On March 2, 2017, the Federal Court of Canada issued public judgment and reasons for an award totaling $1.5 million comprised of $500,000 in compensatory damages and $1 million in punitive damages for the plaintiff in Airbus Helicopters SAS v Bell Helicopter Texteron Canada Limitée, 2017 FC 170. Pursuant to an October 2, 2009 order, the quantification of damages in the proceeding was bifurcated from the liability issues. Under the liability phase, Bell Helicopter was found to have infringed Canadian Patent No.
Deeth Williams Wallhttps://www.dww.com/articles/federal-court-awards-1-million-punitive-damages-patent-case-0
On February 24, 2017, in Bombardier Recreational Products Inc v Arctic Cat Inc, 2017 FC 207, the Federal Court found that no valid claims were infringed, and dismissed the infringement action against Arctic Cat Inc with costs. Three of the four patents at issue would have been infringed but were invalid.
Deeth Williams Wallhttps://www.dww.com/articles/inadequate-disclosure-stops-snowmobile-patent-its-tracks-bombardier-recreational-products
On March 1, 2017, the Federal Court of Canada (FC) awarded Nintendo $12.7 million in damages in Nintendo of America Inc v King et al, 2017 FC 246. This ruling marks the first occasion for the FC to consider the issue of circumvention of Technical Protection Measures (TPMs) under the Copyright Act.
Deeth Williams Wallhttps://www.dww.com/articles/game-over-federal-court-of-canada-puts-an-end-to-video-game-hacking-novel-case-0
Interlocutory injunctions are rarely granted in trademark infringement cases (counterfeit cases aside) in Canada. This is largely due to the difficulty of establishing irreparable harm, the second element of a three-part test for granting an interlocutory injunction. The three-part test requires that: (1) a serious issue has been raised; (2) irreparable harm will result if the injunction is not granted; and (3) the balance of convenience favours the requesting party. The courts have repeatedly held that the determination of irreparable harm is a factual assessment which must be establis
Deeth Williams Wallhttps://www.dww.com/articles/interlocutory-injunction-canada%E2%80%99s-trademark-infringement-cases-%E2%80%93-success-details-0
In Bayer Cropscience LP v. Canada (Attorney General), 2017 FC 178, the Federal Court (FC) agreed with the Commissioner of Patents (“Commissioner”) and dismissed Bayer Cropscience LP’s (Bayer) request to change the priority date for its Canadian Patent Application No 2,907,271 (the 271 Application) from April 19, 2012 to April 3, 2012.
Deeth Williams Wallhttps://www.dww.com/articles/federal-court-of-canada-refuses-bayer%E2%80%99s-request-to-change-priority-date-of-its-patent-0
On February 21, 2017, the Federal Court of Appeal (FCA) upheld awards for $250,000, $64,000, and $66,000, for punitive and exemplary damages, compensatory damages, and costs, respectively, in relation to a trademark infringement case regarding various counterfeit goods of the “CHANEL” fashion label (Lam v. Chanel S.
Deeth Williams Wallhttps://www.dww.com/articles/federal-court-of-appeal-upholds-250000-punitive-and-exemplary-damage-award-trademark-0
On February 22, 2017, in Life Technologies Corporation v Promega Corporation, the Supreme Court of the United States held that the supply of a single component in a multicomponent patented invention for manufacture overseas does not constitute patent infringement.
Deeth Williams Wallhttps://www.dww.com/articles/us-supreme-court-not-patent-infringement-to-supply-single-component-for-manufacture-0
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 Wallhttps://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 Wallhttps://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 Wallhttps://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 Wallhttps://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 Wallhttps://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 Wallhttps://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 Wallhttps://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 Wallhttps://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 Wallhttps://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 Wallhttps://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 Wallhttps://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 Wallhttps://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 Wallhttps://www.dww.com/articles/saskatchewan-court-finds-accessibility-of-a-website-canada-insufficient-to-establish