Procure and Enforce—Canada's Highest Court Hands IP Owners Two Wins in Three Days

Written By Dominique T. Hussey, L.E. Trent Horne and Jeilah Y. Chan

The Supreme Court of Canada has issued two IP decisions in the span of three days—both of which spell victory for IP rights-holders. One case confirms the availability of a novel form of worldwide injunction where a non-party was obliged to block access to websites operated by a defendant. This provides rights-holders with an effective enforcement tool where infringement is facilitated via the borderless Internet. The other case abolishes the "promise doctrine" that has been the basis of several successful patent challenges in Canada: a patent can no longer be held invalid because it failed to live up to statements of an invention's promise made in the patent specification. The consequences for IP rights-holders: stronger patents and long-arm injunctions in appropriate circumstances.

Case

• Google Inc. v. Equustek Solutions Inc., 2017 SCC 34
• AstraZeneca Canada Inc. v. Apotex Inc., 2017 SCC 36

IP Type

Patents, Trademarks, Trade Secrets, Copyright

Summary

In the first case, Google v. Equustek, the Supreme Court upheld an injunction with worldwide effect. Datalink allegedly sold counterfeit products online that infringed the trademark and trade secret rights of the plaintiff, Equustek. Orders enjoining Datalink's online sales proved futile as Datalink ignored them. Equustek subsequently obtained an order requiring Google, a non-party, to de-index websites that facilitated the sale of Datalink's products, pending trial. The motions judge found that Datalink's ability to sell its counterfeit product was largely "contingent on customers being able to locate its websites through the use of Google's search engine". Google unsuccessfully appealed the injunction to the appellate court and to the Supreme Court. The Supreme Court concluded that Google was the "determinative player in allowing the harm to occur" and the "interlocutory injunction is the only effective way to mitigate the harm to Equustek pending the resolution of the underlying litigation". The resultant injunction had global reach because the "Internet has no borders—its natural habitat is global. The only way to ensure that the interlocutory injunction attained its objective was to have it apply where Google operates—globally". For more information, watch for a detailed analysis of Google v. Equustek that Trent Horne and Andrew Little will soon publish.

In the second case, AstraZeneca v. Apotex, the Court extinguished what has become known as the "promise doctrine", under which a patent was held invalid if the invention did not fulfil explicit promises made in the patent as to the utility of the claimed invention. Previously, to establish whether a claimed invention met the statutory utility requirement, the Court determined whether the patent specification promised a specific result.  If not, no particular level of utility was required. But in the event of a specific promise in the specification, the validity of a patent claim turned on whether the promised utility was or could be realized. The Court determined that this assessment ran counter to the Patent Act and the Supreme Court's direction on how to construe patents. Now, to determine whether a patent meets the utility prescribed by statute, "a scintilla of utility will do", and "a patentee is not required to disclose the utility of the invention". The impact (if any) that this latter statement will have in the assessment of the disclosure requirement when utility is established by sound prediction will be the subject of debate. Nevertheless, the Supreme Court has now deemed the promise doctrine "unsound", "incongruent with both the words and the scheme of the Patent Act", and simply "not good law". Patents—and pharmaceutical patents in particular—will now face diminished scrutiny and are far more likely to survive invalidity challenges on the basis of utility.

For further information on how to protect and enforce your intellectual property rights, contact Dominique Hussey, Jeilah Chan, or another member of the Intellectual Property Litigation team.

Equip is our platform for curated, key intellectual property cases.  Delivered weekly, Equip distills the current substantive and procedural issues in Canadian IP litigation, equipping you with the key points for your business.

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