46 LEXPERT MAGAZINE
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JANUARY/FEBRUARY 2018
| TOP CASES |
trine was "excessively onerous" and con-
trary to the Patent Act as it required that
all uses expressed in the patent must be sat-
isfied in order to meet the utility require-
ment — this despite the fact that the Pat-
ent Act requires but a single use to make an
invention useful.
SCOTT MACKENDRICK
Bereskin & Parr LLP
"NUMEROUS PATENTEES HAVE
HAD THEIR PATENTS HELD INVALID
FOR LACKING UTILITY BECAUSE
THEY FAILED TO DEMONSTRATE
OR SOUNDLY PREDICT ALL
USES THAT WERE 'PROMISED'
IN THE DESCRIPTION
OF THEIR APPLICATION."
Accordingly, courts determining wheth-
er the statutory utility requirement was
met now have only to identify the subject-
matter of the invention as claimed in the
patent and then ask whether that subject
matter is useful, in the sense of being ca-
pable of a practical purpose.
06
Royal Bank of Canada v.
Trang, 2016 SCC 50
Canadian business has finally received
some guidance from the Supreme Court
of Canada about when they may disclose
an individual's "less sensitive" information
based on "implied consent."
Royal Bank of Canada v. Trang arose
when Scotiabank relied on the Personal
Information Protection and Electronic
Documents Act (PIPEDA) in refusing to
disclose the mortgage discharge statement
of Phat and Phuong Trang to the Royal
Bank. RBC needed the statement because
the sheriff had insisted on seeing it before
executing a judgment and selling a Trang
property on which Scotiabank had previ-
ously held a mortgage. e Ontario courts
strong public policy reasons to enforce the
forum selection clause in the company's
online contractual forum selection clause,
which limited litigation against the social
media giant to California courts.
e decision has widespread implica-
tions for the many businesses that rely
heavily on internet commerce, where fo-
rum selection clauses are common. "e
models that many such businesses put in
place are built on dispute-resolution provi-
sions that limit where proceedings can be
instituted," says Matthew Gottlieb of Lax
O'Sullivan Lisus Gottlieb LLP in Toron-
to, who appeared on behalf of the Infor-
mation Technology Association of Cana-
da, an intervener in the case. "To have the
enforceability of that clause opened up
creates serious concern and the prospect of
real instability."
05
AstraZeneca Canada v.
Apotex, 2017 SCC 36
is decision (see p. 28 for a "Big Suits"
summary submitted by the firms involved)
deals with a controversial issue in patent
law: whether the "promise of the patent"
doctrine has a place in analyzing the valid-
ity of patents. e SCC's answer was an
unequivocal "no." e promise doctrine,
the court stated "is not the correct method
of determining whether the utility require-
ment under s. 2 of the Patent Act is met,"
and concluded that "it is not good law."
Patentees, particularly pharmaceutical
companies, welcomed the decision. "Nu-
merous patentees have had their patents
held invalid for lacking utility because they
failed to demonstrate or soundly predict all
uses that were 'promised' in the description
of their application," says Scott MacKen-
drick, a Toronto lawyer in the Litigation
practice group of Bereskin & Parr LLP.
e case revolved around a product
with the brand name Nexium TM. e
trial judge found that AstraZeneca had
soundly predicted the product to be useful
as a proton pump inhibitor but invalidated
it for lack of utility on the "promise" that
the compounds of the invention "will give
an improved therapeutic profile such as a
lower degree of interindividual variation."
e SCC found that the promise doc-
upheld Scotiabank's refusal, citing the ab-
sence of express consent.
But PIPEDA provides an exception
to the express consent rule in the case of
"less sensitive" personal information. e
discharge statement, the high court ruled,
fell into that category. Accordingly, the
Trangs' consent should be implied, allow-
ing Scotiabank to turn the statement over
to Royal Bank of Canada.
"e court stated that the information
has to be assessed in context, and that in-
cludes the reasonable expectation of the in-
dividual when they gave the information,"
says David Elder in Stikeman Elliott LLP's
Ottawa office. "e upshot is that, while
sensitive information requires explicit
consent, it is not an absolute rule that even
financial or health information always re-
quires such consent."
07
Jean Coutu Group v.
Canada, 2016 SCC 55;
Canada v. Fairmont Hotels,
2016 SCC 56
With these decisions, the Supreme Court
of Canada made it much more difficult for
taxpayers who enter into agreements that
have unintended tax consequences to re-
write those agreements.
So long as the documentation properly
records the parties' agreement, the high
court ruled, the fact that the arrangement
did not achieve the intended tax-neutral
effect does not of itself allow taxpayers to
"rectify" the agreement so as to remedy un-
expected tax liabilities.
"Rectification is not equity's version of
the mulligan," wrote Justice David Brown
on behalf of a 7-2 majority.
In both the civil-law and common-law
systems, rectification was historically avail-
able where a written contract did not ac-
curately reflect specific terms to which the
parties had agreed. Of late, however, some
judges deciding Canadian tax cases have
been allowing parties to rectify where the
written document correctly reflected the
agreed terms but did not achieve the de-
sired tax result.
"In these cases, rectification was granted
because the agreement as recorded did not
carry out the parties' continuing intention
