The US Justice Department has petitioned for an en banc rehearing by the US Second Circuit Court of Appeals (the Court) after the Court concluded that US courts were not authorized under the Stored Communications Act to issue and enforce warrants against US-based internet service providers for the disclosure of customer email content stored on foreign servers that is within the control of US-based companies.
Deeth Williams Wallhttp://www.dww.com/articles/us-justice-department-petitions-for-en-banc-rehearing-of-microsoft-cloud-decision
Under the Patented Medicines (Notice of Compliance) Regulations (the Regulations), the Minister of Health (the Minister) determines whether a generic manufacturer’s drug submission makes either a direct or indirect comparison to a Canadian reference product (a brand product). If the Minister finds that it does reference a brand product, the generic manufacturer will be required to address the patents listed on the Patent Register for the brand product before it can receive a Notice of Compliance (NOC), which is a regulatory requirement for market entry.
Deeth Williams Wallhttp://www.dww.com/articles/minister%E2%80%99s-pmnoc-decision-to-be-reviewed-on-standard-of-reasonableness
The Ontario Superior Court (the Court) granted Teranet Inc’s (Teranet’s) motion for summary judgment in Keatley Surveying v Teranet (2016 ONSC 1717), deciding a long-standing dispute between land surveyors and Teranet, which manages Ontario’s electronic land registry system.
Deeth Williams Wallhttp://www.dww.com/articles/ontario-court-dismisses-land-surveyors%E2%80%99-class-action-copyright-proceeding-against-teranet
On November 1, 2016, in Amdocs (Israel) Limited v Openet Telecom, the US Court of Appeals for the Federal Circuit (the Court) reversed the US District Court for the Eastern District of Virginia’s decision and found that a patent claiming a computer program and method for solving an accounting and billing problem faced by network service providers is patent-eligible. The decision is the most recent application of the Supreme Court of the United States’
Deeth Williams Wallhttp://www.dww.com/articles/us-federal-circuit-debates-patent-eligibility-for-software-patents-amdocs-israel-limited-v
On November 9, 2016, the Canadian Intellectual Property Office (CIPO) published a practice notice entitled “Place of Origin – Paragraph 12(1)(b) of the Trade-marks Act” (the Notice). The Notice is intended to clarify the application of the provisions of Section 12(1)(b) of the Trade-marks Act with respect to trademarks that are clearl
Deeth Williams Wallhttp://www.dww.com/articles/cipo-publishes-place-of-origin-practice-notice
On November 8, 2016, the Supreme Court of Canada heard oral arguments and reserved its decision in AstraZeneca Canada Inc v Apotex Inc (SCC Case: 36654, esomeprazole – NEXIUM®, the Federal Court of Appeal decision previously reported in E-TIPS Newsletter here). Key issues raised at the hearing included whether a promised utility doctrine
Deeth Williams Wallhttp://www.dww.com/articles/supreme-court-of-canada-hears-astrazeneca%E2%80%99s-nexium-appeal-on-promised-utility-doctrine
On October 31, 2016, the day after Canada and the European Union (EU) officially signed the Comprehensive Economic and Trade Agreement (CETA), the Canadian government tabled Bill C-30 entitled “An Act to implement the Comprehensive Economic and Trade Agreement between Canada and the European Union and its Member States and to provide for certain other measures”, outlining measures implement CETA. Bill C-30 will impact trademark law and pharmaceutical pat
Deeth Williams Wallhttp://www.dww.com/articles/canada-introduces-bill-c30-to-implement-ceta-implications-for-ip-rights
In Cascade Corporation v Kinshofer GmbH, 2016 FC 1117 (October 6, 2016), Justice Southcott of the Federal Court dismissed a patent infringement action brought by Cascade Corporation against Kinshofer Gmbh and its subsidiary concerning Cascade’s Canadian Patent Number 2,587,065 and Kinshofer’s X-LOCK coupler.
Deeth Williams Wallhttp://www.dww.com/articles/canada%E2%80%99s-federal-court-dismisses-patent-infringement-action-a-summary-trial
On September 28, 2016, in AU New Haven, LLC and Trelleborg Coated Systems US, Inc v YKK Corporation, the Southern District Court of New York found that in specific circumstances, the owners of a patent have standing to sue licensees for patent infringement when those licensees refuse to provide consent to transfer the licence agreement to a new patent owner.
Deeth Williams Wallhttp://www.dww.com/articles/assignment-of-patent-not-prevented-by-nonassignability-of-exclusive-licence-to-patent
Last year, on December 15, 2015, five UK defendants received sentences, together totaling seventeen years, for conspiracy to defraud by copying, distributing or making available online infringing copies of such Hollywood films as Skyfall and Argo. Last week a Court dismissed the appeal brought by the two defendants with the longest sentences and upheld the more than four year sentences for each defendant stating that: “Whilst we accept that the sentences passed on these two young men were stiff, we are unpersuaded that they were manifestly excessive.”
Deeth Williams Wallhttp://www.dww.com/articles/movie-pirates-sentenced-for-more-than-four-years-lose-appeal-uk
On October 26, 2016, the CRTC released its first written decision under the Act commonly known as the Canadian Anti-Spam Legislation, or “CASL”. The decision involves nine messaging campaigns that took place between July 9 and September 18, 2014, in which Blackstone Learning Corp sent more than 385,000 unsolicited commercial electronic messages.
Deeth Williams Wallhttp://www.dww.com/articles/first-written-decision-of-crtc-on-canadian-antispam-legislation-reduces-monetary-penalty
In October, in the case of Cheryl Smith v Barnesandnoble.com, LLC, the Second Circuit Court of Appeals for the Southern District of New York (SDNY) was faced with a matter that nearly provided direction on copyright infringement where work is stored on cloud servers. However, the infringement issue was evaded when the Court determined that the conduct in question had been authorized.
Deeth Williams Wallhttp://www.dww.com/articles/us-court-of-appeals-considers-copyright-infringement-by-material-a-digital-locker
On October 19th, 2016, the Court of Justice of the European Union (CJEU) ruled in the case of Patrick Breyer v Bundesrepublik Deutschland. This case involved the German government’s collection of IP addresses from the users of some of its websites.
Deeth Williams Wallhttp://www.dww.com/articles/cjeu-rules-dynamic-ip-addresses-can-be-personal-information
In Arctic Cat Inc v Bombardier Recreational Products Inc, 2016 FC 1047 (September 16, 2016), Roy J of the Federal Court held that upon a proper claim construction, the asserted claims of Canadian Patent No 2,322,738 (the 738 Patent) owned by Arctic Cat Inc (Arctic Cat) were not infringed by Bombardier Recreational Products Inc (BRP).
Deeth Williams Wallhttp://www.dww.com/articles/federal-court-confirms-availability-of-gillette-defence-based-on-obviousness
Computer-implemented inventions continue to face challenges to patent protection in Canada as illustrated in two recent Patent Appeal Board (PAB) decisions discussed here.
1. PAB 1407 re Canadian Patent Application No. 2,798,566
Deeth Williams Wallhttp://www.dww.com/articles/canada%E2%80%99s-patent-appeal-board-rejects-software-inventions-as-nonstatutory-subject-matter
Once a patent is issued, corrections involving changes to the records of the Patent Office relating to inventorship and ownership must be made by way of an application at the Federal Court (FC) pursuant to section 52 of Canada’s Patent Act (the Act). In Qualcomm Incorporated v Canada (Commissioner of Patents), the FC held that the recordal of replacement documents is beyond the scope of section 52 (2016 FC 1092).
Deeth Williams Wallhttp://www.dww.com/articles/federal-court-refuses-to-record-replacement-documents-under-s52-of-patent-act
In Times Group Corporation v Time Development Group Inc (2016 FC 1075), the Federal Court (FC) granted the applicant, Times Group Corporation and Times Developments Inc (collectively, Times), declaratory and injunctive relief relating to the use of the trade name TIME DEVELOPMENT GROUP by its competitor, Time Development Group Inc and Time Development Inc (collectively, TDG). Both parties were property developers targeting the Chinese Canadian community.
Deeth Williams Wallhttp://www.dww.com/articles/federal-court-finds-use-of-times-by-competing-property-developers-confusing
In Bell Canada v Cogeco Cable Canada (2016 ONSC 6044), the Ontario Superior Court granted an interlocutory injunction against Cogeco Cable Canada GP Inc (Cogeco) for its use of the phrase “the best Internet experience in your neighbourhood” on advertisements for Cogeco’s cable services. Bell Canada alleged that the phrase constituted a false and misleading representation and was prohibited under the Competition Act and the Trade-marks Act.
Deeth Williams Wallhttp://www.dww.com/articles/ontario-superior-court-grants-interlocutory-injunction-against-use-of-phrase-%E2%80%9C-best
As previously reported by E-TIPS® Newsletter, the Office of the Privacy Commissioner of Canada (OPC) held a public consultation to review the current consent model under Canada’s Personal Information Protection and Electronics Documents Act (PIEPDA). The public consultation requested comments on four questions:
Deeth Williams Wallhttp://www.dww.com/articles/privacy-commissioner-of-canada-publishes-consent-model-submissions
The United States Patent and Trademark Office (USPTO) has proposed patent fee adjustments in a notice of proposed rulemaking published on September 30, 2016. Comments on the fee adjustments must be received on or before December 2, 2016.
The proposal includes:
Deeth Williams Wallhttp://www.dww.com/articles/uspto-proposes-new-fees-large-increases-for-patent-application-and-ptab-trial-fees