Lexpert magazine features articles and columns on developments in legal practice management, deals and lawsuits of interest in Canada, the law and business issues of interest to legal professionals and businesses that purchase legal services.
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50 LEXPERT MAGAZINE | JANUARY 2013 TOP 10 CASES 2012 business methods as potential patentable subject matter. e Court of Appeal also rejected CIPO's stance that patentable sub- ject matter had to be scientific or technolog- ical in nature, and agreed with the Federal Court's view that what was "technological" was subjective and unpredictable and could not of itself be a bar to excluding certain inventions as patentable subject matter. 5 Fulawka v. Bank of Nova Scotia; Fresco v. Canadian Imperial Bank of Commerce; McCracken v. Canada National Railway Company ese three overtime class actions, two involving banks and one involving a rail- road, have been closely watched by the busi- ness community — and for good reason. "ere is significant risk out there because many employers are not in full compliance with provincial labour standards," says Jeff Goodman in Heenan Blaikie LLP's Toronto office. ere are two main genres of overtime cases. e first are "off the clock" cases where the defendants don't really dispute the eligibility for overtime, but offer vari- ous defences, such as the fact that no claims were made. Plaintiffs, meanwhile, argue in part that there was systemic pressure against them not to make claims. e actions against CIBC and BNS fall in this category, and the Ontario Court of Appeal's approval of their certification at first blush suggests that voluntary settle- ment and a lot of litigation involving this type of case will follow. Certification aside, however, the deci- sions throw up a considerable roadblock to the class's success at trial. "What's most critical is the court's ruling that the class could not resort to the aggregate-damages provision as a way of calculating an award at trial, and what that means is that individ- ual plaintiffs will now have to be involved in some way to prove damages," Goodman says. "at may prove a disincentive to many claimants in these types of cases." "e Court specifically rejected CIPO's requirement that patentable subject matter must have a technological component," says Michael Ladanyi, an associate in Heenan Blaikie LLP's Toronto office. "Unfortu- nately, the decision le some uncertainty as to how business-method patents would be handled both by CIPO and the courts going forward." Which is not to say that Amazon has le the law entirely unclear. Both the Federal Court and the Federal Court of Appeal saw the PAB's ruling that a "traditional business method patent exclusion" existed in Canada as a radical departure from the country's patent regime. In the Federal Court's view, there was not and there had never been any categorical prohibition of such patents. Rather, the test for what was patentable had been enunci- ated by the Supreme Court of Canada's 1982 decision in Shell Oil Co. of Canada v. Commissioner of Patents, in which the high court stated that a patentable "art" was not limited to "new processes or prod- ucts or manufacturing techniques" but also embraced "new and innovative methods of applying skill or knowledge provided they produced effects or results commercially useful to the public." Shell had set out three conditions that an invention must meet in order to be patent- able: it had to be a method of practical appli- cation that was more than an abstract idea; it had to be a new and inventive method of applying skill and knowledge; and it had to have a commercially useful result. As the Federal Court saw it, Canadian patent legislation should be construed "in ways that recognize changes in technology such as the move from the industrial age to the electronic one of today." is meant that BMPs were patentable if directed to subject matter that met the general test of what constituted an "invention" under s. 2 of the Patent Act. Finally, it was not necessary to transform something material into another form to meet the subject matter requirement in the Act. It was irrelevant, then, that the goods ordered by the "one-click" method did not themselves undergo some physical change. e Court of Appeal substantially affirmed the Federal Court's reasoning regarding patentable subject matter, ruling that no legal rationale existed for excluding For its part, McCracken is an example of the misclassification category of over- time class actions. is type of case gener- ally involves allegations that an employer has improperly classified overtime-eligible employees as managers, making them ineli- gible for overtime. "Pronouncements in the lower courts led to a general belief that mis- classification cases were more likely to be certified than off-the-clock cases," Good- man says. But the Court of Appeal denied certi- fication in McCracken, ruling that such cases should only be certified when the class members – regardless of their titles – actually performed similar jobs, thereby providing the necessary commonality. "e decision fundamentally changes the viabil- ity of misclassification cases," Goodman says. "And the primary lesson learned is that such cases will have to be category-specific and involve much more streamlined and smaller classes." At press time, only Fulawka was the sub- ject of an application for leave to appeal to the SCC. 6 Richard v. Time Inc. is misleading advertising case finds its origins in Quebec's Consumer Protection Act. But the key issue turned on the scope of the "general impression" test for deter- mining whether advertising is misleading. is test is one applied by many provincial consumer-protection statutes as well as the federal Competition Act. "e principles enunciated by the court will resound for years in courts around the country," says Hubert Sibre in Davis LLP's Montreal office, who with colleagues Annie Claude Beauchemin and Jean-Yves Fortin represented the complainant Jean- Marc Richard. Unfortunately for the business commu- nity, the court enunciated a relatively low threshold by ruling that the general impres- sion created had to be considered from the perspective of the "ordinary hurried pur-