The US Patent and Trademark Office (USPTO) recently issued US patent No. 9704143 to Goldman Sachs for “Cryptographic currency for securities settlement.” Goldman Sachs and other financial institutions are considering how cryptocurrency technologies can be used to execute exchanges in finance systems. In one example provided in the patent, the cryptocurrency, SETLcoins, are “exchangeable for, e.g., other SETLcoins and/or other cryptographic currencies (e.g. peercoins). For example, a single IBM-S SETLcoin may be exchangeable for one or more “GOOG” SETLcoins (i.e., Google shares), for 13,000 USD SETLcoins, 100 litecoins, and/or for 5 bitcoins.” The issuance of the Goldman Sachs patent for a cryptocurrency may herald increased adoption of cryptocurrency technologies among large financial institutions and global trading systems.  However, existing cryptocurrencies, such as bitcoin and ethereum, have received considerable attention from the media, but are experiencing a current slump in market value.

More information can be found here.

The Federal Court of Canada has issued a Supplemental Judgement and Reasons (2017 FC 637) to decide outstanding issues concerning damages to be paid to Dow Chemical Company by Nova Chemicals Corporation in respect of earlier patent infringement proceedings. Nova was ordered to pay Dow $644 million in damages in this most recent decision clarifying how the damages for patent infringement were to be calculated.

Earlier Decision

In September 2016, the Federal Court of Appeal upheld a Federal Court decision that Dow’s patent for polyethylene copolymers for use in packaging applications was valid and infringed by Nova’s SURPASS products (2016 FCA 216). Dow elected for an accounting of Nova’s profits as the remedy for the infringement. Leave to appeal to the Supreme Court of Canada on the original infringement decision was dismissed.

Quantification of Damages

A reference judgement issued in April 2017 held that Nova was liable to account for revenues from sales as well as profits arising from its ‘springboard’ into the market as a result of the infringement (2017 FC 350). The parties were then directed to resolve the damages and profits payable by Nova.

The parties were unable to fully resolve the sum that was payable, and the current supplemental judgement addresses the three outstanding technical issues the parties could not resolve. Dow was successful on the issues of capital cost deductions and the allocation of fixed costs, but was not successful on the topic of the timing of currency conversions.  The quantum of damages to be paid by Nova is extremely high for Canadian patent litigation.

The Supreme Court of Canada today released its unanimous decision in AstraZeneca Canada Inc. v. Apotex Inc. (esomeprazole), 2017 SCC 36. The decision clearly and soundly rejects the “promise doctrine” that has developed in the jurisprudence of the Federal Courts of Canada since approximately 2005.

The promise doctrine has its roots in English law, dating back to the time when the grant of patents was an exercise of Royal prerogative. At that time, the courts did not want to second guess whether the Crown would have granted the monopoly of the patent had some utility promised by the patentee not been met. However, as Professor Norman Siebrasse has argued in his article “The False Doctrine of False Promise” (2013), 29 C.I.P.R. 3, which was quoted from by the Court, this doctrine would appear to be inapplicable in our current legislative regime in which the grant of a patent is not a discretionary act as long as the statutory requirements are met. Indeed, the doctrine has been overruled by statute in the United Kingdom. However, the doctrine has been heavily utilized by the Canadian Federal Courts over the preceding decade to invalidate a number of highly valuable pharmaceutical patents in a series of controversial decisions (see, for example, our earlier article here).

This decision from Canada’s highest court is favourable for patentees and those seeking patent protection in Canada, as it brings clarity to our law and helps to ensure that the validity of Canadian patents will be measured against a standard that is consistent with that applied in other countries.

The Supreme Court of Canada released their decision today in Google Inc. v. Equustek Solutions Inc. The case was an appeal from a BC court order that required Google to de-index all websites operated by a third party, Datalink Technology Gateways Inc. and Datalink Technologies Gateways LLC and a personal defendant (collectively referred to as “Datalink”), from any Google search result worldwide. Datalink had been accused by Equustek of infringing their intellectual property, but never defended the claim in court.

The case was closely watched and included a long list of interveners from both inside and outside Canada. Many are already criticizing the decision for overreaching, while some rights holders are applauding it. Read the full decision here.

The National Hockey League (NHL) completed its expansion draft last week to set the roster for the its new team, the Vegas Golden Knights. The team has opened its official store “The Armory” at the T-Mobile Arena in Las Vegas and launched merchandise sales on the NHL Shop website. Yet, the Golden Knights team still does not officially have a trademark registration for its name.

Last December, the United States Patent and Trademark Office (USPTO) issued an office action against the team’s application for the word mark VEGAS GOLDEN KNIGHTS. The Examiner rejected the application on the basis that registration of the mark would introduce a likelihood of confusion with existing trademark GOLDEN KNIGHTS THE COLLEGE OF SAINT ROSE. The team filed a 41-page response to the office action on 6 June 2017, arguing that there would be no likelihood of confusion since sports fans (and the general public) have long been accustomed to distinguishing between teams using the same or similar nicknames. For example, the NHL’s Florida Panthers and the National Football League’s Carolina Panthers are both known as the “Panthers”.

The trademark application for the distinctive “V” embedded in the Vegas Golden Knight’s helmet has been allowed by the USPTO. This means that the new NHL team will have the protection of a registered trademark for their logo, regardless of the outcome of their application to register the VEGAS GOLDEN KNIGHTS word marks. Read more here.

The Supreme Court of Canada has released its decision in Douez v. Facebook, Inc., 2017 SCC 33.  The Court held by a 4-3 majority that Deborah Douez can pursue her proposed class action lawsuit against Facebook in the British Columbia courts, notwithstanding that Facebook’s terms of use require any litigation against it be brought in the state of California.

Ms. Douez alleges that Facebook contravened the British Columbia Privacy Act by using her name and profile picture to advertise companies and products without her consent.  The proposed class action is estimated to include 1.8 million British Columbia residents.

On Monday, the United States Supreme Court affirmed the judgment of the Federal Circuit and ruled that the disparagement clause, i.e. section 2(b) of the Lanham Act, violates the Free Speech Clause of the First Amendment of the US Constitution. The trademark case, Matal v Tam,  stems from an Asian-American rock group’s efforts to register its name, “The Slants”, as a trademark in the US for “entertainment, namely, live performances by a musical band.” The US Patent and Trademark Office (“USPTO”) denied the application  under the disparagement clause prohibiting the registration of trademarks that may “disparage … or bring … into contemp[t] or disrepute” any “persons, living or dead.”

In an unanimous decision, the Court held that the disparagement clause violates the First Amendment. The First Amendment protects speech expressing offensive ideas. Quoting from Justice Oliver Wendell Holmes Jr., the Court stated at page 25:

Speech that demeans on the basis of race, ethnicity, gender, religion, age, disability, or any other similar ground is hateful; but the proudest boast of our free speech jurisprudence is that we protect the freedom to express “the thought that we hate.”

Further, the Court held that the disparagement clause was far too broad to only restrict  trademarks that support invidious discrimination.

This decision raises interesting questions for owners of Canadian trademark rights. For a Canadian perspective on offensive trademarks, read Stephanie Melnychuk’s article here.

The World Intellectual Property Organization (WIPO) released the 10^th edition of its annual Global Innovation Index 2017 yesterday.  The 2017 edition is dedicated to the theme of innovation in agriculture and food systems and uses over 80 indicators to explore the innovation performance for countries around the world, including political environment, education, infrastructure, and business sophistication.  Switzerland, Sweden, the Netherlands, the USA, and the UK rank in the world’s top-five most innovative countries.  Canada ranks 18^th, down from 15^th in 2016.  The Global Innovation Index 2016 can be found here.

The Canadian Intellectual Property Office (CIPO) has recently announced the dates for when public consultations on the proposed regulatory amendments to the Industrial Design Regulations, the Trade-marks Regulations and the Patent Rules will occur. Brief descriptions of each of the proposed regulatory amendments are available here. More details on the consultations will be available on the CIPO’s website on June 19, 2017. For the time being, the public consultations dates can be found here.

The Supreme Court of the United States has issued a decision in the case of Impression Products, Inc. v. Lexmark International, Inc.  At issue was whether or not Impression Products could acquire empty Lexmark cartridges from purchasers in the U.S. and overseas, refill them, and resell them in the U.S. The Court held that Lexmark exhausted its patent rights in toner cartridges sold in the United States through its “Return Program”, even though contractual restrictions prevented the purchasers of those toner cartridges from transferring them to anyone other than Lexmark.  The Court further held that Lexmark cannot sue Impression Products for patent infringement with respect to cartridges Lexmark sold abroad, which Impression Products acquired from purchasers and imported into the United States. A full copy of the decision can be accessed here.