Emily Xiang is an IPilogue Writer, a Senior Fellow with the IP Innovation Clinic, and a 3L JD Candidate at Osgoode Hall Law School.

What do a company in the business of mining and selling construction equipment, and an athletic-wear and sporting accessories brand, have in common? Apparently, the cat has been let out of the bag on this one. On January 10th, 2023, the Federal Court of Appeal released one of its first trademark of the year in .The Federal Court of Appeal held in favour of the construction machinery and equipment company over Puma’s use of the trademark PROCAT in association with footwear and headgear.

Puma first applied for the trademark PROCAT in 2012 for its sub-brand of youth sporting accessories. Caterpillar shortly opposed the application, asserting that, inter alia, the PROCAT mark was confusing with Caterpillar’s own CAT & Triangle Design [shown below]. Caterpillar’s CAT & Triangle Design was also registered in association with footwear and headgear. Specifically, the design was related to a line of work and sport footwear that the company had been operating in Canada since 1994. When the matter was brought before the , the hearing officer held that there was no reasonable likelihood of confusion between the marks. The officer explained that Caterpillar had failed to show that they possessed sufficient control over the character or quality of the goods sold in association with the CAT & Triangle Design through its licensees.

On , Caterpillar submitted new evidence in order to demonstrate requisite control and that it had accrued benefit from its licensees’ use of its marks. The court found the new evidence ��to be material. Moving on to the likelihood of confusion analysis, the court agreed with the hearing officer that the two marks were indeed similar in appearance and sound due to the word “CAT.” But the court also found Puma’s prefix “pro” to be suggestive or laudatory of the company’s goods. Therefore, the prefix was not enough to distinguish it from Caterpillar’s CAT. Puma had also submitted 13 other trademarks to evidence that the “CAT” element had little distinctiveness in the marketplace and should therefore be subject to a smaller ambit of protection. When elements appear over and over again in trade, is generally acceptable in order to allow for fair competition. However, the court in this case found Puma’s evidence to be insufficient in demonstrating the state of the register. The Federal Court therefore overturned the decision of the hearing officer and found that there indeed would be a reasonable likelihood of confusion between the two CATs.��

Unfortunately for the sporting brand, the court of appeal did not have much to say by way of correction either. In appealing the decision to the , Puma argued that the FC judge had erred in her findings. In Puma’s view, the FC judge had failed to consider each of the marks as a whole, and contended that it would be impossible for a consumer that was not “” to be confused as to the source of the two companies’ respectively marked goods. The sporting brand also tried to rely on its other cat-nominative trademarks, such as its better-known “jumping cat” design, as evidence of brand recognition, though this was still insufficient to sway the courts.��

The Federal Court of Appeal was therefore unable to find any palpable or overriding error in the FC judge’s decision. For Puma, its with regards to its use of PROCAT in association with footwear and headgear beyond a trivial level proved detrimentally determinative. Ultimately, Puma’s evidence and arguments were not enough to go up against Caterpillar’s prior registration and surprisingly long-standing presence in the Canadian market.

The post ‘It’s Raining Cats and Caterpillars!: How a Lack of Evidence Killed the CAT’ appeared first on IPOsgoode.

Sabrina Macklai is an IPilogue Senior Editor and a 2L JD Candidate at the University of Toronto Faculty of Law.

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Whether or not you’re a biker, you’re likely familiar with the Harley-Davidson brand. Considered the , Harley-Davidson claims to sell more than just bikes—they sell a lifestyle. As the brand is strongly interested in maintaining its status symbol, it is diligent in protecting its iconic trademark.

On June 17, 2021, the in favour of Harley-Davidson, awarding $13,000 in damages and $23,000 in costs. The brand successfully enforced their trademarks against who offered custom-built electric bicycles under the name “Harley Davidson Willie G Edition.” These bikes incorporated Harley-Davidson’s motorcycle parts and their famous “Bar and Shield” logo.

The Federal Court determined Harley-Davidson established a remediable violation of its trademark rights. In doing so, the Court analyzed three issues: a) infringement under ; b) passing off under ; and c) a likely depreciation of goodwill under .

Section 20(1)(a) and (b) of the Trademarks Act considers the right of the trademark owner to be infringed by any person who sells, distributes, advertises, manufactures, imports, or exports any goods or services in association with a confusing trademark. The Court easily found that Varzari’s advertisement of “Harley Davidson Willie G Edition” bikes and use of “Bar and Shield” logos on said bikes are likely to cause confusion with the Harley-Davidson marks for the “casual consumer somewhat in a hurry.” To come to this conclusion, the Court looked at factors including the marks’ distinctiveness, length of use, nature of the goods and trade, and degree of resemblance.

Notably, the Federal Court noted that the resale of trademarked goods lawfully acquired is not, by itself, prohibited under the Trademarks Act. However, Varzari’s actions went beyond lawfully purchasing and reselling genuine Harley-Davidson motorcycle parts. Altering and incorporating these parts into a new good, the “Harley Davidson Willie G Edition” bikes, in a way that bears the trademark suggests an unauthorized association of the bikes with Harley-Davidson. Though the Court was quick to note that “not every incorporation of a trademarked good into a new good will result in the sale of the new good being a sale in association with the trademark,” it nonetheless was satisfied that Varzari engaged in infringing activities.

With regard to passing off and a likely depreciation of goodwill under sections 7(b) and 22 of the Trademarks Act, respectively, the Federal Court found that Harley-Davidson successfully established the requisite elements of both claims.

The common law tort of passing off, codified in section 7(b), prohibits a person from directing public attention to their goods, services, or business in a manner likely to cause confusion with another’s goods, services, or business. In addition to the arguments made to demonstrate infringement, Harley-Davidson successfully relied on Varzari’s use of a particular shade of orange. The Federal Court noted that the define a trademark as “a sign or combination of signs that is used or proposed to be used by a person for the purpose of distinguishing or so as to distinguish their goods and services from those of others.” As “signs” may include colours, the Court found that Harley-Davidson satisfied the requirement of a valid and enforceable unregistered trademark with respect to the so-called “iconic” shade of orange used by Varzari.

To establish depreciation of goodwill, the claimant use, goodwill, linkage, and damage. The Federal Court quickly was able to show Harley-Davidson established these factors with respect to its trademarks. Varzari’s use of the marks would give purchasers notice of the association with Harley-Davidson, Harley-Davidson has sufficient brand recognition to have significant goodwill capable of being depreciated, it is highly likely consumers will link Varzari’s use of the trademarks and the goodwill of Harley-Davidson, and Varzari’s use is likely to lower the value of goodwill attached to Harley-Davidson’s trademarks, by misrepresenting an association.

Harley-Davidson is known for fiercely protecting its trademarks. It has sued , popular clothing retailers like and , and even local for using its famous trademarks without permission. In 2018, the brand collected against a Michigan-based T-shirt designer for selling over 100 different infringing designs online.

The company is a good example of a brand that understands the value of maintaining distinctive trademarks. , much of Harley-Davidson’s success is in its name—whether motorcycles or licensed apparel, consumers tend to purchase Harley-Davidson for what the brand stands for, rather than for the quality or other features it offers. It makes sense that Harley-Davidson of dollars to protect itself against any possible infringement.

The post Harley-Davidson Wins Yet Another Trademark Infringement Suit appeared first on IPOsgoode.

Photo Credits: (Unsplash)

Shawn Dhue is an IPilogue Writer and a 2L JD Candidate at Osgoode Hall Law School.

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The (“Winkler”) decision evokes the image at the beginning of a movie that states “Based on a true story….” Directors tend to state this at the beginning of a film to authenticate it. However, it is hard to imagine a director ever regretting this statement after the movie’s release. The late , one of Canada’s most famous true crime authors, perhaps would have felt some regret after the outcome of Winkler.

In Winkler, the Federal Court of Canada looked at the infamous of Lacun, Ontario. The eight-membered family is known for winning “.” Or did they win? Was it eight on eighteen? Did they ever actually fight? Justice McHaffie decided that none of the answers to those questions matter. The Court reaffirmed the almost century-old principle that copyright protection does not apply to facts (), but with a twist. Justice McHaffie stated: “an author who publishes what is said to be a nonfiction historical account cannot later claim the account is actually fictional to avoid the principle that there is no copyright in facts” [emphasis added].

In 2004, Nate Hendley and James Lorimer & Company Ltd, the defendants, released . The book recounted the history of the Donnelly family and the defendants admitted to having used Kelley’s books, and , as supporting sources. However, the plaintiffs, John Winkler and the estate of Theresia Winkler by her estate trustee, John Winkler, claimed that the books were very much fiction or mistaken. They believe then that the books are copyright-protected material. The plaintiffs' expert evidence states that The Black Donnellys is actually “” and mistaken.

The allows someone to protect works of nonfiction or fiction by way of copyright: “copyright protection does not extend to ‘facts or ideas’ but to the original ‘expression of ideas’” (; ; ). Nevertheless, the crucial point of Winkler is not the fact (pun not intended) that the books were fiction, but that Kelly classified his books as works of historical nonfiction. In other words, a person cannot claim what they are saying is factual and later retract their claim to reap the benefits of copyright.

This decision protects individuals from being misled by effective marketing. Nevertheless, Justice McHaffie also rooted his judgment in the longstanding public interest policy of the non-protection of facts. Canadian researcher and law professor, , turns to Justice Orde in to explain this notion. Scassa states that facts and information put forth as the truth should be available to the public to be “tested, challenged, verified, or disproved”. This notion is worth promoting, as society needs to test facts and information to progress and evolve.

While this may be new ground in Canada, the UK decision of concluded similarly to the Federal Court’s decision in Winkler and also reflected Scassa’s notion. In this case, the defendant’s fiction novel substantially copied the plaintiff’s work of historical non-fiction. In his decision, Brightman J stated:

“The author of a historical work must, I think, have attributed to him an intention that the information thereby imparted may be used by the reader, because knowledge would become sterile if it could not be applied. Therefore, it seems to me to be reasonable to suppose that the law of copyright will allow a wider use to be made of a historical work than a novel so that knowledge can be built upon knowledge” [emphasis added].

However, the judge ruled against the defendant, as the infringement was flagrant and exceptional. The defendant admitted to at least fifty instances of deliberately copying the language used and historical characters and significant events. .

The Winkler decision comes out at a time when society is dealing with what one would call “.” The Court made a critical decision to warn writers and artists alike that the law will not allow the industry to profit from false information passed off as facts. The decision comes at a time in history when anyone, including politicians and spokespeople can disseminate information on topics such as human rights, COVID-19, and other vital discussions. As of now, the plaintiffs have not indicated any plan to appeal the decision in Winkler. What is clear is that the courts will try to protect the public from the spread of fake news.

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The post Historical Fake News?: Winkler v Hendley appeared first on IPOsgoode.

Sabrina��Macklai��is an��IPilogue��Senior Editor and a��2L JD Candidate at the University of Toronto Faculty��of Law.��

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The 2019 Canadian federal election season was ripe with . Adding to the list, the Canadian Broadcasting Corporation (CBC) against the Conservative Party of Canada mere days before the election was held. The CBC claimed that the Conservative Party infringed copyright by using, without permission, CBC’s video clips in their advertisement and tweets as part of an ‘attack ad’ against Prime Minister Justin Trudeau.

On May 13, 2021, nearly two years after the Liberal Party won a minority government, the , holding that the use of CBC footage in political campaigns constitutes “fair dealing” under s. 29 of the , and so does not infringe copyright.

In order for a use of a copyrighted work to be considered a fair dealing, the dealing must 1) be for an allowable purpose, as listed in the Act, and 2) it must be fair, considering the six factors outlined in the landmark Supreme Court of Canada decision, .

The Federal Court determined that the Conservative Party’s use of CBC footage was for the allowable purpose of “criticism,” per s. 29.1 of the Act. Though the CBC argued that the purpose of “criticism” should be limited to criticizing the form of the dealing, the court held that criticism may be directed towards the “idea set out in the work.”

By giving the fair dealing provisions a large and liberal interpretation, the court reaffirmed that their purpose is to balance the rights of copyright owners and users. Users’ pursuit of allowable purposes should not be arbitrarily restricted in the name of protecting copyright. As Justice Phelan stated, “it would be artificial to limit criticisms to the expression of how the work was produced but preclude showing the ideas or actions being challenged.”

Applied to the facts, the court found criticism embedded in the Conservative Party’s impugned ad and tweets, which aimed to criticize the “ideas” present in the CBC’s clips, particularly those of Prime Minister Trudeau’s performance in office and during the 2019 federal election’s leaders’ debate.

In finding an allowable purpose under the first step of the fair dealing analysis, the court did not consider that the criticism was being advanced by a competitor who would directly benefit from the consequences of the criticism. Rather, motive became relevant at the second step of the fair dealing analysis, when assessing the first factor (i.e., the fairness of the purpose of the dealing). Following , “some dealings, even if for an allowable purpose, may be more or less fair than others,” depending on the user’s “real purpose or motive in using the copyrighted work.”

While Justice Phelan acknowledged that the Conservative Party’s use of CBC footage was “not criticism for the sake of criticism,” he held that the dealing was nonetheless for a “legitimate political purpose.” Since political campaigns are used to secure votes to form a government, the court found the Conservative Party’s purpose engaged with the democratic process and was therefore fair.

This departs from where the Supreme Court stated that, in determining the fairness of an allowable purpose, the court must assess if there is a “demonstrably ulterior” motive at play. That is, courts are concerned by users who attempt to escape liability for copyright infringement under the guise of invoking an allowable purpose, like criticism. Such ulterior motives tend towards a finding of unfairness for the first factor of the fairness inquiry.

Despite finding the Conservative Party’s ultimate purpose was not to provide criticism but to gain votes, the court did not discuss the possibility of an ulterior motive. In fact, the Conservative Party’s politically driven motive was used as support in finding fairness. This seemingly broadens the fair dealing provision’s scope by permitting a dealing’s ultimate purpose to differ from its allowable purpose, so long as it is a political purpose.

Instead, as University of Ottawa professor Michael Geist , political advertising is protected by the criticism purpose of fair dealing since it is directly linked to the Charter’s s. 2(b) guarantee of expressive freedom, which underpins the values of political democracy, the search for truth, and self-actualization. Rather than authorizing a user’s ultimate purpose to differ from the allowable purpose where a political motive is involved, the court ought to establish a sufficient nexus between the purposes to support a finding of fairness. This can be achieved through determining the foundation of the allowable purpose, like the basis of criticism to advance political democracy.

As Ontario gears up for the , it will be interesting to see how parties use copyrighted materials in their campaigns in light of this decision. Beyond political parties, this decision highlights the need for greater guidance on how to properly interpret the fair dealing provisions, especially in determining the fairness of the purpose of the dealing.

The post A “Legitimate Political Purpose”: Federal Court Rules the Conservative Party Played “Fair” in the 2019 Federal Election appeared first on IPOsgoode.

Photo Credits: healthline.com (https://www.healthline.com/health/cancer/cancer-ribbon-colors)

Shawn��Dhue��is an��IPilogue��Writer and a 2L��JD Candidate at��Osgoode��Hall Law School.��

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Janssen Inc. (“Janssen”), a Canadian pharmaceutical company, sells ZYTIGA under Patent No. 2,661,422 (“422 Patent”). ZYTIGA, Janssen's abiraterone acetate (“AA”) product, can be combined with prednisone (“PN”) to treat prostate cancer together, rather than using the two drugs separately. In 2017, Apotex Inc. (“Apotex”), another leading Canadian pharmaceutical corporation, brought forward . Pursuant to section 5 of the (“PM(NOC) Regulations”), a notice of allegation is a submission that states a patent is invalid for one of many reasons.

Apotex was seeking approval to create a generic version of ZYTIGA called APO-ABIRATERONE, which uses therapeutically-effective amounts of AA and PN to treat prostate cancer. Their NOA alleged that if the 422 Patent was invalid, APO-ABIRATERONE could not infringe upon it, and that the combined use of the two medications was not patentable primarily due to a lack of evidence showing the benefits of combining AA and PN versus using them separately. Additionally, Apotex argued that their generic drug was not for the same use as ZYTIGA; APO-ABIRATERONE was intended to treat the adverse side effects of taxanes, a class of chemotherapy drugs.

In response to the NOA, Janssen brought an application under and prohibiting the Minister of Health from issuing Apotex a notice of compliance (NOC). An NOC, as defined under section C.08.004 of the under the PM(NOC) Regulations, essentially enables the Minister of Health to grant Apotex permission to create a generic version of ZYTIGA following a successful examination. Janssen submitted that Apotex’s allegations under the NOA were invalid and therefore they should not be issued an NOC until the 422 Patent expires. ��

In 2019, the ruled in Janssen’s favour, ordering the Minister of Health to not issue a notice of compliance to Apotex at least until the expiry of Janssen’s 422 Patent. Apotex appealed the decision to the who, on January 14, 2021, ruled to dismiss the appeal on all four of Apotex's arguments, ruling on: (1) patentable subject matter; (2) obviousness; (3) inutility; and (4) infringement.

(1) Patentable Subject Matter

Apotex stated that the lower court erred in finding that the 422 Patent amounted to a new patentable subject matter, compared to AA and PN independently. Apotex noted that the combined drug did not produce a better result, and the lack of evidence sufficiently supports this claim. Referring to the jurisprudence, the Court of Appeal stated that determining patentable subject matter depends on whether the patent provides the public with something previously unavailable within cancer treatment. It is not concerned with the efficacy of the combined drug. ��

(2) Obviousness

Apotex alleged that the lower court erred in issuing the test of obviousness to determine patentability: specifically, the “more or less self-evident that it ought to work” aspect. Assessing Apotex’s argument of lack of evidence, the Court of Appeal reaffirmed that the patent's applicant need not meet all aspects under the test. They agreed with the lower court’s decision that the test of obviousness was fulfilled because it was not self-evident to combine AA and PN to treat prostate cancer.

(3) Inutility

Apotex argued that the lower court erred in its reasoning because it could not prove that the combination of drugs was more effective than each drug separately. Apotex relied on Janssen’s results when applying the Supreme Court’s test for utility from . The Court ruled that the lower court did not err. A claimant for a patent must only establish suggestive utility, which Janssen successfully did in 2007 when establishing their 422 Patent.

(4) Infringement

Apotex's last argument, a defence, was that neither their Product Monograph nor their product’s marketing infringed Janssen’s product. They stated that their product did not infringe on the 422 Patent because it was marketed for alternative use. The Court of Appeal stated that the lower court did not err in their decision that the product still imposed an infringement. Although Apotex was not currently producing a direct infringement, the Court found that it would eventually lead to an infringement of the 422 Patent.

What’s to Come

The Federal Court of Appeal’s decision to uphold the lower court’s decision and dismiss the appeal broadens Canadian patent law's future at a very pivotal time. Janssen’s success for ZYTIGA allows them to monopolize on their effective prostate cancer treatment. Most importantly, the reaffirmation of the “obvious to try” test guidelines and the updated definition of “utility” greatly enhance patent law during the COVID-19 era . A patent does not have to meet every criterion for the “obvious to try” test and must only demonstrate suggestive utility results. With new corporations striving to be at the forefront of medical technology and produce effective treatments for the ever-mutating COVID-19 virus, this decision creates a less stringent threshold for obtaining and defending a patent.

The post A Win for Patent Law and a Loss for Prostate Cancer appeared first on IPOsgoode.

Background

Loblaws, the Canadian supermarket giant, utilizes a variety of trademarks and names including “President’s Choice” abbreviated “PC”. Under the “PC” mark, Loblaws markets a variety of food and household wares. An American company, Columbia, which owns Pampered Chef, Ltd. and Pampered Chef ­– Canada Corp, has operated and sold housewares in Canada for many years. However, in 2015 Columbia the “Happy Spoon” mark (below) which employs the “Happy Spoon” between the words “pampered” and “chef” in the long form mark, or between the letters P and C in the short form marks.

Loblaws opposed the application for the short form marks on the grounds that they infringed their PC (President’s Choice) mark (below), are likely to cause confusion, and have the effect of depreciating the goodwill associated with the PC marks.

Loblaws was unsuccessful in any of the causes of action at the 2019 trial, and subsequently appealed the decision to the FCA.

The trial judge held that, while the marks had some similarities and were used in association with similar goods, confusion was unlikely. The first reason was that, unlike Loblaws, Pampered Chef goods were sold through a direct to consumers business model. Secondly, Pampered Chef utilized the short from mark with the corporate name or the long form mark such that consumers would know it is a Pampered Chef product.

The Appeal

On appeal Loblaws alleged four errors of law.

First, Loblaws challenged the finding that the resemblance between the marks was not particularly strong. Loblaws argued that the marks were identical in sound. According to s. 6(5)(e) of the , resemblance is assessed by the “appearance or sound or in the ideas suggested by them”. However, this argument was unsuccessful as Noël C.J. held that this is to be considered inclusively. The analysis is not to be limited to just sound, but rather must include the sound and visual appearance of the marks. Further, following the Supreme Court’s decision in the mark was viewed as a whole considering the dominant and most striking features, which in this case included the distinctive “happy spoon”.

Second, Loblaws contested the analysis of the “nature of trade”. It was held the trial judge did consider the customer bases of the parties in the analysis of the “nature of the wares, services or business”, and it was not an error of law to repeat this in conducting the “nature of trade” analysis. Further, the trial judge found the customer base to be the same and in fact favoured Loblaws.

Third, Loblaws argued the judge was wrong in drawing an adverse inference from the lack of evidence of actual confusion. The fact that the competing marks had only existed for two to three years was immaterial since Pampered Chef had already operated in Canada prior to the introduction of the new marks. Thus, the Court concluded any likelihood of confusion would in fact have given rise to actual evidence of conclusion.

Finally, Loblaws argued that the trial judge placed too much weight on the different channels of trade. However, Noël CJ dismissed this argument, as consumers would be aware of the fundamental differences in product distribution. Further, the Court stated that even those consumers encountering Pampered Chef for the first time would be unlikely to confuse the marks due to the presence of the corporate name or long form mark.

What’s Next?

Ultimately, Pampered Chef successfully defended their PC mark for a second time against Loblaws. To date, there is no evidence of an appeal to the Supreme Court of Canada. Although I am no judge, as a consumer aware of both PCs (who is sometimes in a hurry), I am certainly not confused by these marks!

Written by Maddie Lynch. Maddie is a second year JD candidate at Osgoode Hall Law School. She is a contributing IPilogue editor, Intellectual Property Journal editor and IP Innovation Clinic Fellow.

The post Battle of the PCs: Pampered Chef defends trademark infringement case by President’s Choice appeared first on IPOsgoode.

This past Monday, the Federal Court published the Honourable Justice Fuhrer's decision in the matter. We anticipate a full analysis and commentary on the decision on our site next week. But in the meantime, you can read Justice Fuhrer's decision .

The post Decision in "Sim & McBurney v En Vogue Sculptured Nail Systems Inc." appeared first on IPOsgoode.

One day before an virtual hearing went viral, IP Osgoode arranged and witnessed a smooth Federal Court virtual hearing via Zoom Business video conference. While many stories about the mishaps of virtual hearings and the challenges courts are facing have been making rounds during these unprecedented times, the courts have ensured access to justice by adapting to technological advances. Virtual hearings are not a new concept for arbitral proceedings, since these disputes are resolved internationally and have judges sitting globally. Nevertheless, Canada’s transition for its traditional judicial system and domestic court rooms has been prudent to survive the ever-changing dynamics of this novel coronavirus and its new strains.

On February 9^th, 2021, the Federal Court heard an appeal under of . The Act allows an appeal within two months from the decision of the Registrar for a use or , which was filed by the Applicant at the Federal Court in the present case. A non-use cancellation proceeding allows any person to question the use of a registered trademark in Canada, provided written request with notice to the registered owner of the trademark. In this case, the Registrar of Trademark had passed an order on January 29, 2020 to amend the description of the goods through deletion of certain goods under the trademark registration no. TMA789,288, “en Vogue.” This decision helped to maintain the trademark registration in the database with an amended description of goods for which the Respondent was able to show use. The applicant, however, brought this appeal at the Federal Court on grounds that the Registrar erred in law under and s. of the Act; and in fact, regarding the correlation of the goods with the exhibited evidence filed.

The issues in law stemmed from the standard of review application. There have been considerable changes in the application of this test since . In Vavilov, the court clarified that all questions of law would be reviewed for correctness, while questions of fact or mixed fact and law would be reviewed for “palpable and overriding error.”��However, the Applicant counsel in this case has relied on ., where the registrant’s appeal was dismissed and Registrar’s decision of expungement of the trademark was affirmed on the basis of the standard of reasonableness simpliciter. In , the court applied the standard of reasonableness simpliciter test since no additional evidence was adduced at appeal. Similarly, in the present case, the Respondent has not adduced any additional evidence. After hearing submissions from counsel for both parties, the Honourable Justice Janet M. Fuhrer reserved the order for a future date. It will be interesting to see her decision.

The Courts have used virtual platforms to survive the pandemic’s disruption to court proceedings. After in-person courtroom hearings were suspended, . for online hearings. Although virtual hearings have many limitations (for obvious reasons) for the Federal Court and other Court proceedings, the Courts have maintained their Open Court Room Policy by giving access to the . Their access has many caveats, and the format of the virtual hearing is primarily to observe the proceeding without being granted a screen space. In other words, the public and media can view the judicial officer and the counsels’ submissions but are not visible and their mics are turned off at all times. Upon special request and for educational purposes, the IP Osgoode team was granted an unrecorded Q&A session after the proceedings.

In conclusion, we cannot brush aside the challenges that lawyers, government officials and the judicial system as a whole face to present a case zealously through e-hearings. However, in this case, counsel for both parties, in their own words, suggested that this e-hearing experience was a blessing in disguise. Their clients also prefer this cost-effective infrastructure without much loss of efficacy. Both counsel would like to explore this viable option more in the coming days, as they can jump from one e-court room to another without having to spend much of their energy and travel time.

Written by Aishwerya Kansal, IPilogue Contributor, an IP Innovation Clinic Fellow, Masters in Law in International Business Laws, Osgoode Hall Law School 2020, and Internationally Trained Lawyer.

The post A Day in Virtual Court House Proceedings appeared first on IPOsgoode.

DRAMATIS PERSONAE: ����������������������

Justice R. Bitter, judge (J)

Sue N. Ewon, plaintiff (P)

Wigmore Cross, plaintiff’s counsel (PC)������������������������������������������������������������������������������������

Chick Fowler, defendant (D)

Ms Chiff Maker, defendant’s counsel (DC)

PARTIAL TRANSCRIPT OF CROSS-EXAMINATION OF PLAINTIFF SUE N. EWON:

DC: So, Ms Ewon, you say the defendant’s chicken-plucker infringes claim 1 of your patent?

P: Yes.

DC: Because it includes chicken-pluckers with a widget, and the defendant’s plucker has that widget?

P: Yes.

DC: Did you ever tell anyone that claim 1 doesn’t include chicken-pluckers with a widget?

PC: I object, what plaintiff thinks her claim means is irrelevant. That’s for the judge.

J: Yes, I think that’s right. Ms. Maker, I decide questions of law.

DC: All right. (To P:) When you applied for your Canadian patent, did your patent agent write to the examiner to say that pluckers with widgets were excluded?

P: I’ve no idea.

DC: I show you Exhibit K. You recognize that letter from your patent agent to the examiner?

P: Yes, she sent me a copy.

DC: You see where it says “Enclosed is a new claim 1 that corresponds substantially to the claim submitted in prosecution of the related United States patent application”?

P: Yes.

DC: You did have such an application in the United States, didn’t you?

PC (to J): With respect, Your Ladyship, I have no idea where this is all heading.

J: Nor do I, but I’ll cut Ms. Maker some slack for the moment.

DC: Thank you. (To P:) I repeat, you did have an application filed in the United States for the same invention as in this case, didn’t you?

J: Yes.

DC: Are you aware that the attorney handling your American application wrote to the American examiner, saying that a new claim 1 he was submitting would overcome the examiner’s objection that chicken-pluckers with widgets were known to the prior art?

PC (to J): I object most strenuously to that whole question. Even if my client personally wrote to the American examiner saying that, it is inadmissible here.

J: Why? Because it wasn’t said in Canada to a Canadian examiner?

PC: Yes.

J: Would it have been admissible had your client written the same thing to the Canadian examiner?

PC: I don’t believe anything said anywhere else than in a Canadian prosecution has anything to do with this case. May I draw Your Ladyship’s attention to the Court of Appeal’s reasons in CanMar at paragraph 70? The Court there said you should be “wary” about allowing anything other than Canadian prosecution history in. And then at paragraph 71, the Court went on to say you should “tread carefully” in admitting extrinsic evidence to interpret a patent claim. And once again in that paragraph, “Opening the door to allowing foreign patent prosecution history into the analysis might lead to overly contentious and expensive litigation.”

J: Well, I am treading carefully and warily, and I haven’t turned the door knob yet. Hasn’t this litigation been contentious and expensive enough anyway? Aren’t you making it more expensive and contentious by raising these sorts of objections? I can’t see why a statement that would be admissible and relevant if made in Gatineau becomes inadmissible and irrelevant if made in Alexandria. What happens in Virginia doesn’t have to stay in Virginia.

PC: With respect, it is not Your Ladyship’s role to question the wisdom of Parliament. Both Justice Manson and the Court of Appeal said very clearly that section 53.1 applies only to communications to the Canadian Patent Office.

J: I am not questioning Parliament’s wisdom, only the awkward statutory language used to translate it. Hasn’t one of my colleagues just decided that even Canadian history isn’t admissible if it’s the licensor rather than the patentee who sues, even where the patentee is a defendant (Allergan Inc v Sandoz Canada Inc, at [126])? Why couldn’t section 53.1 just have said that any prosecution history from wherever is admissible, but its weight is for the court? Is section 53.1 based on any other country’s legislation?

PC: Not that I know, Your Ladyship. It is homegrown, although I accept there may be a few weeds among the roses.

J: What I am saying, I guess, is much what Justice Manson said in CanMar. Here we have the extraordinary circumstance that the Canadian communication expressly refers to the corresponding US application and the clear inference is that the Canadian claim is being replaced precisely to overcome the actual or anticipated citation of the same prior art against the Canadian application.

PC: With respect, that is exactly the same situation as in CanMar, and the Court of Appeal explicitly overruled Justice Manson’s admission of the American file.

J: We have this anomaly then, haven’t we? If the Canadian patent had been granted unchanged and without reference to the US application, your client could have asked for it to be reissued with the changed claim under section 47 of the Patent Act because of an inadvertent mistake. Foreign prosecution history has long been admitted on a reissue application to show there was a mistake and that the reissued patent would be for the same invention. Why allow the foreign file to be admitted to show the reissue was justified, but exclude it to show what the claims now mean?

PC: If that was the position before section 53.1 took effect, then I submit that such foreign history can no longer be admitted in reissue.

J: What do you say, Ms. Maker?

DC: Section 53.1 states that it specifically applies to reissue and no intent to change current Patent Office practice appears. Nor is there any apparent attempt to overrule long-standing cases such as Northern Electric Co v Photo Sound Corp, , where the whole case depended on foreign prosecution history. If foreign history is admissible in reissue to determine the scope of the invention, as I submit it was before and is after s. 53.1, then I cannot see why it is inadmissible where an ordinary patent is involved.

J: Well, it’s a brave trial judge who says the Court of Appeal has decided something per incuriam and should not be followed.

DC: May I make one further point? The Court of Appeal in CanMar relied on a decision of the United States Federal Circuit Court of Appeals to say that the reference in the plaintiff’s letter to the Canadian examiner to “a related United States patent application” wasn’t specific enough to incorporate the corresponding US file. The point on how specific a cross-reference must be to allow another document to be read has not been decided by the US Supreme Court, and I would point out that the Federal Circuit Court of Appeals is a court with one of the highest reversal rates before the US Supreme Court, and especially so in patent cases.

What our Court of Appeal should have done was to apply the general law in Canada on when documents can be looked at together. Cases on the Statute of Frauds are the most obvious source. The Statute requires contracts, such as guarantees or sales of land, to be evidenced by a memorandum in writing, and ever since the 19th century, it has been held that two or more documents can form a single memorandum. Supreme Court of Canada authority going back a century says, and I quote, “parol evidence may be given to connect two documents together which do not expressly refer to each other, but which connection and reference is a matter of fair and reasonable inference:” Doran v McKinnon, , 53 SCR 609 at 611. I can say that is also the law in most Commonwealth countries and state courts of the United States. Not to put too fine a point on it, the US Federal Circuit has gone rogue by making up its own rule of incorporation and ignoring the general law of the majority of state courts.

I submit that in our case the reference to the US application is plain enough in the letter to the Canadian examiner. It is also distinguishable from CanMar in two respects. First, our letter refers to “the” US application, whereas the Canmar letter referred only to “a” related application. We are very specific. Second, the US application in CanMar was abandoned, whereas here the plaintiff’s application specifically claims priority from the corresponding US application which was granted. It is open to the Court to hold the US history admissible on either of these distinctions, since the Court of Appeal specifically refused to express any “firm view on the broader issue of whether foreign prosecution history can be considered under section 53.1.” I ask for Your Ladyship’s firm views now. ��

PC: I submit this case is covered exactly by the Court of Appeal in CanMar and the foreign history cannot be looked at.

D (intervening): You mean Sue can lie to a Canadian judge where she wouldn’t dare to an American one? [Scuffle breaks out.]

J: Ms. Maker, could you kindly restrain your client? [Order resumes.]

Thank you, counsel.

I propose to admit the statement in the US patent file into evidence. I shall not at this stage indicate what weight it deserves or what use I may make of it. This case is not covered by CanMar because the Canadian patent here relies for its priority on a stated US patent. The plaintiff cannot blow hot and cold by then dismissing the very patent from which it claims priority and on which it may well depend for validity in Canada.

The Court of Appeal thought it “a stretch” to incorporate a US patent file on language as general as that which points to “a” related United States application. There is no “stretch” at all here since, as defendant’s counsel submitted, the letter to the Canadian examiner points to “the” related US application, not merely “a” related one. I nevertheless must say that, at a time when we are all urged not to subject patents to “the kind of meticulous verbal analysis in which lawyers are too often tempted by their training to indulge” (Catnic Components Ltd v Hill & Smith Ltd, [1982] RPC 183, 243 (HL)), I would be reluctant to have to read the documents leading to the grant of a patent more meticulously than I would read the patent itself.

I am also not sure that incorporation is the mot juste for the ability to follow a signpost and explore the destination to which it points. There is no difficulty in identifying that destination off the face of the Canadian file. Canadian patent law is no Alsatia where the general law stops, nor is it one where the US Federal Circuit’s writ runs. To adapt L.P. Hartley’ s words in The Go-Between, patent law should not be a different country where they do things differently. Law under the Statute of Frauds lets two documents be read together where their “connection and reference is a matter of fair and reasonable inference:” Doran v McKinnon, , 53 S.C.R. 609, 611, which I note was recently applied to a series of emails in Druet v Girouard, at [34]. Canadian patent law should let patent files be cross-referenced that way too. The location of the second file should not matter, any more than it does under the Statute of Frauds. If a multimillion dollar guarantee or land contract can be interpreted and enforced by means of such a connection, so should a patent.

None of the parade of horribles trotted out by the Court of Appeal (CanMar at [71]) is present here. There is no translation problem with the US file, and the Court of Appeal specifically said at [72] that “one should not underplay the public interest in keeping those who have previously disclaimed elements from their patent from re-claiming them in future infringement cases.” I do not expect that the plaintiff will ask me to take such a course, which Locke J (now JA) in Pollard Banknote Ltd v BABN Technologies Corp, at [237] described as “breathtaking.”

I would only add in passing that, when the Court of Appeal comes to take a “firm view” on foreign prosecution history and section 53.1, it may well have to take account of the long-standing practice, sanctioned by consistent Supreme Court authority, of relying on evidence of such history to decide when the reissue of a defective or inoperative patent under section 47 of the Patent Act is warranted or valid.

Ruling accordingly

Prof David Vaver is a Professor of Intellectual Property Law at Osgoode Hall Law School and Emeritus Professor of Intellectual Property & Information Technology Law at University of Oxford. This is an abridged version of a Comment that will appear in the Intellectual Property Journal.

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As a result, discerning whether the specification has a promise of a specific result can have significant impact on the validity of a patent. The recent Federal Court of Appeal decision of Apotex Inc v Sanofi-Aventis Canada Inc (“Sanofi”), for which the Supreme Court has granted leave to appeal, advocates for a degree of constraint when determining whether a patent contains a promise.

In Sanofi, the Court held that it must look to the patent to determine whether it contains an explicit promise that the invention will achieve a specific result. Since there is no obligation on the part of the inventor to disclose the utility of his invention in the patent, not every patent contains an explicit promise of a specific result.

The idea of a “promise doctrine” is the subject of a NAFTA challenge by Eli Lilly. Central to Lilly’s argument is that two of Lilly’s patents were invalidated on the ground they were not useful, notwithstanding their approval by Health Canada and their commercial success. Lilly alleges that the promise doctrine is inconsistent with NAFTA as it imposes a significantly higher burden on the patentee than the standard of utility mandated by NAFTA.�� Specifically, Lilly alleges that Canada’s failure to abide by its NAFTA obligations has resulted in the unlawful expropriation of its patent rights.�� Lilly argues that the “promise doctrine” has caused a dramatic and unprecedented shift in Canada’s utility standard and is inconsistent with the utility standard embodied in NAFTA.���� Lilly pointed out that one of the patents was challenged and upheld in 18 countries throughout the world, and Canada was the only jurisdiction to invalidate on the basis of inutility.

Canada, in response, has argued that the “promise doctrine” was endorsed by the Supreme Court as early as 1981 in Consolboard v MacMillan, while NAFTA came into force in 1994. There is no requirement to make a promise, but a promise may be made for a variety of reasons, including where a new and non-obvious use of a known compound is the essence of the invention or in selection patents where a sub-species of the genus has a surprising and non-obvious advantage. Canada further notes that NAFTA does not provide direction as to how the core patent concepts of “new”, “inventive”, and “industrial application” are to be interpreted and applied in particular patent cases.

The Sanofi decision appears to have pushed back on certain elements of the “promise doctrine” that Lilly complains of in its NAFTA challenge. Lilly alleges that the Courts read into the patents an “implied promise” that the drugs would work in the longer term based on the chronic nature of the conditions being treated. In Sanofi, the Court of Appeal finds that the Trial Judge erred in finding a promise on the basis of inferences, in the absence of clear and unambiguous language. Sanofi thus draws a distinction between the potential use of an invention and an explicit promise to achieve a specific result, and finds that a goal is not necessarily a promise.

As noted by Canada in its Statement of Defence, domestic patent law continues to evolve, including the promise doctrine.

One possible way forward is to limit the promise doctrine in a manner similar to the Federal Court’s recent treatment of the heightened requirements for a “sound prediction” of utility.�� In a July 2014 Apotex v. AstraZeneca (“�����ٰ����ܱ�Ա𳦲�”) decision, Justice Rennie concludes that the patentee should only face a higher burden for disclosed utility in “new use for known compound” type patents.�� The rational was that, for these “new use” patents, the entire invention resides in the new utility, hence there should be a higher standard for showing utility.

The appeal of Astrazeneca to the Federal Court of Appeal, the Sanofi appeal to the Supreme Court of Canada, and Lilly’s NAFTA challenge will continue the evolution of these doctrines.

David Heller is a Partner at the Toronto office of Ridout & Maybee LLP, where he��specializes in the areas of pharmaceuticals, biotechnology, and chemistry.��David has been recognized as a leading IP lawyer in the Chambers Global Guide 2014, 2013, and 2012 rankings.

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