1. On Sufficient Description, Norman Siebrasse has (I think) completed his insightful multipart series on Nova v. Dow, the Canadian Supreme Court decision addressing the noninfringing alternative concept in the context of an accounting of the infringer’s profit. The installments are available here, here, here, here, here, here, here, here, here, and here. He also published a post last week titled What Is the Evidentiary Threshold for Denying a Permanent Injunction on Public Interest Grounds?, discussing the Federal Court’s recent decision denying AbbVie an injunction against JAMP’s marketing of a generic version of a patented drug (previously noted here). And, while I’m at it, I may as well noted a post he published in November that I overlooked at the time, titled The UK Approach to Electing an Accounting, in which he takes issue with a strand of U.K. case law that allows the patentee to opt for an accounting of profits if the quantum will be higher than an award of actual damages. As Professor Siebrasse argues, awarding a supracompensatory remedy should be permitted only if there is some rational policy reason for doing so, e.g., the need to deter a type of infringement that otherwise might go undetected. And yet another post I overlooked at the time is this one from September, titled What Causation Concept Is to Be Used in Allocating Fixed Costs?, which uses both Nova v. Dow and a recent Federal Court of Appeal case (GreenBlue Urban North America Inc. v. DeepRoot Green Infrastructure, LLC, 2023 FCA 184), to illustrate the difficulties in determining the appropriate way to deduct fixed costs, if such a deduction is required, when trying to calculate the infringer’s profit.
2. On the Kluwer Patent Blog, Chloe Dickson published a post titled Philip Morris v Nicoventures—e-cigarettes light up the doctrine of equivalents and Arrow declarations. An Arrow declaration is a type of discretionary remedy, whereby the claimant seeks a declaration that a product the claimant has launched or is planning to launch lacks or would have lacked novelty or inventive step as of a particular date (and therefore, by implication, cannot infringe the opposing party’s pending patent(s)). In the decision at issue, Justice Hacon sets out the following principles that are relevant for granting such a declaration:
(1) The court has a broad and flexible discretion to grant Arrow declaratory relief, Mexichem at [13].
(2) The circumstances in which an Arrow declaration will be justified are likely to be uncommon, Fujifilm at [95].
(3) The discretion should be exercised only where the declaration will serve a useful purpose, which requires critical examination by the court, Glaxo at [25]; Mexichem at [13].
(4) The requirement of a useful purpose will not be fulfilled solely because the respondent has pending patent applications and the applicant would like to know whether it will infringe any patents which may be granted pursuant to those applications, Fujifilm at [93] and [94(iv)) and (v)]; Glaxo at [25].
(5) The usual course envisaged by the statute is that the applicant should wait and see what, if any, patents are granted and where necessary use the remedy of revocation, Fujifilm at [93].
(6) Where it appears that the statutory remedy of revocation is being frustrated by shielding the subject-matter from scrutiny by the national court, this may be a reason for the court to intervene with a declaration, Fujifilm at [93].
(7) The court must guard against the application being used as a disguised attack on the validity of a granted patent, Fujifilm at [81]-[82] and [98(ii)].
(8) A declaration may be sought in relation to one or more features of a product or process, as opposed to a product or process in its entirety, Mexichem at [18]-[20].
(9) Where a declaration is sought in respect of only one feature or some features of a product or process, the level of generality of the proposed declaration may be relevant to whether it serves a useful purpose, Mexichem at [18].
(10) The court may take into account the possibility that a declaration is likely to be useful solely in arguments on obviousness in which it is deployed in an illegitimate step-by-step analysis of obviousness, although it may be difficult to know that this is likely to arise, Mexichem [22]-[25].
(11) The features in respect of which the declaration is sought must be defined with sufficient clarity, Glaxo at [30].
(12) Equally, the useful purpose said to justify the declaration must be clearly identified, Mexichem at [13]. . . .
(13) Subject always to the qualifications referred to in (7), (11) and (12) above, an Arrow declaration is likely to serve a useful purpose if the applicant can show that (a) the respondent's portfolio of patent applications and/or patents creates real doubt, likely to continue for a significant period, as to whether technical subject-matter which the applicant wishes to exploit can lawfully be used, (b) the applicant's reasonable intention to exploit that subject-matter would be of significant commercial advantage to it and (c) the declaration sought would, if granted, eliminate or significantly reduce the delay.
In this context "significant" means cumulatively sufficient to warrant the intervention of the court.
(14) The court will more readily find that there is a useful purpose where the respondent's behaviour has been consistent with an intent to prolong the doubt (paras. 190, 198).
On the facts, the court declines to exercise its discretion to grant the declaration.
3. Of relevance to remedies but also broader issues of subject matter jurisdiction and procedure is an article by Ruixue Ran, Thomas Garten, and Justin Wang on Law360, titled A Comparison of Patent Dispute Resolution in US and China.
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