On February 17, 2017, in Bennett v Lenovo, 2017 ONSC 1082, the Ontario Superior Court of Justice dismissed the majority of Lenovo (Canada) Inc (Lenovo) and Superfish Inc’s motion to strike claims related to pre-loaded software present on a Lenovo laptop.
Deeth Williams Wallhttp://www.dww.com/articles/bloatware-beware-lenovo-cannot-%E2%80%9Cuninstall%E2%80%9D-class-action-motion-to-strike-0
On February 2, 2017, the Federal Court of Appeal issued its decision in Apotex Inc, et al v ADIR and Servier Canada Inc, 2017 FCA 23. The case was an appeal of the Federal Court decision determining the amount of Apotex’s profits attributable to the infringement of Canadian Patent 1,341,196 for the drug perindopril after Servier Canada Inc (Servier) had elected to recover profits.
Deeth Williams Wallhttp://www.dww.com/articles/federal-court-of-appeal-remits-issue-of-noninfringing-alternative
On December 7, 2016, Ontario’s Superior Court of Justice (the Court) released its reasons in Atos IT Solutions and Services GmbH and Atos Inc v Sapient Canada Inc, 2016 ONSC 6852, a decision relating to a contract dispute between the primary IT contractor for a solution, Sapient Canada Inc (Sapient), and its subcontractors, Siemens Canada Limited and Siemens Austria (together, Siemens), who are predecessor entities to the plaintiffs, Atos Inc and Atos IT Solutions and Services GmbH (together, Ato
Deeth Williams Wallhttp://www.dww.com/articles/ontario-court-considers-limitation-of-liability-clause-it-contract-dispute
As previously reported by E-TIPS Newsletter here, the US Department of Justice (DOJ) had petitioned for an en banc rehearing by the US Second Circuit Court of Appeals (the Court) after the Court concluded that it was not authorized under the Stored Communications Act to issue and enforce a warrant against US-based internet service providers for the disclosure of Microsoft’s customer email content stored on foreign servers.
Deeth Williams Wallhttp://www.dww.com/articles/us-courts-will-not-hear-further-arguments-microsoft-case
On February 6, 2017, the Federal Court of Appeal upheld a cost award totalling $6.5 million granted to Dow Chemical Company (Dow) by Justice O’Keefe in Nova Chemicals Corporation v. Dow Chemical Company, 2016 FC 91. At the time of this publication, we are not aware of a larger cost award granted by the Federal Court for patent infringement.
Deeth Williams Wallhttp://www.dww.com/articles/federal-court-of-appeal-upholds-65-million-cost-award-for-patent-infringement
On December 1, 2016, an amendment to Rule 41 of the United States Federal Rules of Criminal Procedure, which regulates legal search and seizure, came into force. The amended Rule 41, which now allows for remote-access searches, reads:
Deeth Williams Wallhttp://www.dww.com/articles/us-amended-rule-41-now-force
Vancouver Community College v Vancouver Career College (Burnaby), 2017 BCCA 41, concerns the use of competitors’ marks in the context of keyword internet searches. The appellant claimed that the respondent’s use of its official mark “VCC” in their internet advertising and domain name (VCCollege.ca) constituted passing off.
Deeth Williams Wallhttp://www.dww.com/articles/bc-court-of-appeal-finds-using-trademarks-as-keywords-internet-advertising-constitutes
A Mareva injunction is a form of interlocutory injunction that freezes a party’s assets so that they cannot be removed from the jurisdiction or dissipated in order to thwart a potential judgment. In a recent case concerning a patent infringement action, Unilin Beheer BV v Triforest Inc, 2017 FC 76, Gascon J of the Federal Court held that to obtain an interlocutory Mareva injunction, the plaintiff must provide clear and convincing evidence of a “real risk” of the expatriation of asserts by the defendant in order to avoid a judgment. Gascon J was not satisfied that the plaintiffs (
Deeth Williams Wallhttp://www.dww.com/articles/close-ties-to-china-too-speculative-to-establish-interlocutory-mareva-injunction-patent
On January 27, 2017, the Federal Court of Appeal (Court) released a unanimous decision in Canadian Copyright Licensing Agency (Access Copyright) v British Columbia (Education), 2017 FCA 16, affirming the decision from the Copyright Board (Board) regarding the doctrine of fair dealing and Canadian Copyright Licensing Agency (Access) royalty rates.
Deeth Williams Wallhttp://www.dww.com/articles/federal-court-of-appeal-upholds-decision-regarding-tariff-of-access-for-kindergarten-to
On January 26, 2017, in Frac Shack Inc v AFD Petroleum Ltd, 2017 FC 104, the Federal Court awarded an accounting of profits and a reasonable royalty of 29% of the infringer’s profits for pre-issuance patent infringement. This case is noteworthy because the plaintiff published their patent application early and obtained an award for pre-issuance compensation.
Deeth Williams Wallhttp://www.dww.com/articles/reasonable-royalty-awarded-for-pregrant-patent-infringement-frac-shack-inc-v-afd-petroleum
In AT v Globe24h.com (2017 FC 114), the Federal Court (Court) found that a Romanian website owner contravened the Personal Information Protection and Electronics Documents Act (PIPEDA) by publishing personal information contained in Canadian court and tribunal decisions without the consent of the named individuals. The infamous website republishes legal decisions in a manner that allows for indexing by search engines, such as Google®.
Deeth Williams Wallhttp://www.dww.com/articles/federal-court-orders-removal-of-canadian-court-and-tribunal-decisions-containing-personal
On January 25th, President Trump signed an Executive Order effectively terminating privacy protections in the US for those living outside of the United States (Order). The Order requires that all US government offices remove privacy policies protecting non-US citizens. Such policies act a chief source of privacy protection from US Government intelligence gathering entities.
Deeth Williams Wallhttp://www.dww.com/articles/us-executive-order-removes-privacy-protections-for-foreigners-including-canadians
In Chief Commissioner of State Revenue (for the state of New South Wales, Australia) v Babatunde, 2017 SKQB 3, the Saskatchewan Court of Queen’s Bench (Court) dismissed a claim for lack of territorial competence or jurisdiction where the Defendant’s only connection to Saskatchewan was the accessibility of its government website in the province
Deeth Williams Wallhttp://www.dww.com/articles/saskatchewan-court-finds-accessibility-of-a-website-canada-insufficient-to-establish
The popular online retailer Amazon.com.ca Inc (Amazon) has agreed to pay a penalty of $1 million, and $100,000 towards the Competition Bureau’s costs, following an investigation into the price claims displayed on the retailer’s website.
Deeth Williams Wallhttp://www.dww.com/articles/amazon-to-pay-1-million-penalty-following-investigation-into-ordinary-price-claims
On January 4, 2017, the Canadian Federal Court (FC) issued the first decision in Canada on the validity and infringement of an information technology patent owned by a non-practising entity (Media Tube Corp v Bell Canada, 2017 FC 6). Media Tube Corp (Media Tube) owns Canadian Patent No.
Deeth Williams Wallhttp://www.dww.com/articles/canadian-court-issues-first-information-technology-patent-decision-brought-by
On February 21, 2017, Canada’s Competition Bureau will be bringing together start-ups, banks, and regulators in a workshop to examine the connections between competition, innovation and regulation in FinTech. The workshop will form the basis of the Competition Bureau’s forthcoming market study exploring the impact of FinTech on Businesses and Consumers in Canada, due in the fall of 2017.
Deeth Williams Wallhttp://www.dww.com/articles/competition-bureau-and-others-focus-on-future-of-fintech
On January 12, 2017, the Canadian Federal Court of Appeal (FCA) upheld the validity and the infringement of AstraZeneca’s omeprazole formulation patent by Apotex (Canadian Patent No. 1,292,693 or 693 Patent) in Apotex Inc v AstraZeneca Canada Inc, 2017 FCA 9.
Deeth Williams Wallhttp://www.dww.com/articles/federal-court-of-appeal-affirms-astrazeneca%E2%80%99s-omeprazole-formulation-patent-valid-and
In January 2017, MOPOP Sections 17.07 and 17.08 relating to Biotechnology and Medicinal Inventions were revised by the Canadian Intellectual Property Office (CIPO). A comprehensive list of the changes is available here.
Deeth Williams Wallhttp://www.dww.com/articles/cipo-revises-ch-17-of-mopop-releases-six-industrial-design-practice-notices
In December 2016, the International Organization for Standardization (ISO) and the International Electrotechnical Commission (IEC) updated information technology standard 27004, which is intended to assist organizations in the evaluation of information security performance and the effectiveness of information security management systems (ISO/IEC 27004:2016). ISO/IEC 27004:2016 replaces ISO/IEC 27004:2009, and includes updates to bring the standard into alignment with the current version of ISO/IEC 27001 (
Deeth Williams Wallhttp://www.dww.com/articles/updates-to-isoiec-27004-measuring-information-security-effectiveness
Thank you for your readership over the last year and welcome to what is sure to be an exciting 2017! In this year’s first issue of the E-TIPS® Newsletter, we will recap our most noteworthy reports from 2016 covering developments in IP and IT law, under the following categories: (1) “Supreme Court of Canada Matters”, (2) “Patents”, (3) “Trademarks/Copyright”, (4) “Pharmaceutical Matters”, (5) “IT/Privacy”, (6) “Legislative, Treaty and Policy Developments” and (7) “Foreign Developments”.
Deeth Williams Wallhttp://www.dww.com/articles/etips%C2%AE-newsletters-2016-year-review