending Tree Corp.” on the basis that there was no legal entity known as Lending Tree Corp. and that Mr. Haditaghi erred, as a result of ignorance, in not prefacing his trading style with his name when he applied.
Held: Judicial review is not appropriate because an adequate alternative remedy is available to the opponent. The Board may consider the propriety of amendments made to the name of an applicant and the opponent will have an opportunity to make argument before the Board as to the propriety of the amendment.
2. Cross-Canada Auto Body Supply et al. v. Hyundai Auto Canada, April 3, 2006 FCA (Sexton, Sharlow, Malone JJ.A.) Appointment of New Solicitors/Affidavits from Lawyers
Appeal from a decision that ordered the appellants to appoint new solicitors to prepare written submissions for and present oral argument at the hearing of an expungement application. The appellants’ evidence consisted solely of affidavits from members of their lawyers’ firm concerning investigations that firm members had conducted.
Held: Appeal dismissed. It is not good practice for a law firm to have its employees act as investigators for the purpose of having them later give opinion evidence on the most crucial issues in the case, especially where there is no evidence from any non-employees of the firm. A client should not be subjected to the risk that the law firm’s employee’s potential lack of objectivity might result in lesser weight being accorded to that evidence. The following factors mitigate against the appellants’ solicitors preparing and arguing the case: the state of the proceedings; the likelihood that the witness will be called; the likelihood of a real conflict arising or that the evidence will be tainted; and the connection or relationship between counsel, the prospective witness and the parties in the litigation.
3. Spirits International v. Reg. TMs and SC Prodal 94, April 26, 2006 FCTD (Mosely J.) Section 45 Appeal/Special Circumstances Justifying Non-use
Appeal from a s. 45 decision that maintained the registration for STALINSKAYA for vodka based on special circumstances, and simultaneously issued a further s. 45 notice.
Held: Appeal dismissed. The burden of proof on a registrant to establish special circumstances justifying non-use is relatively low. The requirement to obtain ISO 9001 certification can be considered to be special circumstances that are unusual, uncommon or exceptional, justifying non-use “by virtue of the fact that they arise at the initial stage of launching a product in Canada by a company located in a foreign and emerging country and, implicitly, unfamiliar with Canadian legal requirements and business practices.” The Registrar found that the registrant believed that certification was a prerequisite to Canadian sales, not that certification was in fact required, and that it was this belief that led to non-use and qualified as special circumstances that were beyond the registrant’s control. It was open to the Registrar to conclude that the reasons for non-use were beyond the control of the registrant and do not exist in the majority of other non-use situations. The reasons for non-use need not be unusual, uncommon or exceptional but must be ones which do not exist in the majority of cases of non-use. (An appeal has been filed.)
(c) Practice
1. Purdue Pharma v. Novopharm and the Minister of Health, March 29, 2006 FCTD (Beaudry J.) Appeal of Discretionary Order/Federal Court Rule 312
Applicant Purdue Pharma appeals an order of Tabib P. dismissing a motion (1) preventing the respondent Novopharm from relying on certain portions of its affidavits, (2) for leave to file new evidence; and (3) awarding costs to respondent.
Held: Appeal dismissed. Applicant did not argue that the order dealt with questions vital to the final issue of the case and did not meet onus of establishing that Tabib P.'s decision was clearly wrong. First, the test in Canadian Tire Corp. v. P.S. Partsource, 2001 FCA 8, used in a motion to ignore evidence, is not incompatible with that given in AB Hassle v. Canada, 7 C.P.R. 4th 272. Second, r. 312 of the Federal Courts Rules gives the Court discretionary power to allow parties to file supplementary evidence and in Atlantic Engraving Ltd. v. Lapointe Rosenstein, 2002 FCA 503 it was stated that additional evidence may be filed if, inter alia, the evidence to be adduced will serve the interests of justice. As the applicant failed to provide a sufficient indication of what the new evidence would establish, it was within the court's discretion to refuse it. Finally, the applicant's behaviour in the course of proceedings, particularly with respect to the second issue, justified an award of costs to the respondent.
2. Kraft Canada et al. v. Euro Excellence, April 7, 2006 FCTD (Harrington J.) Costs/Copyright Infringement
Motion by the plaintiff, Kraft Canada, requested that the assessment officer be given directions with respect to the taxation of costs it was awarded on its successful application for copyright infringement. The defendant, Euro Excellence, submits that there is no reason to depart from the assessment of fees normally awarded in the absence of specific directions, which is the mid-range of Column III of Tariff B.
Held: The award of lump sum payments in lieu of directions is often desirable, but not in cases such as this where the parties are so far apart on individual items. The complexity of the issues, the detail that had to go into the preparation for the hearing, the overall celerity of the matter and the fact that the actual fees incurred by Kraft were much greater than those recoverable under the high end of Column IV, justifies an award of costs based on the high end of Column IV rather than the mid-range of Column III. With respect to the disbursements at issue, the costs incurred in translating from French to English are disallowed since this is a national court which operates in both official languages. The costs associated with hiring French solicitors to attend the cross-examination of a witness in Paris will be limited to the costs that would have been incurred if the cross-examination had been carried out by Kraft’s own Canadian solicitors. The photocopy charge of $0.15/page is deemed reasonable. No decision was made as to the reasonableness of the online computer charges and government fees due to the limited amount of information provided about them. Silence on any particular item, however, does not serve as a direction, one way or another, to the taxing officer.
3. Kraft Canada et al. v. Euro Excellence, April 7, 2006 FCTD (Harrington J.) Damages/Copyright Infringement/New Evidence/Apportionment
Motion by the plaintiff, Kraft Canada, for a redetermination of damages for copyright infringement. In a previous decision Kraft Canada was awarded damages of $300,000 for copyright infringement. Euro Excellence appealed the decision and the Court of Appeal referred the matter of damages back to the Trial Judge. A separate motion was filed by the defendant, Euro Excellence, to introduce new evidence.
Held: The motion to introduce new evidence was dismissed and the plaintiffs were awarded damages of $300,000 with interest. The new evidence relating to Euro Excellence's net profits was certainly available prior to the hearing and thus inadmissible. The new evidence relating to the purchase of a machine to render the wrappers non-infringing is irrelevant since Euro Excellence cannot deduct the cost incurred to avoid continuing its infringement of Kraft's copyright. Kraft Canada is entitled to damages in the form of an accounting and payment of Euro Excellence's profits in respect of the sale of products bearing the copyrighted works. The infringement was limited, however, to the copyrighted works on the chocolate bars so it is obvious that not all of the gross revenue from the sales derived from the infringement. Since Euro Excellence failed to prove its elements of costs, and failed to lead any evidence as to apportionment it is impossible to accurately estimate the damages sustained by the plaintiffs. This however does not relieve the defendant of paying damages. In these circumstances the court must do “the best it can". In this case an award of damages of $300,000 (~10% of gross profits) representing profit attributable to the infringement is deemed fair and reasonable.
4. Diamant Toys v. Jouets Bo-Jeux Toys, April 7, 2006 FCTD (Martineau J.) Federal Court Rule 75/Amendments with Leave
Motion by plaintiff to amend statement of claim on first day of trial. Amendments include an extension of copyrighted works claimed to include product packaging and written instructions, resulting from discovery examinations.
Held: Motion granted. The proposed amendments are only made to refocus and particularize specific aspects of the same cause of action, which arose from the alleged infringement of their copyrighted works. It would be wasteful of Court's resources to require plaintiff to institute a separate action based on the same claims of copyright infringement and passing off, relying on the same underlying facts and simply relating to an expanded line of products that allegedly continue to have the same general appearance and distinctive packaging.
5. Video Box Enterprises et al. v. Kien Phac Lam and Le Quan Lam, May 1, 2006 FCTD (Russell J.) Summary Judgment/Copyright Infringement
Motion by Video Box for summary judgment against Mr. Lam, for selling and distributing pirated copies of its Chinese-language movies (TVB programs). Motion by Mr. Lam to amend his pleadings and enter a counterclaim in accordance with r. 75(1). Mr. Lam submitted that among other illegal activity, Video Box has used threats, illegal schemes and aggressive litigation strategy to coerce him and other non-English speaking members of the Chinese community into unfair contracts, causing “enormous damage” to his and other businesses.
Held: Motion to amend dismissed. Motion for summary judgment allowed with $10,000 damages awarded against Mr. Lam. The Court found Mr. Lam’s allegations to be vague, lacking material fact, contradictory and without merit. To allow the amendment would prejudice the plaintiffs because they would not know the material facts of the case they have to meet. The proposed amendments and counterclaims represented an attempt to deflect the Court from the allegations against Mr. Lam and prolong proceedings with the hope of uncovering a defence. With respect to the summary judgment, the defence, with or without the amendments, failed to present adequate facts showing a genuine issue for trial, as per Granville Shipping Co. v. Pegasus Lines Ltd., [1996] 2 F.C. 853, MacNeil Estate v. Canada, [2004] 3 F.C.R. 3, 2004 F.C.A. 50. The facts that a significant portion of Video Box’s case was unclear and that Mr. Lam had acted in bad faith were relevant to determining the amount of damages awarded, but the most significant factor was the need for deterrence.
II. OTHER COURT DECISIONS
1. Governing Council of the University of Toronto et al. v. John N. Harbinson, December 16, 2005 OSCJ (Stewart J.) Patent Licence Agreement/Arbitration Clause/Jurisdiction
Harbinson entered into 2 agreements with U of T; one was a license to exploit an invention that U of T warranted was invented by one of its employees; the other was an agreement requiring Harbinson to fund that person’s research on that invention. The licence agreement contained an arbitration clause. Harbinson sought an arbitration ruling when it began to doubt that the individual in question had actually invented the invention. U of T claimed that the arbitration clause did not apply because Harbinson’s claims had to be advanced under the Patent Act.
Held: The arbitration panel has jurisdiction because Harbinson is not advancing any causes of action or seeking any remedies under the Patent Act. His is a traditional contract cause of action.
2. Astrazeneca Canada v. Apotex and AG Manitoba, February 13, 2006 MCA (Monnin J.A.) Jurisdiction/Drug Interchangeability/Patent Infringement
Appeal by the Province and Apotex from a declaration that the listing by the Minister of Health of Apotex’s Apo-omeprazole on the Manitoba Drug Interchangeability Formulary was ultra vires. Omeprazole is not patented but the respondents own a patent for its use in combination with certain antibiotics for treatment of a specific condition. The Minister listed the appellant’s omeprazole as being interchangeable with that of the respondents (LOSEC). The Trial Judge interpreted “interchangeable” as meaning legally interchangeable and therefore found the listing to be ultra vires on the basis that it would be illegal to use the appellant’s product in such a way as to infringe the respondents’ patents. The Minister argued that it was up to doctors and pharmacists to ensure that the use of Apo-omeprazole was restricted in accordance with federal legislation.
Held: Appeal granted. A contextual interpretation of the Manitoba law indicates that its intent was to list drugs that are therapeutically interchangeable. As Apo-omeprazole is therapeutically interchangeable with the respondents’ LOSEC, the listing was not ultra vires.
3. SRU Biosystems v. Hobbs, March 1, 2006 OSCJ (Morin J.) Service ex Juris/Effect of Filing Patent Application on Jurisdiction/Forum Non Conveniens/Foreign Parties
Motion by defendants to set aside service of statements of claim or for an order dismissing action for want of jurisdiction. Parties were engaged in the development of technology pursuant to a verbal agreement and memorandum of understanding. Defendants filed a Canadian patent application listing only themselves as inventors. All parties are residents of the U.S. The plaintiffs have commenced actions against the defendants for breach of contract in the U.S. and in the Federal Court of Canada to determine the inventorship. Ontario action is under tort law and for breach of contract.
Held: Motion dismissed. Defendants were properly served ex juris pursuant to Ontario rule 17.02 because the patent application gives them personal property rights within Ontario (it matters not that the Patent Office is now located in Quebec). The defendants wish to prevent others in Ontario from making and selling that which is covered by their patent application. In addition, the Court will assert jurisdiction over these foreign defendants because: the subject matter of this action is the Canadian patent application; it is not unfair to subject the defendants to this jurisdiction given that they have taken several steps in association with the subject patent application; the U.S. and Federal actions do not deal with the same subject matter as the present action and would not result in inconsistent decisions. The Court also held that there was no other forum more clearly suited to resolve the issues raised in this action. The Court did however comment more than once that this is a close case on all of the issues.
4. Diefenthal et al. v. Bilbija et al., April 3, 2006, OSCJ (Spies J.) Trade Secrets/ Confidential Information/Breach of Confidence
In a broader commercial case, the defendants brought a counterclaim for damages for breach of confidence and breach of fiduciary duty. The defendants transferred confidential and proprietary information, including formulas and trade marks, to the plaintiffs as part of a failed joint venture. The defendants asserted that the plaintiffs failed to proceed in good faith to formalize a joint venture agreement and refused to return the confidential and proprietary information, which they instead appropriated to their advantage.
Held: Claim dismissed. The defendants did not own the formulas, and thus did not have standing to assert this claim. The plaintiffs did not sign a confidentiality agreement. Furthermore, there was no evidence that the plaintiffs ever manufactured product using the defendants’ formula, nor sufficient evidence to support the claim that the plaintiffs had continued to make use of any confidential information regarding the formula after the joint venture failed.
5. R. v. Allen, April 13, 2006 APC (Fraser P.C.J.) Infringement of Copyright in Maps
The Crown charged Mr. Allen with infringing the copyright in a book of maps, pursuant to s. 42(1)(a) of the Copyright Act.
Held: Guilty as charged. The changes that the accused made to the maps were not changes in the artistry. They were changes of style rather than originality; change for the sake of cost reduction. The original work remains intact. There may be considerable labour and skill exercised in copying the maps and changing them, but neither involved the exercise of intellectual judgment; instead they were judgments of a mechanical nature and cosmetic changes. The Court did not believe the accused’s claim that he did not know that he was infringing copyright. Instead the Court found that, given his experience and knowledge in the business of map making, the accused had the necessary mens rea.
6. Telus Communications v. Rogers Wireless, May 10, 2006 OSCJ (Ground J.) Interim Injunction/False and Misleading Statements
Motion by Telus for an interim injunction to restrain Rogers from publishing misleading advertisements stating that Rogers is Canada’s “clearest wireless network”. In part, Telus wants time to examine the reports upon which Rogers’ claim is made.
Held: Motion denied. An injunction to restrain the dissemination of one particular advertisement in a highly competitive business where many claims to superiority are made would be a serious interference with the status quo of the marketplace. The Court was not satisfied that Telus had a very strong case under the Competition Act or the Trade-marks Act. There is no irreparable harm because the parties are “large sophisticated corporations which engage in extensive marketing and advertising campaigns and would presumably have historic records of numbers of customers ‘churning’”, which would enable them to calculate the loss of customers attributable to the claim.
7. Greenbriar Holding et al. v. Canadian Hydrogen Energy, May 12, 2006, OSCJ (Mesbur J.) Motion for Order to Restrain Disclosure of Confidential Information
Motion by plaintiffs to continue a previous consent order that restrained the defendant (CHEC) from disposing of or encumbering certain disputed assets, or disclosing confidential information regarding those assets pending trial. CHEC argued that restraining it from encumbering the assets or disclosing confidential information to third parties would hamper its ability to conduct its business.
Held: Motion granted. Pending trial, CHEC will not dispose of, assign, transfer or otherwise encumber the assets or disclose to any third parties any technology or confidential information associated with those assets. It is critical to the interests of all parties that the assets and their inherent value be preserved pending trial. A part of the assets was patent applications and, until patents are granted, it would diminish their potential value to have confidential information concerning the applications disclosed to third parties.
III. OPPOSITION BOARD DECISIONS
1. Salter Street Films v. Pyramid Productions, January 16, 2006 (Bradbury) Distinctiveness/Weight Accorded to Third Party Websites
Use-based application for PYRAMID PRODUCTIONS for production of television shows and of videos. Opposition based, inter alia, on non-distinctiveness due to third party use of PYRAMID names.
Held: Opposition rejected. There was evidence that another party has used Pyramid Productions as the name of a film production business in Canada. However, the Registrar did not give this evidence much weight because it postdated the material date and third party websites are not evidence of the truth of the statements made therein. In addition, there was no evidence of the extent of use by this third party, resulting in the opponent not meeting its initial onus to show that this other Pyramid Productions had become known sufficiently as of the material date to negate the distinctiveness of the applicant’s mark. (An appeal has been filed.)
IV. SECTION 45 DECISIONS
1. Riches, McKenzie & Herbert v. Parfums de Coeur, January 24, 2006 (Bradbury) Use of Mark Simpliciter
SKIN registered for cologne.
Held: Registration maintained. Although the packaging displays SKIN followed by the word MUSK and ®, SKIN appears in a much larger and different script. Since “musk” is a type of scent, consumers would perceive the packaging as referring to the registrant’s SKIN brand of musk cologne.
2. Gowling Lafleur Henderson v. Bulova Watch, January 30, 2006 (Bradbury) Use on Invoices/Use as Part of Corporate Name
THE ART OF TIME registered for watches and clocks.
Held: Registration restricted to clocks. Invoices bearing a design version of the corporate name Art of Time Ltd. accompany clocks when they are sold. The Registrar held that the words ART OF TIME were sufficiently set apart from Ltd. and created their own distinctive element that parties receiving the invoices with clocks would interpret ART OF TIME as a mark that distinguished this clock from those of others.
3. Art of Loving v. Paul Mauchline, January 30, 2006 (Bradbury) Sufficiency of Evidence
THE ART OF LOVING registered for educational services; namely conducting classes, seminars, conferences and workshops in the field of interpersonal relationships.
Held: Registration restricted to the workshops. Website activities in the form of providing information and advice were held not to be classes, seminars or conferences. Although the affiant referred to periods of time that overlapped with the material three-year period, an advertisement for a workshop dated within the relevant time period sufficed to maintain the registration for workshops since it is not necessary that workshops were performed during that time period, simply that the registrant was in a position to perform them.
4. Michaels & Associates v. W.L. Smith & Associates, January 30, 2006 (Bradbury) Sufficiency of Evidence
SERENITY registered for funeral stationery.
Held: Registration expunged. Although catalogues were provided that showed the wares advertised in association with the mark, there was no evidence that the mark was associated with the wares at the time of transfer or sale as required by s. 4. In addition, although the affiant stated that the wares were being offered for sale during the relevant time period, there was no evidence that there were any sales.
5. 88766 Canada v. Coca-Cola, February 8, 2006 (Savard) Use of Registered Trade Mark Per Se
CLASSIC registered for carbonated beverages.
Held: Registration expunged. CLASSIC is always used below the trade mark COCA-COLA, with the notice ®/MD appearing below the two marks. COCA-COLA appears in a different script and much larger font size than CLASSIC. The Registrar concluded that CLASSIC would not be perceived as forming a distinct trade mark; rather, the public would view the word CLASSIC as being tied to the words COCA-COLA. The trade mark notice would be interpreted as referring to the marks COCA-COLA and COCA-COLA CLASSIC.
6. Ogilvy Renault v. Werner, February 9, 2006 (Savard) Sufficiency of Evidence
PLATINUM registered for various items of saddlery.
Held: Registration expunged. Although the affiant stated that the mark was in use during the relevant time period and provided photographs showing how the mark is applied to the wares, as well as advertisements for the PLATINUM products, this is insufficient to maintain the registration because there is no evidence or even a clear statement that each of the wares were sold or leased in the normal course of trade during the material time period. Advertising the wares in association with the mark is not use of the mark for wares.
7. Labatt Brewing v. J. Mavor Moore, February 10, 2006 (Bradbury) Sufficiency of Evidence/Special Circumstances
SPRING THAW registered for books, records, tapes and various entertainment services.
Held: Registration expunged. A stage revue entitled SPRING THAW ran annually from 1948 to 1968. Materials from those productions have been reproduced in anthologies but the references therein to SPRING THAW do not qualify as use of the trade mark. The inclusion of a sketch in a television historical perspective does not qualify as use because there is no evidence that SPRING THAW appeared during the sketch or was displayed in advertisements. Although negotiations have been ongoing for a number of years concerning a possible revival, the affiant indicated that the reasons for non-use are common to the industry and there is no reason to assume that use will resume shortly.
8. Lidl Stiftung v. 436775 Ontario, February 16, 2006 (Savard) Use with Each Category of Wares
GREEN GROCER & Design registered for packaged and bulk packed fresh fruits and vegetables; pre-packaged fresh fruits and vegetables; pre-packaged fruits and vegetables; various foodstuffs, flowers, packaging and aprons; and the operation of retail fruit and vegetable stores.
Held: Registration restricted to packaged and bulk packed fresh fruits and vegetables and pre-packaged fresh fruits and vegetables. The sale of “foiled wrapped potatoes”, “wrapped coconuts”, “tray baking potatoes” and “onions” all subsequently packed into boxes and/or nylon-plastic breathable bags sufficed to maintain the above-mentioned fruits and vegetables. In order to also maintain “pre-packaged fruits and vegetables”, the registrant would have had to show use with fruits and vegetables other than fresh fruits and vegetables.
9. Goudreau Gage Dubuc v. Bijouterie Baroque, February 20, 2006 (Carrière) Special Circumstances/Use of Marks on Jewellery
A8S registered for rings, bracelets, ear-rings, chains, charms, necklaces, pins and brooches.
Held: Registration restricted to rings, bracelets, ear-rings, charms, pins and brooches. The registrant stated that it had not used the mark in association with chains and necklaces due to financial reasons, competition, and the needs of capital to finance the equipment necessary for the manufacture of those types of jewellery. The Registrar held that these were not special circumstances that would justify the non-use and noted that the registrant had not indicated when it expects to resume use with those wares or what steps it is taking toward that end. The requesting party argues that the engraving of the mark on the other items of jewellery did not serve to associate the mark with the registrant in the mind of consumers because the marking is too small. However, the Registrar did not hold the size of the marking against the registrant, noting that the Act does not specify the form of the marking of the trade mark on the wares and that the mark is visible to the naked eye, although perhaps not for some people with difficulty.
10. Riches McKenzie & Herbert v. OPT, February 20, 2006 (Carrière) Section 50
OCTO-PLUS registered for various items for sale in optometrists’ offices, including glasses cleaner.
Held: Registration restricted to glasses cleaner. The registrant only evidenced use in association with that one ware. The back of the container of those wares bear the name of a third party but the registrant’s affiant stated that such company manufactures the glasses cleaner for the registrant in accordance with the registrant’s specifications and control. The Registrar stated that this is sufficient for the purposes of s. 45 proceedings to conclude that the use enures to the registrant’s benefit.
11. Brouillette Kosie Prince v. Guido Berlucchi & C., February 22, 2006 (Savard) Sufficiency of Evidence
CUVÉE IMPERIALE BERLUCCHI & Design registered for sparkling wines and other alcoholic beverages.
Held: Registration expunged. The current owner of the mark claimed that it had used the mark in association with 300 bottles of sparkling wines. It provided an invoice that referred to the sale of 300 bottles of “CUVÉE IMPERIALE BRUT”. It did not provide a copy of the label that was used on these bottles, leaving the Registrar in a state of doubt as to whether the mark as registered was used.
12. 1292162 Ontario v. CarCanada, February 23, 2006 (Savard) Use in Association with Registered Services
CARCANADA registered for operation of retail tire dealers’ stores.
Held: Registration expunged. The registrant uses the trade mark in association with a used car business which provides a wide range of services including the sale of motor vehicle parts such as tires but the Registrar did not accept that this amounts to use in association with the operation of retail tire dealers’ stores.
V. PATENT APPEAL BOARD DECISIONS
1. Patent Application 2,055,020, Commissioner's Decision #1259, September 16, 2004 Review of Final Action Rejection/Section 28.3 of the Patent Act
A request by the Applicant, CertainTeed, for review of the Final Action on a patent application, which relates to a method for reducing roofing labour and material costs by increasing the height and width dimensions of the standard shingle (18” overall height and 8” exposure height, as opposed to the standard 12:5 inch ratio). In the Final Action, the Examiner rejected all claims in view of U.S. patent 4,825,616 (Bondoc), U.S. patent 3,624,975 (Morgan) and common knowledge in the art, stating that the references teach that increasing shingle dimensions can reduce the number of shingles needed per square unit of roofing area. The Applicant argues that the claimed invention is an inventive improvement over the cited references. The Morgan shingle is dimensionally similar to the industry standard, and Bondoc’s 17:7.5 inch ratio is not relevant because its dimensions serve a purpose unrelated to the Applicant’s object of increasing installation efficiency. In particular, Bondoc specifically cautions that any increase in height “provides no additional benefit and represents a waste of material.”
Held: Final Action Rejection maintained. The application makes no disclosure of a problem in the art for which a solution was sought, only a disclosure of benefits to be realized by practicing the invention. However, these benefits, and the techniques for achieving them, are well known in the art. Although the Bondoc dimensions relate to its specific function as a re-roofing shingle, Bondoc also discloses use of the shingle for new roofs and describes the added benefit of savings in time, labour, material and nails due to the shingle’s increased dimensions. Morgan also provides a teaching relating to the efficiency of larger shingles. Furthermore, the Applicant makes no disclosure of any difficulties encountered in producing shingles in the desired dimensions from standard shingle material. The Board felt that with this knowledge in hand, the technician skilled in the art, but having no inventiveness or imagination, would have been led directly and without difficulty to the alleged invention which is disclosed and claimed in the instant application. The refusal of the claims is affirmed for being obvious at the claim date and failing to comply with s. 28(3) of the Patent Act.
2. Patent Application 2,203,302, Commissioner's Decision #1260, December 6, 2004 Review of Final Action Rejection/Sections 28(2)(1)(b), 28.3 and 2 of the Patent Act/Patent Rule 84
A request by the Applicant, Rankin Research, for review of the Final Action on a patent application, which relates to a method to track a stolen vehicle using an existing cellular telephone system. The Examiner rejected the application on the basis that the invention claimed lacked novelty under s. 28(1)(b) of the Patent Act in view of another Canadian application. The Examiner also rejected the application on the basis that the invention was obvious under s. 28.3 of the Patent Act, at the claim date, over cited prior art consisting of a Canadian patent application and two U.S. patents. In particular, the Examiner argued that the Applicant merely substituted the automated systems in the prior art with the appropriate actions of human beings, namely security personnel, cellular network operators and tracking vehicle operators. Further, the Examiner based his rejection on s. 2 of the Patent Act, stating that the application did not claim an invention, because using a skilled team and their human/interpersonal interactions involving prior art devices is not patentable in that it does not derive from an integrated system or method which can repetitively provide consistent results. Finally, the Examiner based his rejection on r. 84 of the Patent Rules, stating that the claims lacked sufficient support in the description on how to operate or use the information to achieve the claimed results. In the Applicant's reply to the Examiner's Final Action, the Applicant submitted a new set of amended claims with the addition of two features: 1) an open voice channel is established from the network infrastructure, and 2) the open voice channel is maintained while finding the direction in which the cellular transceiver is located based on the arrival of RF signals emitted by the transceiver on the open voice channel. The Applicant contended that the amended claims overcome the novelty rejection, as the cited prior art clearly does not disclose some of the steps. The Applicant also contended that the amended claims involve the addition of distinctive features that have no equivalent counterpart in the methods disclosed in the cited prior art, and as such the invention is not obvious. Finally, the Applicant argued that for many industrial and commercial fields to which inventions are usefully applied, human intervention or mental steps are required for carrying out the method according to the present invention.
Held: Final Action Rejection reversed. The Board found that the amended claims which were submitted with the reply to the Final Action overcame the anticipation rejection through the addition of the two features. Applying the test for obviousness set out in Beecham Canada v. Proctor & Gamble (1982), 61 CPR (2d) 1 at 27), the Board found that what the Applicant had disclosed was not obvious in view of the cited references. In particular, the cited prior art were closely related to each other and did not provide any more information that would lead a worker skilled in this field of technology to the method disclosed by the Applicant. Further, the Board considered the question of what type of human participation in the steps of a method are permitted by applying the Commissioner's decision in Re Application for a Patent Containing Claims that Read on Mental Steps Performed by a Human Operator in Deciding to Transmit a Signal (23 C.P.R. 93 at 95). In reviewing the claims of the application, the Board considered the actions that might be carried out by a human operator as routine – i.e. once an operator has learned how it works, the result will always be the same regardless of the skill and experience of the operator. Thus, the Board concluded that the methods set out in the application do not fall outside the scope of the definition of invention contained in s. 2 of the Patent Act. Finally, the Board was satisfied with the Applicant's submissions that the claims are fully supported and that a person skilled in this field of technology will be able to put the invention into operation using the information contained in the application. As a result, the Board recommended the Examiner's rejection of the application be reversed and that the application be returned to the Examiner for further prosecution consistent with these recommendations.
3. Patent Application 2,112,044, Commissioner's Decision #1261, April 21, 2005 Review of Final Action Rejection/Section 28.3 of the Patent Act
A request by the Applicant, Standard Products, for review of the Final Action on a patent application, which relates to a process for manufacturing elongated electroluminescent light strips employing a coating to make the phosphor matrix layer moisture resistant. In the Final Action, the Examiner cited Canadian patent 2,051,181 with the same named inventors as the current application (hereafter Gustafson) and U.S. 5,080,928 (hereafter Klinedinst) to reject all of the claims as well as the application itself. The Applicant argued that the Examiner's position was one based on hindsight and that claims similar in scope to claims previously on file were found allowable by the U.S examiner notwithstanding Klinedinst. Further, the Applicant argued that there is no direction or motivation in Gustafson et al that there is any need or desire for a process such as that described in Klinedinst since Gustafson addressed the issue of moisture protection with the particular structure and process described.
Held: Final Action Rejection maintained. The subject matter of the claims is obvious and contravenes s. 28.3 of the Patent Act. A test for obviousness was set out in Beecham Canada Ltd v Proctor & Gamble (1982), 61 CPR (2d) 1. This test requires that the Board determine the state of the art in the field of technology at the claim date. Gustafson shows that electroluminescent light strips of the same construction as in the instant application were known. Klinedinst shows that coated phosphor particles were known and discloses that these particles can be used in electroluminescent light strips to overcome the well-known problem of moisture. Hence the Board is led directly and without difficultly to the conclusion that the process for the manufacture of electroluminescent light strips as disclosed and claimed in the instant application would have been obvious to a person skilled in this field of technology at the claim date.
4. Patent Application 2,166,001, Commissioner's Decision #1263, July 13, 2005 Review of Final Action Rejection/Anticipation/Obviousness
A request by the Applicant, Bernard Sherman, for review of the Final Action on a patent application, which relates to a method of formulating a stable formulation of an enalapril salt by mixing enalapril maleate with a sodium salt, subjecting the mixture to wet granulation, and then forming tablets containing a stable sodium salt of enalapril. The Examiner based her rejections on anticipation and obviousness. On anticipation, the Examiner cited a number of references to show that each step of the claimed process was "old and known". In particular, anticipation of the application was established by Merck & Co.'s use and sale of Vasotec tablets. The Applicant argued that the Examiner erred in creating a mosaic of the prior art by combining the formulation of enalapril tablets with its use and sale. On obviousness, the Examiner held that a person skilled in the art would have arrived at the subject matter of the Sherman Application by combining the list of ingredients from the Vasotec product monograph using the well-known process of wet granulation. The Applicant countered that: 1) the prior art teaches that combining the ingredients of the Vasotec tablet using wet granulation does not result in a reaction that produces enalapril sodium tablets; 2) the core of the Sherman Application is the chemical reaction during the wet granulation process; and 3) the Examiner did not explain why a person skilled in the art wanting to produce a sodium enalapril tablet would use a list of ingredients related to an enalapril maleate tablet.
Held: Final Action Rejection reversed. Citing the tests for anticipation and obviousness set out in Reeves Bros. Inc. v. Toronto Quilting & Embroidery Ltd., 43 C.P.R. (2d), 145 at 157 and Beloit Canada Ltd. v. Valmet Oy, 8 C.P.R. (3d) 289 at 294 respectively, the Patent Appeal Board found the method disclosed in the Sherman Application to be novel and unobvious. Specifically, although each of the steps of the method set out in the Sherman Application was already disclosed by at least one of the prior art references, each of the references was missing at least one essential feature of the method claimed. Moreover, no direction was given in any of the references that would make the combination of them plain or evident to an "unimaginative technician".
