Robert MacFarlane

Partner

Toronto, 416.957.1616

Practice Group(s)

Patents
Mechanical & Industrial Processes
Oil & Gas
Litigation

Education

B.Eng. (Mech. Eng.), St. Francis Xavier and the Technical University of Nova Scotia, 1969
LL.B., Queen's University, 1973

Qualifications

Admitted to the Ontario Bar, 1977
Registered Canadian Patent Agent, 1975
Registered United States Patent Agent, 1996
Registered Canadian Trademark Agent, 1977
 

Professional Memberships

Advocates' Society
American Bar Association (ABA)
American Intellectual Property Law Association (AIPLA)
Intellectual Property Institute of Canada (IPIC), Fellow
International Trademark Association (INTA)

Robert MacFarlane

B.Eng. (Mech. Eng.), LL.B.

Robert MacFarlane is a partner with Bereskin & Parr LLP. Robert’s practice focuses on litigation for patent, trademark, copyright and confidential information cases.  He has about 40 years of litigation experience and has appeared in the Ontario Superior Court, the Ontario Court of Appeal, the Federal Court of Canada, the Federal Court of Appeal and the Supreme Court of Canada. He is frequently ranked by several recognized legal publications as one of Canada’s top patent litigators and has been inducted as a Fellow of the American College of Trial Lawyers.

Robert is currently representing NOVA Chemicals in a patent infringement action relating to polyethylene resin compositions; Packers Plus Energy Services Inc. in four patent infringement actions relating to apparatus and methods of fracturing ("fracking") oil and gas wells; and MediaTube Inc. in a patent infringement action relating to Internet protocol TV services.

He is the author of a number of published articles and of the “Limitation Periods” and “Interest” chapters in the book Intellectual Property Disputes: Resolutions & Remedies.

Bereskin & Parr LLP
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Our People

Robert MacFarlane

Robert MacFarlane

B.Eng. (Mech. Eng.), LL.B.

Partner
Toronto      Ph: 416.957.1616

Practice Group(s)
Patents
Mechanical & Industrial Processes
Oil & Gas
Litigation

Education
B.Eng. (Mech. Eng.), St. Francis Xavier and the Technical University of Nova Scotia, 1969
LL.B., Queen's University, 1973

Qualifications

Admitted to the Ontario Bar, 1977
Registered Canadian Patent Agent, 1975
Registered United States Patent Agent, 1996
Registered Canadian Trademark Agent, 1977
 

Robert MacFarlane is a partner with Bereskin & Parr LLP. Robert’s practice focuses on litigation for patent, trademark, copyright and confidential information cases.  He has about 40 years of litigation experience and has appeared in the Ontario Superior Court, the Ontario Court of Appeal, the Federal Court of Canada, the Federal Court of Appeal and the Supreme Court of Canada. He is frequently ranked by several recognized legal publications as one of Canada’s top patent litigators and has been inducted as a Fellow of the American College of Trial Lawyers.

Robert is currently representing NOVA Chemicals in a patent infringement action relating to polyethylene resin compositions; Packers Plus Energy Services Inc. in four patent infringement actions relating to apparatus and methods of fracturing ("fracking") oil and gas wells; and MediaTube Inc. in a patent infringement action relating to Internet protocol TV services.

He is the author of a number of published articles and of the “Limitation Periods” and “Interest” chapters in the book Intellectual Property Disputes: Resolutions & Remedies.

Articles

Speaking Engagements

Intellectual Property Institute of Canada

Case Management in IP Litigation
Webinar
October 30, 2015

Brought to you by the Young Practitioners Committee

Recently, the Federal Court issued a Notice to the Profession intended to “increase proportionality in complex litigation”, which includes several “best practice” guidelines that case management judges have already been implementing. In this webinar, an experienced intellectual property litigator and a prothonotary of the Federal Court will discuss the implications of the Notice, and how it will likely affect ongoing litigation and future proceedings. Focus will be placed on how practitioners should interpret the language of the Notice, what it actually means for Canadian intellectual property litigation (particularly patent and PM(NOC) litigation), and accessing justice for litigants.

Speakers
Robert MacFarlane - Bereskin & Parr LLP
Prothonotary Kevin Aalto - Federal Court of Canada

Moderator
Amrita V. Singh - Bereskin & Parr LLP


Webinar
Friday, October 20, 2015
1 pm - 2 pm


For more information and to register click here.

CIPCC

6th China IP Counsel Congress 2014
Shenzhen, China
May 15 - 16, 2014

Robert MacFarlane and Daniel Bereskin will be attending the 6th China IP Counsel Congress 2014, which is aimed at creating the best platform for China’s IP professionals and to promote the development of IP in the science and technology industries in Shenzhen and South China. Daniel Bereskin will also be attending the event.

Bob will be a speaker at the event, discussing the controversial Canadian doctrines of "Promise of the Patent" and "Sound Prediction", which have led to findings of patent invalidity in dozens of cases in the Federal Court of Canada. This will include: the Court's reasons for these doctrines, their scope and main characteristics, and recommendations to avoid their pitfalls when filing in patent applications in Canada.

The 6th China IP Counsel Congress 2014 will be hosted by JFPS Group and partnered with Shenzhen Institute of Standards and Technology. It is recognized as the most influential and professional event with latest information and compelling business opportunities for the IP practitioners in China.

For more information please click here.

The Canadian Bar Association (CBA)

Forum on IP Litigation (Town Hall Meeting)
Ottawa, ON
November 14, 2011

Robert MacFarlane of Bereskin & Parr LLP will be speaking at this event.

For more information go to: http://www.cba.org/CBA/sections

Event Attendance

CBA IP Day

The Canadian Bar Association
Ottawa, ON
May 11, 2017

Robert MacFarlane, Don Cameron and Amrita Singh will be attending the Canadian Bar Association's IP Day on May 11, 2017.

For more infroamtion, please click here.

American Intellectual Property Law Association

Mid-Winter Institute
Orlando, FL
January 28 - 31, 2015

Robert MacFarlane will be attending the American Intellectual Property Law Association (AIPLA) 2015 Mid-Winter Institute. 

This in-depth, four-day Institute will cover the development and execution of comprehensive licensing programs and monetizing strategies. Attendees will learn both the fundamentals of a licensing program and how to move your strategies to the next level, and to bring innovations to the public and maximize returns.   

AIPLA is a national bar association constituted primarily of lawyers in private and corporate practice, in government service and in the academic community, focusing on IP issues of both national and international impact. 

For further information, please click here.

American Bar Association

IPL Spring Conference
Washington, DC
April 2 - 4, 2014

Robert MacFarlane, Robert Storey and Melanie Szweras will be attending this Conference.

For more information, pleast click here.

International Trademark Association (INTA)

135th Annual Meeting
Dallas, TX
May 4 - 8, 2013

Dan Bereskin, Lloyd Sarginson, Cynthia Rowden, Robert Storey, Susan Keri, Scott MacKendrick, Terry Edwards, Jonathan Colombo, Jennifer McKenzie, Victor Krichker, Janice Bereskin, Brigitte Chan, François Larose, Mina ChanaSharyn Costin, Meghan Dillon, and Jonathan Burkinshaw are scheduled to attend.  

For more information go to: www.inta.org

Accolades

  • 2017 Canadian Legal Lexpert Directory
  • World IP Review: Leaders 2017
  • Benchmark Litigation Canada 2017
  • Who’s Who Legal Patents 2017
  • World Trademark Review 1000 2017
  • Lexpert Guide to the Leading U.S./Canada Cross-Border Corporate Lawyers in Canada
  • Chambers Canada 2017
  • Best Lawyers in Canada 2017
  • 2016 Canadian Legal Lexpert Directory
  • IAM Patent 1000 2016
  • Expert Guides: Trade Mark 2016
  • Who’s Who Legal: Patents 2016
  • Benchmark Litigation Canada 2016
  • Chambers Global: The World's Leading Lawyers for Business 2016
  • Robert MacFarlane Inducted as a Fellow of the American College of Trial Lawyers
  • The Legal 500 Canada 2016
  • World Trademark Review 1000 - The World's Leading Trademark Professionals 2016
  • Who's Who Legal Canada 2015
  • Chambers Canada Guide 2016
  • Best Lawyers in Canada 2016
  • Managing Intellectual Property IP Stars Handbook 2015: Patents
  • 2015 Canadian Legal Lexpert Directory
  • IAM Patent 1000 2015
  • Who’s Who Legal: Patents 2015: Most Highly Regarded Individuals
  • Expert Guides: Guide to the World's Leading Patent Law Practitioners 2015
  • Benchmark Litigation Canada 2015
  • World Trademark Review 1000 – The World’s Leading Trademark Professionals 2015
  • The Legal 500 Canada 2015
  • Best Lawyers in Canada 2015
  • Managing Intellectual Property’s 2014 IP Stars Handbook: Patent
  • Expert Guides: Guide to the World’s Leading Trade Mark Law Practitioners 2014
  • The 2014 Canadian Legal Lexpert Directory
  • IAM Patent 1000 2014
  • The International Who’s Who of Patent Lawyers 2014
  • Chambers Global 2014
  • Benchmark Canada Litigation 2014
  • World Trademark Review 1000: The World's Leading Trademark Professionals 2014
  • The International Who's Who of Life Sciences Lawyers 2014
  • Who's Who Legal: Canada 2013
  • Best Lawyers in Canada 2014
  • The Canadian Legal Lexpert Directory 2013
  • IAM Patent 1000 – The World’s Leading Patent Practitioners 2013
  • The International Who’s Who of Patent Lawyers 2013
  • Expert Guides: Guide to the World’s Leading Patent Law Practitioners 2013
  • The International Who’s Who of Life Sciences Lawyers 2013
  • Chambers Global: The World’s Leading Lawyers for Business 2013
  • World Trademark Review 1000: The World's Leading Trademark Professionals 2013
  • Lexpert Guide to the Leading US/Canada Cross-border Litigation Lawyers in Canada 2012
  • The Canadian Legal Lexpert Directory 2012
  • IAM Patent 1000 – The World’s Leading Patent Practitioners 2012
  • Expert Guides: Guide to the World's Leading Trade Mark Law Practitioners 2012
  • The International Who’s Who of Patent Lawyers 2012
  • The International Who's Who of Life Sciences Lawyers 2012
  • World Trademark Review 1000: The World's Leading Trademark Professionals 2012
  • Chambers Global: The World’s Leading Lawyers for Business 2012
  • Lexpert Guide to the Leading US/Canada Cross-border Litigation Lawyers in Canada 2011
  • Named one of Best Lawyers in Canada 2012
  • PLC Cross-border IP in Business Transactions Handbook 2011/2012
  • IAM Patent Litigation 250 – The World’s Leading Patent Litigators 2011
  • Expert Guides: Guide to the World's Leading Patent Law Practitioners 2011
  • The International Who's Who of Life Sciences Lawyers 2011
  • PLC Cross-border Life Sciences Handbook 2011
  • Best Lawyers in Canada 2011
  • Who’s Who Legal: Canada 2010
  • The International Who’s Who of Patent Lawyers 2010
  • IAM Life Sciences 250 - The World’s Leading Life Sciences Patent Litigators
  • Chambers Global: The World’s Leading Lawyers for Business 2010
  • Expert Guides: Guide to the World's Leading Trade Mark Law Practitioners 2009

Professional Memberships

Advocates' Society
American Bar Association (ABA)
American Intellectual Property Law Association (AIPLA)
Intellectual Property Institute of Canada (IPIC), Fellow
International Trademark Association (INTA)

Litigation Cases

Packers Plus Energy Services Inc. and Rapid Completions LLC v. Resource Well Completion Technologies Inc.

and Resource Completion Systems Inc.

Representing Packers Plus and Rapid Completions in a patent infringement action relating to an apparatus and methods for fluid treatment, including fracturing, of oil and gas wells.
Counsel: Robert MacFarlane and Josh Spicer
(2016), (T-2088-15)
Packers Plus Energy Services Inc. and Rapid Completions LLC v. Weatherford International PLC, Weatherford Canada Ltd.

Weatherford Canada Partnership and Harvest Operations Corp.

Representing Packers Plus and Rapid Completions in a patent infringement action relating to an apparatus and methods for fluid treatment, including fracturing, of oil and gas wells.
Counsel: Robert MacFarlane and Josh Spicer
(2015), (T-1728-15)
Crowder Mfg. Inc. v Produits Architecturaux Unique Inc.
Represented Crowder Mgf. Inc. in a copyright infringement matter relating to the reproduction of product drawings and written instructions for door hardware assemblies.
Counsel: Robert MacFarlane, Adam Bobker and Noelle Engle-Hardy
(2014), (T-2220-14)
MediaTube Corp. et al. v. Bell Canada et al.
Representing MediaTube in an action for patent infringement relating to Internet protocol TV services.
Counsel: Robert MacFarlane, Josh Spicer and Amrita V. Singh
(Reported decisions: 2015 FC 391 and 2016 FC 1066)
(2013), (T-705-13)
Packers Plus Energy Services Inc. v. Canuck Completions Ltd.
Successfully represented Packers Plus Energy Services in a patent infringement action relating to an apparatus and method of fracturing (“fracking”) oil and gas wells. By way of judgment on consent, the patent was declared valid and infringed and Packers Plus was awarded $7.7 million dollars in damages and $495K in costs. The counterclaim was dismissed.
Counsel: Robert MacFarlane and Josh Spicer
(2013), (T-1202-13)
Packers Plus Energy Services Inc. v. Essential Energy Services Ltd. and 1014827 Alberta Ltd. cob Tryton Tool Services
Representing Packers Plus in a patent infringement action relating to an apparatus and methods for fluid treatment, including fracturing, of oil and gas wells.
Counsel: Robert MacFarlane and Josh Spicer
(2013), (T-1741-13)
Accede Energy Services, Ltd. v. Pomerleau
Represented Accede Energy in a patent impeachment action relating to the optimization of vacuum systems and methods for drying drill cuttings.
Counsel: Robert MacFarlane and Andrew McIntosh
(2012), (T-1969-12)
Nova Chemical Company ats. Dow Chemical Corporation
Defending Nova Chemical in a monetary remedies reference arising from a patent infringement action relating to polyethylene resin compositions, in which the firm also acted as trial counsel and appellate counsel. Also prosecuting a trial costs appeal.
Counsel: Robert MacFarlane, Mike Charles, Andrew McIntosh,Adam Bobker,Josh Spicer and Amrita V. Singh
(Reported decisions: 2014 FC 844, 2016 FC 91 and 2016 FCA 216)
(2010), (T-2051-10)
Superior Industries, LLC v. Thor Global Enterprises Ltd.
Represented Superior Industries in an action for patent infringement relating to braced telescoping support struts for stacking conveyors.
Counsel: Robert MacFarlane and Adam Bobker
(2010), (T-960-10)
Target Corporation et al. v. Fairweather Ltd.
Represented Target Corporation in a passing off action to restrain the defendants’ use of the TARGET APPAREL trademark and bulls eye device in association with retail department stores in Canada, in anticipation of the 2013 launch of TARGET stores in Canada.
Counsel: Robert MacFarlane , Mark Robbins and Megan Langley Grainger
(Reported decisions: 2011 FC 758)
(2010), (T-1902-10)
High Liner Foods Incorporated ats. Contessa Premium Foods, Inc
Defended High Liner Foods in an action for patent infringement relating to shrimp serving trays.
Counsel: Robert MacFarlane and Josh Spicer
(2009), (T-2068-09)
BJ Services Company ats. Halliburton Energy Services, Inc.
Defended BJ Services/Baker Hughes in a patent infringement action relating to hydraulic fracking technology. Obtained a stay of the Canadian proceedings in favour of a U.S. arbitration.
Counsel: Robert MacFarlane, Josh Spicer and Jeff Gordon
(2008), (T-1969-08)
Canadian Imperial Bank of Commerce et al. ats. Datatreasury
Represented CIBC in a patent infringement action relating to cheque scanning technology. The action was settled shortly before trial.
Counsel: Robert MacFarlane and Andrew McIntosh
(Reported decisions: 2008 FC 955)
(2007), (T-1472-07; T-1661-07)
DBC Marine Safety Systems Ltd. v. Canada (Commissioner of Patents)
Retained by the Intellectual Property Institute of Canada to bring an application for leave to intervene in an appeal involving the interpretation of the Patent Act, R.S.C. 1985, c.P-4.
Counsel: Robert MacFarlane
(Reported decisions: 2008 FCA 148)
(2007), (A-558-07)
Vestas-Canadian Wind Technology, Inc. ats. Aloys Wobben
Defended Vestas-Canadian Wind Technology in an action for patent infringement relating to voltage control of wind power installations connected to a power grid.
Counsel: Robert MacFarlane and Adam Bobker
(2007), (T-564-07)
Raymor Industries ats. Canada
Acted for the plaintiff patentee, Raymor Industries, in a patent infringement action involving nanotechnology.
Counsel: Robert MacFarlane
(Reported decisions: 2007 CF 37)
(2006), (T-1856-06)
Duratech Industries Ltd. et al. ats. Bridgeview Manufacturing Inc. et al.
Defended Duratech Industries, a US manufacturer of farm equipment, and two of its Canadian distributors in a patent infringement action relating to bale shredding machinery. The trial judge held the patent to be invalid and not infringed. The Federal Court of Appeal upheld the finding of non-infringement. An application for leave to appeal to the Supreme Court of Canada was dismissed.
Counsel: Robert MacFarlane and Adam Bobker
(Reported decisions: 2009 FC 50, 2010 FCA 188)
(2005), (T-1554-05;)
Pfizer Canada Inc. et al. v. Novopharm Limited et al.
Acted for Pfizer in Patented Medicine Notice of Compliance (PMNOC) proceedings relating to the COX II inhibitor anti-inflammatory drug celecoxib (brand name CELEBREX). The hearing judge dismissed the application for a prohibition order, but the Federal Court of Appeal reversed the hearing judge’s decision and granted the order.
Counsel: Robert MacFarlane
(Reported decisions: 2007 FC 81, 2007 FCA 173, 2007 FCA 256)
(2005), (T-1067-05; A-66-07)
Ulextra Inc. ats. Pronto Luce Inc.
Represented Ulextra in the defence of an action alleging copyright infringement, passing off and infringement of various industrial design registrations by the sale of various lighting fixture designs. Obtained summary judgment dismissing the action.
Counsel: Robert MacFarlane
(Reported decisions: 2004 FC 590)
(2004), (T-185-04)
Pfizer Canada Inc. et al. v. Lilly ICOS LLC et al.
Represented Pfizer in patent infringement proceedings in which a patent for Pfizer’s drug VIAGRA was asserted against Eli Lilly’s drug CIALIS, a competing drug for the treatment of erectile dysfunction. The action settled before trial.
Counsel: Robert MacFarlane, Andrew McIntosh and Mike Charles
Don Cameron and Scott MacKendrick represented Eli Lilly in the action. They joined Bereskin & Parr LLP in 2012.
(Reported decisions: 2003 FC 1278, 2004 FC 223)
(2003), (T-1721-03)
Plasticair Inc. ats. M.K. Plastics Corporation
Defended Plasticair in a patent infringement action relating to exhaust fans. The action was dismissed at trial and double costs were awarded.
Counsel: Robert MacFarlane
(Reported decisions: 2007 FC 574, 2007 FC 1029)
(2003), (T-2108-03)
Suntec Environmental Inc. v. Trojan Technologies Inc.
Represented Suntec Environmental in an appeal to the Federal Court of Appeal from an order granting summary judgment in a patent infringement action. The technology involved related to the use of ultraviolet light to disinfect wastewater. The injunction was stayed pending appeal, and on appeal the summary judgment was overturned.
Counsel: Robert MacFarlane
(Reported decisions: 2003 FCA 309, 2004 FCA 140)
(2003), (A-321-03)
Target Corporation et al. ats Target Convenience Stores Limited
Defended Target Corporation in a quia timet trademark infringement and passing off action brought by an Ontario convenience store and gas bar that owned several Canadian trademark registrations for TARGET and related marks. The plaintiff was seeking an order effectively prohibiting Target Corporation from using its TARGET brand in Canada. The case was settled after mediation.
Counsel: Robert MacFarlane and Mark Robbins
(2003), (T-220-03)
Pfizer Canada Inc. et al. ats Bayer Aktiengesellschaft et al.
Represented Pfizer in a patent impeachment action relating to one of Pfizer’s patents for the drug VIAGRA brought by Bayer.
Counsel: Robert MacFarlane, Andrew McIntosh and Mike Charles
Don MacOdrum represented Bayer in the action. He joined Bereskin & Parr LLP in 2012.
(2002), (T-865-02)
Pfizer Canada Inc. et al. ats. Lilly ICOS LLC et al.
Represented Pfizer in a patent impeachment action relating to one of Pfizer’s patents for the drug VIAGRA brought by Eli Lilly. The action settled before trial.
Counsel: Robert MacFarlane, Andrew McIntosh and Mike Charles
Don Cameron and Scott MacKendrick represented Eli Lilly in the action. They joined Bereskin & Parr LLP in 2012.
(Reported decisions: 2006 FC 1465, 2006 FC 1500, 2006 FC 1501)
(2002), (T-341-02)
Asterix Security Hardware International Inc. ats. Les Editions Albert Rene S.A.R.L.
Defended Asterix Security Hardware in an action for copyright infringement and trademark infringement relating to the trademark ASTERIX and the copyright-protected character name Asterix.
Counsel: Robert MacFarlane and Brigitte Chan
(2001), (T-1988-01)
Weatherford Canada Partnership et al. v. National-Oilwell Canada Ltd. et al.
Represented Weatherford Canada in the prosecution of a patent infringement action relating to sealing technology for surface drives used with down-hole pumps for heavy oil that was licensed to Weatherford Canada. An injunction issued after a six-week trial. The Federal Court of Appeal upheld the Trial Judge’s findings of validity and infringement with respect to all of the claims at issue, with the exception of one method claim. After a redetermination hearing, the infringement of the method claim was confirmed. Weatherford Canada then settled its damages claims, along with its damages claims in a related action. An application for leave to appeal the original trial decision to the Supreme Court of Canada was dismissed. The Federal Court of Appeal did later send back the method claim for a further redetermination. The patentee’s damages claims are also still pending.
Counsel: Robert MacFarlane, Adam Bobker and Josh Spicer
(Reported decisions: 2005 FCA 300, 2007 FC 396, 2008 FC 1271, 2009 FC 449, 2009 FC 569, 2010 FC 602, 2010 FC 667, 2011 FCA 228, 2012 FC 76)
(2001), (T-1236-01;T-2059-03,T-26-05)
Weatherford Canada Partnership et al. v. National-Oilwell Inc. et al.
Represented Weatherford Canada in a patent infringement damages action against National-Oilwell relating to rotary drive technology for down-hole oil pumps. Action settled at trial in early 2012.
Counsel: Robert MacFarlane and Adam Bobker
(2001), (T-380-01)
Nabisco Ltd. ats. Dole Food Co. et al.
Represented Nabisco in a contest with Dole over the ownership of the trademark FRUIT BOWLS in Canada.
Counsel: Robert MacFarlane and Jonathan Colombo
(Reported decisions: 2000 CanLII 15986 (FC), 2000 CanLII 16330 (FC))
(2000), (T-1161-00)
Weight Watchers International v. Vale Printing Ltd. et al.
Represented Weight Watchers in a passing off action relating to the use of the WEIGHT WATCHERS and WW trademarks on internet websites. An interlocutory injunction was granted restraining the transfer or assignment of the internet websites pending trial.
Counsel: Robert MacFarlane and Mark Robbins
(Reported decisions: 2000 CanLII 15164 (FC), 2000 CanLII 15617 (FC), 2001 FCT 578)
(2000), (T-238-00)
Imax Corporation v. Showmax, Inc. et al.
Represented Imax Corporation in an action for infringement of its registered trademark IMAX by use of the mark SHOMAX for a new large format movie theatre. After the Federal Court granted Imax an interlocutory injunction, the action was settled.
Counsel: Robert MacFarlane
(Reported decisions: 1999 CanLII 8639 (FC), 2000 CanLII 14748 (FC))
(1999), (T-592-99)
Robert Mondavi Winery v. Spagnol’s Wine & Beer Making Supplies Ltd.
Acted for Mondavi Winery in expungement proceedings related to the trademark registration WOODBRIDGE ESTATES FROM OUR VINEYARD TO YOUR HOME for wine-making kits based on Mondavi’s prior use of WOODBRIDGE for wine. The proceeding settled and the registration was assigned to Mondavi.
Counsel: Robert MacFarlane
(Reported decisions: 2001 CanLII 22119 (FC), 2001 FCT 794, 2001 FCT 1005)
(1999), (T-1294-99)
Softrak Systems, Inc. ats. Accpac International, Inc.
Defended a copyright infringement action on behalf of Softrak Systems in which it was alleged that the look and feel of Softrak’s software infringed the plaintiff’s copyright. Won a solicitor and client costs award for Softrak after the plaintiff’s motion for an interlocutory injunction was withdrawn. The action was then settled.
Counsel: Robert MacFarlane
(Reported decisions: 2000 CanLII 15909 (FC) )
(1999), (T-1381-99)
Fero Holdings Ltd. v. Enterprises Givesco Inc.
Represented Fero Holdings in patent infringement proceedings relating to masonry connection technology used in the construction industry, as well as proceedings to enforce a settlement agreement entered into with one of the infringers.
Counsel: Robert MacFarlane, Mike Charles, and Josh Spicer
(Reported decisions: 1999 CanLII 8526 (FC), 2003 FCT 353)
(1998), (T-1828-98;T-167-99;T-779-01)
First Base Inc. v. Riverside Paper Corp.
Represented Canadian paper company First Base in a trademark dispute with a US competitor. The dispute was with respect to First Base’s registered trademarks MARBLE BOND and GRANITE BOND for paper products. Interim and interlocutory injunctions were obtained in an Ontario Court trademark infringement and passing off action. Even though the registrations were expunged in a Federal Court proceeding, the dispute was settled favourably during the trial of the passing off action.
Counsel: Robert MacFarlane and Mike Charles
(Reported decisions: 1999 CanLII 8530 (FC))
(1998), (98-CV-145861CM; T-1112-98)
Royal Canadian Mint ats. Westaim Corporation
Represented the Royal Canadian Mint in the defence of a patent infringement action relating to the production of blanks for minting into coins. The patent was declared invalid at trial. An appeal was launched but the action settled before the hearing of the appeal.
Counsel: Robert MacFarlane and Andrew McIntosh
(Reported decisions: 1998 CanLII 8537 (FC), 2002 FCT 1217)
(1998), (T-453-98; A-32-03)
Warner-Lambert Co. et al. v. Concord Confections Inc.
Acted for Warner-Lambert in an action for infringement of its registered trademark CHICLETS by the sale of CHICLE gum products.
Counsel: Robert MacFarlane and Jonathan Colombo
(Reported decisions: 2001 FCT 139)
(1998), (T-1562-98)
Baylor University v. Hudson’s Bay Co.
Acted for Baylor University in proceedings to overcome an opposition by the Hudson’s Bay Co. to the registration of BAYLOR as a trademark for collegiate merchandise. The opposing board and trial judge both ruled in favour of Hudson’s Bay Co., but the Federal Court of Appeal overturned the trial judge and allowed the registration.
Counsel: Robert MacFarlane and Robert Storey
(Reported decisions: 1998 CanLII 8903 (FC), 2000 CanLII 15626 (FCA))
(1997), (T-2590-97; A-35-99)
Illinois Tool Works Inc. et al. v. Cobra Anchors Co. Ltd.
Acted for ITW in an action and appeal for patent infringement relating to wall anchors.
Counsel: Robert MacFarlane, Andrew McIntosh and Brigitte Chan
(Reported decisions: 2002 FCT 829, 2003 FCA 358)
(1996), (T-2313-96; A-522-02)
Kirkbi AG et al. v. Ritvik Holdings Inc. et al.
Represented Lego in a passing off action against Mega Bloks based on the confusion caused in the marketplace by Mega Bloks having copied the stud pattern on LEGO bricks.
Counsel: Robert MacFarlane, Mike Charles, Christine Pallotta and Adam Bobker
(Reported decisions: 1998 CanLII 7434 (FC), 1998 CanLII 8100 (FC), 2000 CanLII 15333 (FC), 2000 CanLII 16454 (FC), 2001 FCT 850, 2002 FCT 585, 2002 FCT 1109, 2003 FCA 297, 2005 SCC 65)
(1996), (T-2799-96; A-395-02;)
Noma Inc. ats Paige Innovations Inc.
Represented Noma in a patent infringement action relating to a flat electrical attachment plug owned by Paige Innovations and successfully obtained summary judgment dismissing the plaintiff’s claim of patent infringement.
Counsel: Robert MacFarlane and Andrew McIntosh
(Reported decision: (1997), 77 CPR (3d) 194 (FCTD))
(1996), (T-2479-96, A-649-97)
Sprint Communications Co. L.P. et al. v. Merlin International Communications
Represented the US telecommunications company, Sprint Communications, in a trademark infringement and passing off action against a Canadian company that was using the trade name SPRINT CANADA in association with a marketing, advertising and public relations business. The action was tried and the defendant company was enjoined.
Counsel: Robert MacFarlane and Mike Charles
(Reported decisions: 2000 CanLII 16461 (FC), 2001 FCT 358)
(1994), (T-2814-94)
Interface Flooring Systems (Canada) Inc. ats. Milliken & Co.
Acted for Interface Flooring System in the defence of a copyright proceeding relating to the design of floor tiles installed at the Calgary airport. The claim for copyright infringement was dismissed at trial and the trial judgment was upheld on appeal.
Counsel: Robert MacFarlane and Mike Charles
(Reported decisions: 1997 CanLII 5231 (FC), 1998 CanLII 7706 (FC), 1998 CanLII 9044 (FC), 2003 FC 1258, 2000 CanLII 14871 (FCA))
(1992), (T-3016-92;T-1212-95;A-120-98)
 

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