Canadian Technology & IP Law : Canadian Technology Lawyers & Attorneys : Stikeman Elliott Law Firm : IP Law in Toronto, Montreal, Calgary, Ottawa & Vancouver

Canada's Privacy Commissioner Jennifer Stoddart has revealed concerns over Facebook's "like" button. While the Commissioner very recently announced the conclusion of a prior privacy investigation that began in 2008, she revealed that this new probe was only one of several other issues the Commission has with Facebook. When it was first implemented, the “Like” button was meant only for users on the Facebook website to indicate their preference for items posted on their friend’s Facebook pages. In April, Facebook began to offer its “Like” button to external websites leading to uncertainty over how the private information of users who clicked the button would be used. It is now estimated that over 350,000 websites have adopted the “Like” button with over 65 million clicks to the button a day. Despite these ongoing investigations by the Commissioner, Facebook’s Chief Privacy Counsel Michael Richter maintains that Facebook continues to be dedicated to giving users control over their private information.

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Apotex Inc. v. H. Lundbeck A/S, 2010 FC 807

The generic pharmaceutical manufacturer Apotex Inc. (Apotex) commenced an action seeking declarations of invalidity and non-infringement with respect to Canadian patent no. 1,339,452 (the ‘452 patent), owned by H. Lundbeck A/S (Lundbeck),  relating to the medicine escitalopram.  During the course of these proceedings, Apotex brought a motion for an order striking Lundbeck’s counterclaim, or, in the alternative, requiring that Lundbeck provide security for costs.

Lundbeck’s counterclaim was in the nature of a quia timet action on infringement (essentially an injunction to restrain threatened and imminent patent infringement that has not yet commenced). While Lundbeck admitted that such action would be improper and subject to being struck if brought as an independent action, it argued that its counterclaim should be saved and allowed to proceed on the basis that it was brought in response to an action seeking a declaration of non-infringement. If the counterclaim was permitted to proceed, Lundbeck further argued that it should not be required to post security for costs or, in the alternative, that the amount requested by Apotex was unreasonable.

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Compagnie d’assurances Standard Life c. Tremblay, 2010 QCCA 933 (CanLII)

On May 11, 2010, the Quebec Court of Appeal issued a definitive judgment in support of privacy rights in the case of Standard Life v. Tremblay. Upholding the trial decision, the Quebec Court of Appeal maintained the damages awarded which included a punitive sum of $100,000.00 to the plaintiff Tremblay against Standard Life Insurance Company (Standard Life).

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Apotex Inc. v. Shire Canada Inc., 2010 FC 828

In an action brought by Apotex Inc. (Apotex) to recover damages under section 8 of the Patented Medicines (Notice of Compliance) Regulations (SOR/93-133) (Regulations) in respect of the medicine modafinil, Shire Canada Inc. (Shire) brought this motion for leave to amend its statement of defence, alleging two new defences. Apotex opposed Shire’s motion, arguing that the proposed amendments did not disclose a reasonable defence and ought not to be permitted. The prothonotary struck out the first proposed amendment, finding that a defence based on the outcome of a separate infringement action to which Shire was not a party would be speculative and hypothetical, but permitted the second proposed amendment which alleged a “grave consequences” defence.

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Janssen-Ortho Inc. v. Apotex Inc. , 2009 FC 650

This was a motion brought by Apotex pursuant to section 6(5)(b) of the Patented Medicines (Notice of Compliance) Regulations (Regulations) to dismiss Janssen’s prohibition application on the basis that it was “redundant, scandalous, frivolous, or vexatious or otherwise an abuse of process”.   The motion raised a unique issue which appears not to have been decided in any prior proceeding under the Regulations.   In particular, the issue was whether a generic manufacturer was required to respond to claims in a patent which changed as a result of a disclaimer filed by the innovator subsequent to service of the generic’s notice of allegation (NOA) and prior to the commencement of an application to prohibit the issuance of a notice of compliance (NOC).  Or, in the words of the prothonotary hearing the motion, “using a football analogy, does the field goal count if the goalposts are moved after the ball is in the air?”

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AstraZeneca Canada Inc. v. Apotex Inc., 2010 FC 714

This was an application brought by AstraZeneca under the provisions of the Patented Medicines (Notice of Compliance) Regulations for an order prohibiting the Minister of Health from issuing a notice of compliance to Apotex for 20 and 40 mg esomeprazole magnesium tablets until after the expiry of Canadian Patent No. 2,139,653 (the ‘653 patent).  If successful on the application, this would have prevented Apotex from marketing a generic version of NEXIUM in Canada for treating conditions wherein a reduction of gastric acid secretion is required until May 27, 2014.  Apotex, on the other hand, sought early market entry by arguing that the ‘653 patent was invalid for lack of sound prediction, anticipation (or lack of novelty), and obviousness.

The ‘653 patent relates to an improved process for preparing highly optically pure esomeprazole, one of the enantiomers of the racemate omeprazole, that is stable against racemisation (i.e. recombination).  Claim 8 was the claim at issue and could be read as claiming a salt (e.g. magnesium) of esomeprazole having an optical purity of 99.8% or greater.  There was no provision as to utility (or use of the invention) in claim 8.  This was an important fact, as the Court noted that where the invention relates to a new compound, utility does not need to be included in the claim, so long as it is described in the description portion of the patent.  On the other hand, when the patent relates to a new use for an old, known compound, that new use must be set out in the claims.  In this case, claim 8 was not directed to a new compound; it was directed to a previously known compound having a particular purity.

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Pfizer Limited V. Ratiopharm Inc. (2010 FCA 204)

Pfizer appealed from a decision of the Federal Court declaring Pfizer’s Canadian Patent No. 1,321,393 ( ‘393 Patent) relating to the medicine amlodipine besylate (NORVASC) invalid for obviousness. 

Amlodipine is a calcium channel blocker and anti-hypertensive compound, but had originally been formulated in the form of the maleate salt.  However, when problems with stability and processability arose during the regulatory approval process, Pfizer began to search for a different salt through an accepted process known as salt screening.  During this process, Pfizer tested seven other salts, and decided to proceed with the besylate salt.  Pfizer then filed a patent application directed to the besylate salt of amlodipine based on its alleged unique combination of properties that made it particularly suitable for preparing formulations of amlodipine.  This application subsequently issued as the ‘393 Patent. 

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Stikeman Elliott Partner Wesley Ng's column in Slaw this month considers the perils of relying on service providers' standard service descriptions when engaging in outsourcing activities. According to Mr. Ng,

Ultimately, the customer needs to dedicate sufficient resources to ensure a full appreciation of the services that are being contracted (including service levels and the consequences of any service level failure). Generally, this is a two-step process involving:

1. understanding the organization’s needs without reference to the service providers’ services; and
2. understanding any discrepancy between the organization’s needs and what the service provider is willing and able to provide.

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