Patent Remedies March 17, 2015 Donald M. Cameron

Relief Typically Sought Declaration as to – Validity – Infringement Injunction Damages, or Accounting of profits Delivery up or destruction Costs Interest

The Exclusive Right – Section Every patent granted under this Act shall contain the title or name of the invention, with a reference to the specification, and shall, subject to this Act, grant to the patentee and the patentee’s legal representatives for the term of the patent, from the granting of the patent, the exclusive right, privilege and liberty of making, constructing and using the invention and selling it to others to be used, subject to adjudication in respect thereof before any court of competent jurisdiction.

Injunction Interim, interlocutory and permanent – Equitable relief Interim injunction – short-term Interlocutory injunction – until trial Permanent injunction – post-trial, until expiry of patent rights

Interim and Interlocutory Injunctions Per SCC in RJR MacDonald v. Canada (1994), a 3 part test – Serious issue to be tried – Irreparable harm to party seeking relief if injunction is not granted – Balance of convenience / inconvenience favours the party seeking relief

Irreparable Harm Of the three parts, this is the crux A very high hurdle Evidence of irreparable harm must not be speculative – Must be proven Quantifiable effectively means not irreparable

Quia Timet Intended to prevent the irreparable harm from otherwise happening Imminent harm: a requirement? See Dableh v. Ontario Hydro, where the Court was persuaded that Dableh should not have to sit by and wait for the harm

Permanent Injunctions Not automatic Unilever v. Procter & Gamble – injunction not granted, but “generous but not confiscatory” royalty granted instead

Damages Successful plaintiff / patentee entitled to damages under section 55(1) – 55. (1) A person who infringes a patent is liable to the patentee and to all persons claiming under the patentee for all damage sustained by the patentee or by any such person, after the grant of the patent, by reason of the infringement. Person claiming under is typically a licensee Intended to place plaintiff in the same position as if there had not been the infringement – Lost sales – Lost royalties Plaintiff must prove damages suffered, and quantum

Damages Reasonable compensation – Pre-issuance “damages” – Section 55(2) 55. (2) A person is liable to pay reasonable compensation to a patentee and to all persons claiming under the patentee for any damage sustained by the patentee or by any of those persons by reason of any act on the part of that person, after the application for the patent became open to public inspection under section 10 and before the grant of the patent, that would have constituted an infringement of the patent if the patent had been granted on the day the application became open to public inspection under that section. Punitive damages – Rare, see Imperial Oil v. Lubrizol

Profits Equitable relief Election – damages, or an accounting of profits – not both – Election is itself equitable – see Merck v. Apotex (2006 FCA 323) Profits earned by infringer must be “causally connected” – Apportionment

Delivery Up / Destruction Ordinary award to get one or the other Modification so as to be non-infringing?

Delay A bar, or a factor in equitable relief? – Laches, acquiescence Permanent injunction – Unilever v. Procter & Gamble Profits – Merck v. Apotex

Interest & Costs Ordinary award to get interest and costs Pre- and post-judgment interest Costs increasingly fixed as opposed to be assessed as per tariff Settlement offers a costs factor?

Thank You