The New Frontier For Global IP Litigation

2017 has been a banner year for IP litigation in Canada. A series of recent cases, from big trials to precedent-setting appeals before the Supreme Court, have garnered international attention from IP owners. With these decisions, changes in law, and improved court procedures for assisting litigants in getting to trial efficiently and in obtaining interlocutory remedies more quickly, Canada is proving to be an extremely attractive jurisdiction for the protection and enforcement of intellectual property rights.

Patents

In AstraZeneca v Apotex1, the Supreme Court of Canada abolished the controversial "promise of the patent" doctrine, under which patentees had to prove that the claimed invention was useful for any "promised" uses found in the specification. This judge-made doctrine had been invoked to invalidate numerous patents over the past decade, and even resulted in a trade dispute between Eli Lilly and Canada under NAFTA's investor-state arbitration regime2. For years, patentees have argued that the doctrine was arbitrary and inconsistent, often resulting in invalidation of patents that were upheld elsewhere. Finally, in June 2017, the Supreme Court unanimously abolished the doctrine, holding that patentees need only establish a "scintilla" of utility relating to the subject-matter of the invention. The decision was a victory for AstraZeneca (whose patent for its blockbuster gastrointestinal drug Nexium was declared valid), but also for patentees, as the Canadian standard of utility has now been brought closer to other jurisdictions in respect of applicable utility requirements for patentability.

AstraZeneca was successfully represented before the Supreme Court of Canada by Gunars A Gaikis, Yoon Kang and Lynn Ing.

Copyright

In the case of Nintendo v King3, the Federal Court of Canada had occasion to consider and apply the technological protection measure (TPM) circumvention provisions in the Copyright Act, which had yet to be substantively interpreted since the provisions were enacted in 2012. The Court held that the defendants' sale and installation of mod chips and game copier devices which circumvented Nintendo's TPMs - thereby enabling users to play unauthorized copies of video games - constituted circumvention acts which were prohibited under the Copyright Act. The Court awarded Nintendo C$12.8 million in statutory damages, calculated based on the number of works which were protected by the TPMs. The decision sets a strong precedent, particularly for the protection of distribution of copyrighted content over proprietary platforms.

Mark Biernacki and Kevin Siu acted as counsel on behalf of Nintendo of America Inc., the successful applicant.

Trademarks

In a recent high-profile case, Diageo v Heaven Hill4, Diageo was successful in...