Federal Court Awards $1 Million in Punitive Damages in Patent Case Federal Court Awards $1 Million in Punitive Damages in Patent Case

Patent Litigation
March 23, 2017March 23, 20172017-03-23
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 Wall https://www.dww.com/articles/federal-court-awards-1-million-punitive-damages-patent-case-0

Inadequate Disclosure Stops Snowmobile Patent In Its Tracks: Bombardier Recreational Products Inc v Arctic Cat Inc Inadequate Disclosure Stops Snowmobile Patent In Its Tracks: Bombardier Recreational Products Inc v Arct...

Patent Litigation
March 23, 2017March 23, 20172017-03-23
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 Wall https://www.dww.com/articles/inadequate-disclosure-stops-snowmobile-patent-its-tracks-bombardier-recreational-products

Game Over: the Federal Court of Canada Puts an End to Video Game Hacking in Novel Case Considering Circumventions of TPMs Game Over: the Federal Court of Canada Puts an End to Video Game Hacking in Novel Case Considering Circum...

Trademark and Copyright Litigation
March 8, 2017March 8, 20172017-03-08
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 Wall https://www.dww.com/articles/game-over-federal-court-of-canada-puts-an-end-to-video-game-hacking-novel-case-0

Interlocutory Injunction in Canada’s Trademark Infringement Cases – Success is in the Details Interlocutory Injunction in Canada’s Trademark Infringement Cases – Success is in the Details

Trademark
March 8, 2017March 8, 20172017-03-08
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 Wall https://www.dww.com/articles/interlocutory-injunction-canada%E2%80%99s-trademark-infringement-cases-%E2%80%93-success-details-0

The Federal Court of Canada Refuses Bayer’s Request to Change Priority Date of its Patent Application The Federal Court of Canada Refuses Bayer’s Request to Change Priority Date of its Patent Application

Patent Litigation
March 8, 2017March 8, 20172017-03-08
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 Wall https://www.dww.com/articles/federal-court-of-canada-refuses-bayer%E2%80%99s-request-to-change-priority-date-of-its-patent-0

Federal Court of Appeal Upholds $250,000 Punitive and Exemplary Damage Award in Trademark Case Federal Court of Appeal Upholds $250,000 Punitive and Exemplary Damage Award in Trademark Case

Trademark
March 8, 2017March 8, 20172017-04-13
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 Wall https://www.dww.com/articles/federal-court-of-appeal-upholds-250000-punitive-and-exemplary-damage-award-trademark-0

US Supreme Court: Not Patent Infringement to Supply Single Component for Manufacture Overseas In Multicomponent Patented Invention US Supreme Court: Not Patent Infringement to Supply Single Component for Manufacture Overseas In Multico...

Patent
March 8, 2017March 8, 20172017-03-08
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 Wall https://www.dww.com/articles/us-supreme-court-not-patent-infringement-to-supply-single-component-for-manufacture-0

Bloatware Beware: Lenovo Cannot “Uninstall” Class Action with Motion to Strike Bloatware Beware: Lenovo Cannot “Uninstall” Class Action with Motion to Strike

Technology Contracting
March 8, 2017March 8, 20172017-03-08
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 Wall https://www.dww.com/articles/bloatware-beware-lenovo-cannot-%E2%80%9Cuninstall%E2%80%9D-class-action-motion-to-strike-0

Federal Court of Appeal Remits Issue of Non-Infringing Alternative Federal Court of Appeal Remits Issue of Non-Infringing Alternative

Pharmaceutical Patent Litigation
February 22, 2017February 22, 20172017-02-23
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 Wall https://www.dww.com/articles/federal-court-of-appeal-remits-issue-of-noninfringing-alternative

Ontario Court Considers Limitation of Liability Clause in IT Contract Dispute Ontario Court Considers Limitation of Liability Clause in IT Contract Dispute

Technology Contracting
February 22, 2017February 22, 20172017-02-23
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 Wall https://www.dww.com/articles/ontario-court-considers-limitation-of-liability-clause-it-contract-dispute

US Courts Will Not Hear Further Arguments in Microsoft Case US Courts Will Not Hear Further Arguments in Microsoft Case

Cloud
February 22, 2017February 22, 20172017-02-23
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 Wall https://www.dww.com/articles/us-courts-will-not-hear-further-arguments-microsoft-case

Federal Court of Appeal Upholds $6.5 Million Cost Award for Patent Infringement Federal Court of Appeal Upholds $6.5 Million Cost Award for Patent Infringement

Patent Litigation
February 22, 2017February 22, 20172017-02-23
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 Wall https://www.dww.com/articles/federal-court-of-appeal-upholds-65-million-cost-award-for-patent-infringement

US Amended Rule 41 Now In Force US Amended Rule 41 Now In Force

Privacy
February 22, 2017February 22, 20172017-02-23
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 Wall https://www.dww.com/articles/us-amended-rule-41-now-force

BC Court of Appeal Finds Using Trademarks as Keywords in Internet Advertising Constitutes Passing Off BC Court of Appeal Finds Using Trademarks as Keywords in Internet Advertising Constitutes Passing Off

Trademark
February 8, 2017February 8, 20172017-02-08
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 Wall https://www.dww.com/articles/bc-court-of-appeal-finds-using-trademarks-as-keywords-internet-advertising-constitutes

Close Ties to China Too Speculative to Establish Interlocutory Mareva Injunction in Patent Infringement Action Close Ties to China Too Speculative to Establish Interlocutory Mareva Injunction in Patent Infringement A...

Patent Litigation
February 8, 2017February 8, 20172017-02-09
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 Wall https://www.dww.com/articles/close-ties-to-china-too-speculative-to-establish-interlocutory-mareva-injunction-patent

Federal Court of Appeal Upholds Decision Regarding Tariff of Access for Kindergarten to Grade 12 Educational Institutions Federal Court of Appeal Upholds Decision Regarding Tariff of Access for Kindergarten to Grade 12 Educatio...

Trademark and Copyright Litigation
February 8, 2017February 8, 20172017-02-08
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 Wall https://www.dww.com/articles/federal-court-of-appeal-upholds-decision-regarding-tariff-of-access-for-kindergarten-to

Reasonable Royalty Awarded for Pre-Grant Patent Infringement in Frac Shack Inc v AFD Petroleum Ltd Reasonable Royalty Awarded for Pre-Grant Patent Infringement in Frac Shack Inc v AFD Petroleum Ltd

Patent Litigation
February 8, 2017February 8, 20172017-02-08
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 Wall https://www.dww.com/articles/reasonable-royalty-awarded-for-pregrant-patent-infringement-frac-shack-inc-v-afd-petroleum

Federal Court Orders Removal of Canadian Court and Tribunal Decisions Containing Personal Information from Third Party Website Federal Court Orders Removal of Canadian Court and Tribunal Decisions Containing Personal Information fro...

Privacy
February 8, 2017February 8, 20172017-02-08
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 Wall https://www.dww.com/articles/federal-court-orders-removal-of-canadian-court-and-tribunal-decisions-containing-personal

US Executive Order Removes Privacy Protections for Foreigners (Including Canadians) US Executive Order Removes Privacy Protections for Foreigners (Including Canadians)

Privacy
February 8, 2017February 8, 20172017-02-08
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 Wall https://www.dww.com/articles/us-executive-order-removes-privacy-protections-for-foreigners-including-canadians

Saskatchewan Court Finds Accessibility of a Website in Canada Insufficient to Establish Territorial Jurisdiction Saskatchewan Court Finds Accessibility of a Website in Canada Insufficient to Establish Territorial Juris...

Information Technology
February 8, 2017February 8, 20172017-02-08
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 Wall https://www.dww.com/articles/saskatchewan-court-finds-accessibility-of-a-website-canada-insufficient-to-establish