2021 Year In Review: IP Litigation

• Published date: 02 March 2022
• Subject Matter: Intellectual Property, Litigation, Mediation & Arbitration, Copyright, Patent, Trials & Appeals & Compensation
• Law Firm: Bereskin & Parr LLP
• Author: Mr Adam Bobker, Andrew McIntosh, Martin Brandsma and Nyrie Israelian

Despite the continued pandemic making 2021 a year of ongoing challenges, Canadian courts continued to issue significant decisions concerning Intellectual Property litigation. The year saw perhaps the beginning of the end of claims under the 400-year-old English Statute of Monopolies, the Federal Court of Appeal providing guidance on when patent infringement actions can be heard by way of summary trial, and also Canada's first website-blocking order upheld on appeal. Keep reading for our Top 10 developments in IP litigation from 2021.

1. Pleadings (Allegations not in NOA)

While the significant amendments to Canada's Patented Medicines (Notice of Compliance) Regulations ("PM(NOC) Regulations") have been in place now since September 17, 2017, procedural questions implicating the amendments continue to be addressed. In Sunovion Pharmaceuticals Canada Inc. v. Taro Pharmaceuticals Inc., 2021 FC 37, the Federal Court allowed amendments to a Statement of Defence in a PM(NOC) action that went beyond the grounds of invalidity set out in the Defendant's Notice of Allegation ("NOA"). The decision was later affirmed on appeal (Sunovion Pharmaceuticals Canada Inc. v. Taro Pharmaceuticals Inc., 2021 FCA 113). This represents a significant shift from the practice under the previous PM(NOC) regime in place until 2017, under which the second person was more strictly limited to the allegations contained in its NOA. See our article from January 18, 2021, for more information.

2. Causes of Action

2021 brought a decision on the applicability of historical legislation regarding monopolies to current patent law disputes. In Apotex Inc. v. Eli Lilly Canada Inc., 2021 ONSC 1588, the Court confirmed on a summary judgment motion that the 1624 English Statute of Monopolies, along with a similar Ontario Statute of Monopolies and the common law, are not applicable in the determination of damages sought by generic companies that were kept off the market by patents that were later held invalid under Canada's patented drug regime. In practice, the decision limits a generic company's recoverable damages caused by operation of Canada's PM(NOC) Regulations to those pursuant to s. 8 of the PM(NOC) Regulations. While further comment on the issue is anticipated from appellate courts, the decision provides clarity to an issue left unresolved in multiple actions before Canada's courts for a decade. See our article from March 24, 2021 for further details about the decision.

2021 also saw the advancement of a rather novel cause of action of inducement of copyright infringement. In Bell Canada v. L3d Distributing Inc. (INL3D), 2021 FC 832, the Federal Court awarded over $29M in statutory damages for a claim of copyright infringement brought by a group of media broadcasters against sellers of pre-programmed set-top boxes for streaming alleged pirated content. While the Court found the Defendants had infringed the Plaintiffs' statutory rights under the Copyright Act, it also found as a separate cause of action that the Defendants knowingly induced copyright infringement. The finding is notable given the paucity of Canadian authority relating to inducing copyright infringement, and what may be the...