E-TIPS® Newsletter’s “2015: Year in Review”

Thank you for your readership over the last year and welcome to what is sure to be an exciting 2016!  In this year’s first issue of E-TIPS® newsletter, we will recap our most noteworthy reports from 2015 covering developments in IP and IT law.  We’ll start with a selection of our “Top Stories” and follow with a summary of the “Legislative and Treaty Developments” we have tracked over the last year.

It’s E-TIPS® newsletter’s “2015: Year in Review”, brought to you by John Lucas and David Bowden. Remember: all of our past coverage – over 13 years’ worth – is accessible in our archive.

 

Top Stories of 2015

January – In its January decision in AbbVie Biotechnology Ltd v Canada (Attorney General), 2014 FC 1251 (Abbvie Biotech), the Canadian Federal Court (FC) allowed the appeal of AbbVie Biotechnology Ltd. from a decision by the Commissioner of Patents refusing to grant a patent for a fixed dosage and fixed dosage schedule on the grounds that the patent taught an unpatentable method of medical treatment. The Court found that the claims at issue were patentable since they placed no restriction on the exercise of a physician’s skill or judgment once the drug is prescribed.  For our full report, click here.

Following the decision in Abbvie Biotech, the Canadian Intellectual Property Office (CIPO) released a revised Examination Practice Respecting Medical Uses. For our full report, click here.

In Pfizer Canada Inc v Canada (AG), 2014 FC 1243 and Actelion Pharmaceuticals Canada Inc v Canada (AG), 2014 FC 1249, the FC released concurrent decisions in which it held that the Minister of Health erred by issuing Notices of Compliance (NOCs) to generic drug manufacturers for administrative drug submissions which cross-referenced the abbreviated new drug submissions of their third party licensors, where the generics seeking the NOC had not addressed relevant patent listings as required by the Patented Medicines (Notice of Compliance) Regulations (PMNOC Regulations). Previously, The Minister had taken the position that a cross-referenced drug submission does not trigger the requirement to address a listed compound under the PMNOC Regulations. For our full report, click here.

February – In February, the Ontario Court of Appeal (ONCA) released its decision in Hopkins v Kay, 2015 ONCA 112, in which it held that the Ontario Personal Health Information Protection Act does not create an exhaustive code for dealing with personal information in the healthcare context.  Consequently, a private plaintiff was permitted to bring a class proceeding for damages in tort against the Peterborough Regional Health Centre relating to unauthorized access to personal health information.  For our full report, click here.

On February 20, 2015, the FC released its decision in Reckitt Benckisser LLC v Jamieson Laboratories Ltd, 2015 FC 215, allowing a motion by the plaintiffs for an order seeking an interlocutory injunction against the defendant in a trade-mark infringement action. Canada’s Federal Court of Appeal (FCA) affirmed the FC’s decision in reasons dated April 23, 2015 (2015 FCA 104).  These decision provide insight into the circumstances for securing an interim injunction in an IP action, which are rarely awarded.  For our full reports on the FC and FCA decision, click here and here, respectively.

March - On March 5, 2015, the Canadian Radio-television and Telecommunications Commission (CRTC) issued the first of several penalties under Canada’s Anti-Spam Legislation (CASL).  The CRTC found that Compu-Finder sent e-mails promoting its training program and courses to consumers without their consent and that the unsubscribe mechanism in the e-mails did not function properly.  A penalty of $1.1 million was issued against Compu-Finder for the violations.  The CRTC also executed its first warrant issued under CASL in the takedown of a Toronto-based command-and-control server responsible for the widely distributed Win32/Dorkbot malware family.  The takedown took place in December, 2015, and was a coordinated effort from the Royal Canadian Mounted Police, the US Federal Bureau of Investigation, Interpol, Europol, and Microsoft, among others.  For our full reports on these stories, click here and here, respectively.

In March we also reported the FCA decision in Newco Tank Corp v Canada (AG), 2015 FCA 47, which affirmed a decision by the FC upholding a decision by the Re-Examination Board (Board) to reject claims in a re-examination of a Canadian patent. The FCA affirmed that the Board was owed deference on factual findings made within the area of expertise of the Board.  For our full report, click here.

April - On April 13, 2015, Canada’s Federal Minister of Health announced the launch of Health Canada’s Good Manufacturing Practices (GMP) inspection database.  The announcement is aimed at increasing transparency in the pharmaceutical regulatory process by providing Canadians with information on Health Canada findings from inspections of pharmaceutical manufacturers.  For our full report, click here.

On April 15, 2015, in ViiV Healthcare ULC v Teva Canada Limited, 2015 FCA 93, the FCA found that a patent that does not explicitly claim all of the medicinal ingredients contained in the drug for which a NOC was issued cannot be listed against that drug (the so-called “perfect match” requirement).  Subsequently, Industry Canada published proposed amendments regarding Patent Listing Requirements against Combination Drugs on May 2, 2015 (for our full report, click here).  In its July decision in Eli Lilly v Minister of Health, 2015 FCA 166, the FCA took a more liberal view of the “perfect match” requirement, finding that the question is not whether the name of a medicinal ingredient appears in the patent claims, but whether the claims include that medicinal ingredient in the formulation set out in the Patent (for our full report, click here).

May – In May we reported on the FC decision in Pfizer Products Inc v Canadian Generic Pharmaceutical Association, 2015 FC 493, dismissing the appeal of Pfizer Products Inc from a decision of the Trade-marks Opposition Board (TMOB) in which the TMOB refused an application for the design of a three-dimensional blue diamond-shaped tablet.  The FC found that the test for distinctiveness of a pharmaceutical tablet does not require that distinctiveness be established for patients, pharmacists, and physicians, but instead, the whole constituency of consumers must be examined.  For our full report, click here). 

In May we also reported on a decision of the Québec Court of Appeal upholding a decision of the Superior Court of Québec that public signs in Québec bearing trade-marks in a language other than French do not need to be translated into French or accompanied by generic French language, as was previously asserted by the Office Québécois de la Langue Française.  For our full report, click here).

June – In June we reported on the decision of the United States Court of Appeals for the Federal Circuit (USCAFC) that affirmed in part the judgment from the US District Court for the Northern District of California that Samsung Electronics Co, Ltd and its affiliates infringed design and utility patents owned by Apple Inc.  The USCAFC reversed the lower court’s findings with respect to Apple’s asserted trade dresses, but affirmed the findings with respect to Apple’s design and utility patents, awarding Apple approximately $548-million in damages.  On August 13, 2015, Samsung lost a bid to have the appeal re-heard en banc. For our full reports on these stories, click here and here, respectively).

On June 13, 2015, the British Columbia Court of Appeal (BCCA) released its decision in Equustek v Google, 2015 BCCA 265, dismissing the appeal of Google Inc from an interim injunction issued by the lower court that prohibited Google from indexing a list of websites relating to the business of the defendants in the underlying action on Google’s global search engine.  A week later, in Douez v Facebook (2015 BCCA 279), the BCCA took a more limited view of its jurisdiction by allowing an appeal by Facebook and entering a stay of proceedings in this case for the reason that BC was forum non conveniens.  Facebook successfully relied upon their Terms of Use agreement, which contained a forum selection clause attorning all disputes to the jurisdiction of the courts of the state of California.  For our full reports on these stories, click here and here.

July - On July 6, 2015, the FCA issued its brief reasons in AstraZeneca Canada Inc v Apotex Inc, 2015 FCA 158 relating to the construction of the promised utility of patent claims.  The FCA confirmed that different claims can have different promises and that there need not be a unitary, harmonious understanding of the essential elements of the claim, the inventive concept, and utility.  For our full report, click here).

On July 23, 2015, the FCA released its decision in Apotex Inc v Merck & Co, Inc, 2015 FCA 171, dismissing the appeal of Apotex Inc and Apotex Fermentation Inc (together, Apotex) from a damages award in favour of Merck & Co, Inc and Merck Canada Inc (together, Merck) relating to Apotex’s infringement of a patent covering the Merck lovastatin drug MEVACOR® (for background, see decision on liability in 2010 FC 1265, aff’d 2011 FCA 363, and initial decision on damages by Snider J that is the subject of this appeal at 2013 FC 751).  In a significant development, the FCA disagreed with the reasoning of Snider J on the relevance of NIAs, holding that NIAs are a legally relevant consideration when calculating damages for patent infringement.  However, since Apotex had in this case failed to establish on the evidence that it could and would have pursued a NIA available to it, this appeal was ultimately dismissed.  For our full report, click here.

August – In August, we reported on a US trade-mark dispute over rights to the words COMIC CON used in association with comic, sci-fi and fantasy conventions and on the USPTO’s issuance of new supplemental guidelines for subject matter eligibility determinations by its patent examiners.  For full reports on these stories, click here and here, respectively.

September – In September, we reported on the British Columbia Supreme Court (BCSC) decision in Vancouver Community College v Vancouver Career College (Burnaby) Inc, 2015 BCSC 1470, a case addressing the marketing practice of bidding on a competitor’s trade-mark as keyword advertising for your own business. The Court found that this practice does not constitute passing off unless, among other things, it causes a likelihood of confusion in a person after that person reaches the advertiser’s website.  For our full report, click here.

We also reported on the September 14, 2015 decision of the US Ninth Circuit in favour of the ‘“Dancing Baby” in the case of Lenz v Universal Music.  The case revolved around whether the owner of a copyright to music used in the Dancing Baby video (Universal Music) should have first considered whether or not the use of their copyright was “fair use” before sending the unauthorized user, Lenz, a takedown notice.  For our full report, click here.

October – October brought big news in the data security world as the Court of Justice of the European Union (CJEU) issued a landmark verdict finding that the Safe Harbor Framework regulating companies’ retention of Europeans’ data in the United States is invalid.  For our full report, click here.

Owners of luxury brands toasted the October 6, 2015 decision of the English High Court (EHC) finding that CRISTALINO-brand sparkling wine marketed by J Garcia Carrion SA infringed the trade-mark owned by Champagne Louis Roederer for CRISTAL. The judgment dealt with “source” confusion as well as free-riding on the substantial reputation of CRISTAL in association with champagne, with the EHC determining that the significant reputation associated with the CRISTAL mark was established despite the fact that most UK consumers were unlikely to have purchased or tasted it.  For our full report, click here.

November – The big news in November was the United States Court of Appeals for the Second Circuit decision in Authors Guild v Google Inc, which affirmed a 2013 judgment of the United States District Court for the Southern District of New York finding that the snippets of copyrighted text provided by Google in its Google Books Library Project constituted fair use under US copyright law.  For our full report, click here.

In November, we also reported on the decision of the Supreme Court of South Australia (SCSA) in Duffy v Google Inc, [2015] SASC 170, where Google was found liable for defamation for failing to remove defamatory suggestions from its Autocomplete and Related Search features, as well as its search results.  The SCSA concluded that if Google is notified that its automated search tools return or suggest defamatory content (and it was), then it can be held liable for publishing that defamatory content.  For our full report, click here.

December – In December we reported the Supreme Court of Canada (SCC) decision in the case of Canadian Broadcasting Corp v SODRAC, 2015 SCC 57, which related to the principle of technological neutrality in the interpretation of the Copyright Act. In allowing SODRAC’s appeal, the SCC decided that royalties are payable for ephemeral copies of works that are made as part of the broadcasting process, but the principle of technological neutrality should be considered when setting the royalty rate.  The SCC found that nothing in the Act, its context or its legislative history suggested that ephemeral copies should be exempt from the payment of royalties, and that the principles of technological neutrality and balanced copyright “can inform the interpretation and application of the terms of the Act, but they cannot supplant them”.  For our full report, click here.

December also saw the story of how VTech, a Hong Kong based supplier of electronic learning products, reportedly leaked 4.8 million customer records, including 227,000 children’s records, due to a hack on VTech’s system.  VTech’s hacked database reportedly contained, among other things, hundreds of gigabytes of pictures, chat logs and audio recordings of parents and children.  A 21 year-old UK man was been arrested in connection with the hack.  For our full report, click here.

 

Legislative and Treaty Developments in 2015

CASL Software Provisions Come into Force
In January, the provisions of CASL that apply to the installation of computer software came into force. These provisions require express consent from the owner of a computer system to install a computer program on another person’s computer in the course of a commercial activity.  For our full report, click here.

Plant Breeders’ Rights Act amended by Agricultural Growth Act (Bill C-18)
Bill C-18, which received royal assent on February 25, 2015, amends the Plant Breeders’ Rights Act in an attempt to bring Canada into compliance with the requirements of the 1991 Act of the International Convention for the Protection of New Varieties of Plants. Changes include new exclusive rights to reproduce, import, export, condition, and stock propagating materials and an extension to the term of protection from 18 years to 25 years for trees, vines, and any specified categories, and to 20 years for all other crops. The amendments balance these protections with an “exhaustion” principle and by introducing limited exceptions to infringement.  For our full report, click here.

Ontario announces intention to amend PHIPA
On June 10th, 2015, Ontario’s Ministry of Health and Long-Term Care announced its intention to introduce amendments to the province’s Personal Health Information Protection Act (PHIPA).  The amendments that will be proposed are expected to be, in part, a revival of Bill 78 (the Electronic Personal Health Information Protection Act).  Bill 78 reached second reading before it died on dissolution of the 40th Legislative Assembly of Ontario in 2014.  Among the proposed amendments are an expanded limitation period for bringing charges, increased fines for offences, and mandatory reporting.  For our full report, click here.

PIPEDA amended by the Digital Privacy Act (Bill S-4)
The Digital Privacy Act (Bill S-4) was given royal assent on June 18th, 2015, making several important updates to the Personal Information Protection and Electronic Documents Act (PIPEDA).  Among the changes are the addition of mandatory breach notification and the concept that a consent must not only be informed but reasonably expected to be understood (called a “valid” consent).

The Patent Act, Trade-marks Act and Industrial Design Act amended by the Economic Action Plan 2015 (Bill C-59)
The Federal Budget Bill, which received royal assent on June 23, 2015, contained significant changes to Canadian IP laws. Specifically, the amendments provide a statutory privilege for confidential communications between intellectual property agents and their clients.  The amendments also provide CIPO with the ability to extend key deadlines in cases of force majeure events such as floods, blackouts or ice storms. The Bill also amends the Copyright Act in order to (1) enable Canada to implement and accede to the Marrakesh Treaty to Facilitate Access to Published Works for Persons Who Are Blind, Visually Impaired or Otherwise Print Disabled; and (2) extend the term of protection for sound recordings and performances from 50 to 70 years.  For our full report, click here.

Ontario enacts Naturopathy Act, 2007
On July 1, 2015, Ontario enacted the Naturopathy Act, 2007 (Act) , which brings naturopaths under the rubric of the Regulated Health Professions Act, 1991 and establishes the College of Naturopaths of Ontario (College) as the self-regulatory body governing the practice of naturopathy in Ontario.  With this change comes new rights for Ontario’s naturopaths to prescribe, dispense, compound and/or sell certain drugs designated by regulation under the Act.  For our full report, click here.

TPP IP Provisions made public
In October, 2015, Wikileaks leaked provisions of the Trans-Pacific Partnership (TPP) treaty, including the IP provisions, to the public.  We reviewed the leaked content as well as the official text when it became publicly available in November.  For these reviews, click here, here, and here.