Canadian Lawyer

50 S E P T E M B E R 2 0 1 7 w w w . C A N A D I A N L a w y e r m a g . c o m the largest patent infringement award in Canadian history when it awarded Dow Chemical Company $645 million from Nova Chemicals Corp., which was found to have infringed Dow's Canadian patent for polyethylene compositions used in packaging and heavy-duty wrap- ping. Justice Simon Fothergill ordered Nova to disgorge profits it made during the infringement. "Dow's an example of where the remedy here was the disgorgement of the infringing profits by Nova," says Garland, who led the team representing Dow before the Federal Court. "That's not a remedy, in my under- standing, that is generally available in other jurisdictions, such as the U.S." In Canada, a successful plaintiff, at a judge's discretion, can elect between recovering its own damages or recovering infrin- ging profits made by the defendant. "Under the right circumstances, that could make Canada an attractive juris- diction," he says. "I think [the decision is] simply going to highlight the point that Canada can be an attractive juris- diction in which to pursue one's patent rights, in terms of the kinds of remedies available." With the utility requirement clari- fied by the Supreme Court, Gowlings' Van Barr sees "obviousness" and how the "inventiveness" of an invention should be measured as a future battleground. For a patent to be valid in Canada, the inven- tion claimed must be new and inventive; if the claimed invention is not inventive, it is deemed to be "obvious" and, therefore, not patentable. "The law was straightforward for a long time in Canada," says Van Barr, "but it changed . . . with [the Supreme Court case Apotex Inc. v Sanofi-Synthelabo Can- ada Inc], which introduced a new test for obviousness, and "since that time the courts have been interpreting and reinter- preting what that test means." Noting April's Federal Court of Appeal in Bristol-Myers Squibb Canada Co. v. Teva Canada Limited, Van Barr says the "obvious to try" test, which can be used to extend obviousness and invalidate a patent, "is a battleground right now." The test "is applied in technologies subject to lots of experimentation," including in pharmaceutical cases, he says. In Bristol-Myers Squibb, the Federal Court of Appeal upheld a Federal Court decision in a case involving a patent for the drug Atazanavir, used to treat HIV and AIDS. In the earlier decision, Federal Court Justice Anne Mactav- ish found Teva's allegation that Bris- tol-Myers Squibb's patent was invalid for obviousness was justified, notably regarding the improved bioavailabil- ity of the bisulfate salts used in the drug. The Federal Court of Appeal — which found that the extent, nature and amount of effort to get Type-I atazanavir bisulfate demonstrated that its discovery was obvious — provided clarity and guidance on the meaning of "inventive concept" and the use of the "obvious to try" test in the obviousness analysis, Osler's White co-wrote in a blog post on the decision. "Obviousness has always been a battle- ground, but [litigation] will shift more toward to that," Van Barr predicts. T L E G A L R E P O RT \ I N T E L L E C T U A L P R O P E RT Y At DW 2 , we strive to be at the forefront of copyright, trade-mark, and patent law to protect your clients. That's why we are rated one of the Top IP Boutique Firms for 2016/2017 by Canadian Lawyer. DW 2 has got the blue ribbon. DWW.ca Intellectual Property & Technology Lawyers Patent & Trademark Agents Green comes with a blue ribbon. ntitled-1 1 2017-08-11 8:54 AM

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