Firms To Watch: Intellectual property

Dentons is building its offering in intellectual property, led by Montréál-based Panagiota Dafniotis, leveraging the firm’s global network to advise on disputes and IP strategy.

Intellectual property in Canada

Belmore Neidrauer LLP

An IP boutique located in Toronto, Belmore Neidrauer LLP is equipped to support on the full-suite of IP matters, though is especially well-regarded for patent litigation within the pharmaceutical and biotechnology fields. Peter Wilcox, Stephanie Anderson and Stephanie Anderson jointly lead the practice and have each achieved high-profile victories in court for names including Janssen, Bayer and Pfizer.

Practice head(s):

Peter Wilcox; Marian Wolanski

Other key lawyers:

Stephanie Anderson

Key clients

Pfizer

Janssen (Johnson & Johnson)

Bayer

Elea Vertriebs und Vermarktungsgesellschaft mbH

Work highlights

  • Successfully represented Janssen in Janssen Inc. et al v. Teva Canada Limited, 2020 FC 593, a patent infringement action under the new PMNOC Regulations concerning Janssen’s important INVEGA SUSTENNA (paliperidone palmitate) once-monthly product used to treat schizophrenia.          
  • Successfully represented Pfizer in Seedlings Life Science Ventures, LLC v. Pfizer Canada ULC, 2020 FC 1, a patent infringement action. Seedlings alleged that Pfizer’s EpiPen infringed select claims of a Seedlings patent for epinephrine auto-injectors.
  • Acted in Janssen Inc. et al v. Pharmascience Inc, a case which relates to Pharmascience’s proposed paliperidone palmitate product, a proposed generic version of Janssen’s important product INVEGA SUSTENNA.  

Heer Law

A full-service IP boutique in Toronto, Heer Law handles patent, trademark, industrial design and copyright matters, both contentious and non-contentious, on behalf of a number of world-famous brands. The practice managers a number of global portfolios and is distinctly well-versed in computer-related patent matters such as AI, fintech and quantum computing. Firm founder Christopher Heer co-leads the team alongside Georgina Danzig.

Other key lawyers:

Larissa Leong; Ian Goodman

Key clients

The University of Toronto

SHIELD Crypto Systems Inc.

Answerable Inc.

Sanjel Energy Services Inc.

crossPORT Network Solutions Inc.

Crystal Clear Blades Inc.

CQB Education Inc.

Schleese Saddlery Service Ltd.

Regina Exhibition Association Limited

GCAT Group Inc.

Nudestix Inc.

Sully Innovations Inc.

2158003 Ontario Ltd. operating as AVision

Nyaradzo Jowa

Provincial Doors Inc.

Work highlights

  • Acting on behalf of The University of Toronto, the team drafts, files and prosecutes numerous worldwide patent families in the computer-related technology patent space. In the past few years, it has handled almost half of the computer-related patent applications for Canada’s largest university.
  • Commenced an Ontario Superior Court of Justice action on behalf of, 2158003 Ontario Ltd. operating as AVision against BLACKHAWK NETWORK (CANADA) LTD., BLACKHAWK NETWORK HOLDINGS, BLACKHAWK NETWORK, INC. and IDX CORPORATION. The client, a designer and manufacturer of retail gift card displays and other fixtures, alleges amongst other things, that the defendants engaged in trademark infringement, copyright infringement, theft of confidential information, trade secrets, and corporate opportunities.
  • Acted as co-counsel for the plaintiff in Louis Vuitton Malletier S.A. v. Zekria Wakilzada, 2017 ONSC 2409. This case involves assertions by the plaintiff (appellant) of a novel extension of the theory of vicarious liability to a landlord arising from its tenant’s sale of counterfeit merchandise.

Lenczner Slaght

A leading disputes boutique in Toronto, Lenczner Slaght is routinely involved in patent, copyright and trademark disputes before the Federal Court, the Federal Court of Appeal, the Ontario Superior Court and the Supreme Court of Canada. Sana Halwani leads the practice, catering to a broad client roster of pharmaceutical, IT, biotechnology, gas, software, media, generic drug and telecommunications companies; her team was recently bolstered by the December 2021 arrival of Jordana Sanft, a patent and trademark disputes expert with an in-depth knowledge of the life sciences and pharmaceutical industries, who arrived from Norton Rose Fulbright.

Practice head(s):

Sana Halwani

Other key lawyers:

Andrew Moeser; Cynthia Tape; Jordana Sanft; Jenene Roberts

Key clients

Xperi Corporation

Voith Group

Mylan Pharmaceuticals (d.b.a. Viatris)

The consortium in the Qualcomm class action

Authors Alliance

NEO Exchange Inc. and Aequitas Innovations Inc.

Stephen Bulger Gallery and Stephen Bulger

Del Ridge Homes

Sof Surfaces Inc

Gilead Sciences

Work highlights

  • Counsel to TiVo Solutions and its subsidiary Rovi Guides in five patent infringement actions, involving patents relating to interactive television program guides, DVR technology, and related technologies. Three actions went to trial in 2020 with closing arguments occurring in January 2021. Two additional actions were commenced in 2021 and are in the pleadings and discovery stages.
  • Counsel to Gilead Sciences Inc. and Gilead Sciences Canada Inc. (Gilead) in two actions in the Federal Court of Canada under the PM(NOC) Regulations. These actions relate to Gilead’s patents and inventions relating to tenofovir alafenimide hemifumarate (TAF Hemi).
  • Counsel to the interveners Authors Alliance and Ariel Katz in an appeal to the Supreme Court of Canada addressing the issue of fair dealing and the question of whether tariffs set by the Copyright Board are mandatory.

Gowling WLG

Gowling WLG fields a full-service IP offering, demonstrating first-rate capabilities in all facets of contentious and litigious trademark, patent and copyright affairs. In Toronto, Shelagh Carnegie undertakes global trademark portfolio management and enforcement work, often acting on behalf of internationally famous brands, meanwhile Laurent Massam boasts significant contentious abilities, acting on a wealth of patent, trademark, copyright and trade sector litigation from industries such as manufacturing, broadcasting, software and transport; the pair co-lead the national practice alongside Ottawa-based duo, John Harris, notably a patent agent in both Canada and the US, and Martha Savoy who brings over 20 years of prosecuting, litigation enforcing trademark rights to the table. Other standout names in the Capital include Michael Crichton, noted for his tenacity for electrical, computer hardware and software, manufacturing and communications-related disputes, as well as Christopher Van Barr who has undertaken trade secret, trademark and patent cases on behalf of names such as Google, Bayer and Canada’s National Research Council. Over in Vancouver, Nelson Godfrey garners acclaim for all forms of IP disputes and trademark prosecution, acting for leading players within the video game, alcoholic beverage, e-commerce, retail, internet and technology fields.

Practice head(s):

Shelagh Carnegie; John Harris; Laurent Massam; Martha Savoy

Other key lawyers:

Michael Crichton; Christopher Van Barr; Nelson Godfrey; Paula Clancy; Ronald Dimock; Matthew Estabrooks; Selena Kim; Brian Lee; Eric Macramalla; Laurent Massam; Anita Nador; John Norman; Marc Richard; Lynne Watt; Jay Zakaïb; Erin Creber; Alex Gloor; James Green; Frédéric Lussier; Charlotte McDonald; Natalie Rizkalla-Kamel; Jasleen Chahal; Adam Heckman; Nathan Piché

Testimonials

‘Gowlings manages all legal aspects of our organization, except for privacy and technology matters. Laurent Massam is business focused and effective in achieving results. He is mindful and very respectful. Laurent is very strategic and helps ensure our strategy protects our business, as well as, growing it. Laurent is effective and effective council for our organization. He is diligent and has a great sense of humour. I highly recommend him and his team.’

‘We use Gowling WLG for patent work. Gowling has a good network of domestic and international patent law associates, and the coordination is fairly seemless. The domestic (Canadian, Brian Lee) counsel is excellent with this coordination. Gowling is open to client requests, for example to split counsels or to label their communications with the customer’s local numbering system, which helps keep track easier.’

‘Christopher Van Barr is an exceptional orator and lead counsel. He is actively involved in all aspects of the litigation throughout the case. I also enjoyed working with Michael Crichton, Charlotte McDonald and others.’

‘Charlotte McDonald is our main point of contact, and she is helpful, responsive, flexible, friendly and understanding.’

‘Natalie Rizkalla-Kamel is one such stand-out. We continue to be impressed with her diligence, and depth of knowledge. Legal procedures in the trademark registration process and communication with the PTO have been well handled and complete. Ms. Rizkalla-Kamel follows up on outstanding issues promptly. She guides her team with the same diligence and care.’

‘Paula Clancy is unique in terms of awareness of clients’ needs and of developing a strategy for trademark protection that is effective and meets with clients’ requirements. Paula is extremely responsive, precise in the advice she gives and proactive when it comes to avoiding unnecessary expenses and office actions.’

‘Nelson Godfrey and the team are experienced trademark procurement professionals. They are collaborative, smart and knowledgeable. Their opinions are thorough, well-reasoned and practical. They are great communicators and can break down complicated scenarios in a simple and easy to understand manner. Since they understand our business, they can delicately balance trademark law with business needs, and provide sensible and realistic advice.’

‘Gowling is super responsive, clear, takes time to learn our business model, and effective in disputes.’

‘Shelagh Carnegie – she has to be one of the best IP lawyers in Canada. She has a practical, business-savvy approach to legal issues, and makes herself available nearly 24-7.’

‘Offering us a holistic approach to providing IP (trademark, patents, copyright, online enforcement work, etc.) support for our global business. Natalie Rizkalla-Kamel is our key relationship partner and she curates a team of exceptional lawyers in a wide variety of areas (including Eric Macramalla and Jasleen Chahal) to ensure that we are able to meet our business’ needs.’

 

 

Key clients

Australian Mud Company Pty. Ltd.

Bayer Inc.

Canadian Tire

Cenovus Energy

Cisco Systems Inc.

Copyright Collective of Canada

Corning Inc.

Deciem, Inc.

Discovery

Dizolve Group Corp.

eBay

Electrameccanica Vehicles Corp.

Eli Lilly and Company

Galderma

General Fusion Inc.

Google LLC

GoPro

Harper Collins – Harlequin Books

Hayabusa Fightwear Inc.

Henkel Chemicals

Kijiji

Kinaxis Inc.

Kyowa Kirin Inc.

Little Caesars

Merck

Mother Parkers

OJO Labs

Ontario Lottery Gaming Corporation

PayPal Inc.

Porsche

Protagenic Therapeutics Inc.

Providence Therapeutic Holdings Inc.

Rad Power Bikes

Royal Bank of Canada

Shisheido

Siemens Canada Limited

Society of Composers, Authors and Music Publishers of Canada (SOCAN)

Starbucks Coffee Co.

Tacori Jewellery

Takeda Pharmaceutical Company Limited

TD Bank

Treasury Wine Estates

Trend Hunter Inc.

Twitter

UCB Canada Inc.

Weetabix

WEIR – ESCO

WestJet

Yamaha Motor

Work highlights

  • Represented the successful defendants, Google LLC, Google Canada Corporation and Alphabet Inc., in Paid Search Engine Tools, LLC v. Google Canada Corporation et al., 2021 FC 1435 whereby the Federal Court dismissed the action finding that the Google Ads product in question did not infringe the claimant’s patent.
  • Representing Bayer in 9 pharmaceutical patent litigation cases against 9 generic manufacturers over the blockbuster drug XARELTO. The magnitude of these cases in terms of scale, scope, number of interlocutory decisions, and trial work, was enormous. During the course of these cases, several precedent-setting motions and appeals were decided. For example, Bayer was successful at the Federal Court of Appeal (a) on its motion to permit it to rely on its pre-litigation experimental work and (b) on its motion to compel production of samples from certain generics.
  • Successfully represented SOCAN, one of 9 collective societies collecting royalties from TV broadcasters (Bell, Rogers, TELUS, Shaw, Videotron), in an appeal before the Federal Court of Appeal from a decision of the Copyright Board of Canada concerning royalties for the retransmission in Canada of distant television signals.

Smart & Biggar

Smart & Biggar is Canada’s leading IP and technology boutique, leveraging over 130 years in the market and five offices nationally. In Toronto, Mark Evans is a star name for trademark protection, management and counselling, also enjoying a track record in precedent setting disputes, whereas Nancy Pei is a market leader for pharmaceutical patents and litigation, as well as operations within the life sciences sector; the duo are based alongside Matthew Zischka, the firm’s managing partner, Sheldon Hamilton, who leads the litigation group, as well as Mark Biernacki, an up-and-coming partner for all-manner of disputes, including trademark, copyright, patent and industrial design proceedings within the higher courts. The Ottawa office is home to firm chair, Daphne Lainson, as well as Elliott Simcoe who leads the patents, electrical and mechanical group, and Steven Garland who has undertaken all-manner of critical disputes for names such as Amazon, McDonald’s and Shell. François Guay serves as chair of the IP strategy group, operating from the Montreal office, and has notably provided representation in over 100 jurisprudence cases including those with patent, industrial design and copyright elements.

Practice head(s):

Daphne Lainson; Matthew Zischka; Sheldon Hamilton; Elliott Simcoe; François Guay; Kohji Suzuki

 

Other key lawyers:

Mark Evans; Steven Garland; Mark Biernacki; Sheldon Hamilton; Nancy Pei; Jeremy Want; Jean-Sébastien Dupont; Graham Hood; Urszula Wojtyra; Guillaume Lavoie Ste-Marie; Yoon Kang

Testimonials

‘The team is innovative and efficient. They will provide several options, where available, and have a good grasp of business imperatives. They are practical and respond to the actual question asked. Their knowledge of the pharmaceutical landscape is impressive. They put together small teams to keep costs down. Their depth of IP knowledge is an asset.’

‘Sheldon Hamilton – excellent persuasive and cohesive arguments and very practical, Yoon Kang – depth of knowledge is impressive, very efficient and Nancy Pei – excellent research skills and attention to detail, excellent grasp of whole environment’

‘Excellent, pragmatic and business oriented legal advice. Always on top of things.’

‘Graham Hood (one of our global top 3 attorneys).’

‘The intellectual property team at Smart & Biggar has excellent knowledge in both areas of biotechnology and the law. The team recently assisted me in a patent litigation. Both of the partners that I worked with were knowledgeable in the area of science and law, and it was great to be working with two partners who were both women. They also supported us using a smaller nimble team, allowing their associates to do much of the work, and then appropriately supporting at the strategic higher level when needed. They worked together with us to submit bills through a new platform that we implemented and also provided clear visibility in terms of expected costs.’

‘I would highlight two stand-out partners, Yoon Kang and Urszula Wojytra. From the start of the project, Yoon Kang was extremely responsive and available to talk through strategy. She answered many questions that I had regarding Canadian patent litigation and regulatory issues. Both she and Urszula Wojytra are highly knowledgeable in their area, smart intellectual property lawyers, have a vast amount of experience, and are also nice and easy individuals to work with. They provided realistic prospects and clear line of sight. They also helped us to consider all options, including settlement, and ultimately supported us through that as well.’

Key clients

Rogers Media Inc.|Rogers Communications Inc.|BCE Inc.|Bell Media Inc.|CTV Specialty Television Enterprises Inc.|The Sports Network Inc.|Le Reseau des Sports (RDS) Inc.|Groupe TVA Inc.

Angelcare|Edgewell Personal Care|Playtex Products

Vidéotron Ltée|Groupe TVA Inc.

Bell Media Inc.|Groupe TVA Inc. |Rogers Media Inc.

Tekna Plasma Systems Inc.

Dow Chemical

Mud Engineering Inc.

Pampered Chef

Grupo Bimbo

Lululemon

Calm

Cosmetic Warriors/Lush

Work highlights

  • Provided representation in Nova Chemicals Corporation v Dow Chemicals Company as the Federal Court of Appeal affirmed Federal Court’s decision awarding Dow $650 million in patent infringement matter brought against Nova Chemical, the largest reported patent infringement award, and including an award in respect of post patent expiry springboard sales.
  • Acted in Loblaws Inc v Columbia Insurance Company where the Federal Court of Appeal upheld a successful trial decision of the Federal Court relating to Pampered Chef’s use of its PC logo, and alleged infringement of Loblaws’ PC trademark.
  • Acted in Rogers Media Inc. et al. v. John Doe, a case where the Plaintiffs, who own the broadcasting rights to all National Hockey League (NHL) game content in Canada, filed a motion seeking a site-blocking Order that would order Canada’s major ISPs to block access to unauthorised online sources that illegally distribute NHL content on the Internet.

McCarthy Tétrault

A team which thrives in protecting, defending, obtaining and monetizing its clients’ IP, McCarthy Tétrault is geared to support on patent prosecutions and applications, all forms of relevant disputes, and the IP aspects of major M&A and private equity deals. Steven Mason is routinely engaged on litigious matters by leading technology, software, telecommunications and pharmaceutical players meanwhile Alfred Macchione, a fellow practice co-head, is distinctly well-versed in guiding early-stage business and start-ups on the protection and development of IP. Based alongside them in Toronto is Barry Sookman, a lawyer active on both the strategic advice and litigations, dispersing his expertise on copyright, internet, e-commerce and privacy law matters, as well as pharma, biologics, entertainment, software and telecommunications sector specialist, Fiona Legere. In Vancouver, Vincent Yip is a key port of all for acquisition, commercialization and enforcement affairs.

Practice head(s):

Steven Mason; Alfred Macchione; David Tait; Lisa Melanson

Other key lawyers:

Barry Sookman; Fiona Legere; Vincent Yip; Daniel Glover; Steven Tanner; Sanjaya Mendis

Key clients

AbbVie

Bristol-Myers Squibb

Celgene

Bell Canada

Music Canada

Farmers Edge

Apple, Inc.

The STARZ Group

Merck & Co

Allergan Inc.

Regeneron Pharmaceuticals, Inc. / Bayer Inc.

Work highlights

  • Representing Merck in multiple patent infringement actions under the PM(NOC) Regulations in relation to generic versions of JANUVIA, JANUMET, and JANUMET XR.
  • Advising Hertz Global Holdings, Inc. in its stock and asset purchase agreement to sell substantially all assets of its wholly-owned subsidiary, Donlen Corporation, to Athene Holding Ltd.
  • Representing AbbVie in several ongoing patent infringement actions involving its blockbuster drug, HUMIRA® (adalimumab).

Norton Rose Fulbright

Norton Rose Fulbright deploys an expansive national and international footprint to support on a wealth of trademark, patent, dispute, IP strategy and data strategy affairs, demonstrating particularly notable capabilities within the life sciences sector. In Toronto, Jung-Kay Chiu  is an acquisition, exploitation and protection specialist with a focus on medical devices and biotechnology meanwhile, over in Vancouver, Karen MacDonald is a leading trademark agent who operates across portfolio, infringement and anti-counterfeiting matters. Calgary-based Elizabeth Williams provides the practice with accomplishment in licensing, commercialization and monetization endeavours and this is supplemented by Sébastien Clark ’s work from Montreal which includes the drafting and prosecution of US original patent applications.

Practice head(s):

Jung-Kay Chiu; Sebastien Clark; Karen MacDonald; Elizabeth Williams; Anna Wilkinson

 

Other key lawyers:

Anthony de Fazekas; Kristin Wall; Allyson Whyte Nowak; Christopher Wilson

Testimonials

‘One of the leading pharmaceutical litigation firms in Canada (specifically for patents and regulatory data protection).’

‘Kristin Wall and the team have many years of experience representing innovative pharmaceutical companies.’

Key clients

Adir and Servier Canada Inc.

Innovative Medicines Canada and a consortium of Canada’s innovative pharmaceutical companies

Merck Canada Inc.

RE/MAX LLC

SureWerx

University Health Network

Viatris Canada

Viatris Inc.

Work highlights

  • Represented the Canadian innovative pharmaceutical trade association, Innovative Medicines Canada (IMC), and 19 Canadian pharmaceutical companies in two Federal Court litigation proceedings against the Canadian Government seeking to strike down (1) amendments to the Patented Medicines Regulations and (2) accompanying guidelines that implement those amendments.
  • Counsel to RE/MAX LLC in all trademark prosecution, opposition and enforcement matters in Canada.
  • Counsel to University Health Network, the largest public research and teaching hospital in Canada, in its patent application and prosecutions of patent families globally.

Osler, Hoskin & Harcourt LLP

At Osler, Hoskin & Harcourt LLP, the team operates across all facets of IP law, from litigation and prosecution through to licensing, transactional, advisory and anti-counterfeiting affairs. In Toronto, John Cotter oversees the national practice, leveraging an illustrious career in contentious infringement, domain name, trade secret, misleading advertising and software development matters. The group is also able to offer significant strength in-depth in Ottawa where Bradley White is a leading name for patent prosecution and litigation and Barry Fong serves as a go-to for trademark and copyright matters within the media and entertainment, fashion, pharmaceuticals and sports sectors, among many others; the pair are based alongside Donna White  who comes highly recommended for her trademark counselling, product labelling, international registration and multinational portfolio management capabilities.

Practice head(s):

John Cotter

Other key lawyers:

Barry Fong; Bradley White; Donna White; Vincent de Grandpré; Nathaniel Lipkus; May Cheng; Kelly Moffatt; Faylene Lunn; Lillian Wallace; Sydney Young

Key clients

Teva Canada

Viatris/Mylan Pharmaceuticals

York University

Samsung Bioepis

Sun Pharma

VMware

WOW Tech

Purdue Pharmaceuticals

Munchkin Baby

Universities Canada

NBA Properties

Re: Sound Music Licensing Company

3M Innovative Properties

Caterpillar

Estee Lauder

Work highlights

    Torys

    Torys has been especially active in the life sciences sector of late though also caters to names from the retail, agriculture, food, technology, media, sports, telecommunication and gaming industries, among others, serving as a one-stop shop across the full lifecycle of IP mandates. Eileen McMahon is a patent agent in both the US and Canada with 30 years of experience under her belt; she co-leads the team from Toronto alongside acquisition, exploitation and enforcement specialist, Edward Fan, and Andrew Shaughnessy who enjoys a prominent track record in patent and trademark infringement litigation, including those before the Supreme Court of Canada. Teresa Reguly supports clients involved in the sale of regulated pharmaceutical, medical device and biotechnology products with Andrew Bernstein delivering significant prowess in patent, copyright and trademark disputes, including those within the IT, media and life sciences industries. At the more junior end, counsel Nicole Mantini is a further star name on the contentious side and is highly regarded among international and North American pharmaceutical companies.

    Practice head(s):

    Eileen McMahon; Edward Fan; Andrew Shaughnessy

    Other key lawyers:

    Teresa Reguly; Andrew Bernstein; Nicole Mantini; Yolande Dufresne; Yael Bienenstock; Michelles Nelles

    Testimonials

    ‘The Torys team is very client centric and strives to understand what the client wants and needs.’

    ‘Each individual embodies to characteristics of the team and is responsive to the client, providing timely, well-thought-out advice.’

    ‘This team has a high-end Canadian clientele that is loyal because the team combines strong advocacy skills with terrific, personal practice management.’

    ‘Michelle Nelles is a perpetual star, balancing practicality with technical skill. Ed Fan is unusually adept balancing patent prowess with trademark know-how.’

     

    Key clients

    LiquidPower Specialty Products Inc. (“LSPI”)

    Moneris Solutions Corporation

    Sanofi-aventis Canada Inc.

    Pollard Banknote Limited

    Catalyst Pharmaceuticals and KYE Pharmaceuticals

    Comtech Telecommunications Corp.

    Eisai Co., Ltd.

    Ontario Power Generation Inc.

    NOVA Chemicals Corporation

    Work highlights

    • Retained by Sanofi to work with Smart & Biggar (the former counsel of record) as trial counsel in respect of Apotex’s billion-dollar claim under the Ontario Statute of Monopolies, the U.K. Statute of Monopolies (which was developed in 1624 under King James and has only ever been used once in the 1700s) and the Trademarks Act based on the ramipril patent invalidity decision in connection with its blockbuster drug ALTACE.
    • Counsel for LSPI in a) defending an action to impeach a patent owned by LSPI brought by Flowchem in the Federal Court of Canada; and b) a patent infringement litigation relating to DRA patents against LSPI’s offer for sale and selling DRAs into the Canadian marketplace.
    • Advised Moneris in its acquisition of UEAT Technologies. The relationship originally started as a partnership where Moneris was the preferred payment processor for UEAT’s customers in Canada providing a unified commerce solution. This acquisition will further strengthen each company’s go-to-market alignment while maintaining UEAT’s integration flexibility.

    Bennett Jones LLP

    The team at Bennett Jones LLP counts prosecution, litigation, advisory and transactional work as the four keystones of its practice. Stephen Burns serves as a go-to for the IP elements of significant energy and infrastructure projects and transactions whereas Dominique Hussey  is a key port of call for patent and trademark disputes within the pharma, biotech and energy sectors; the pair co-lead the department which is also home to Jeilah Chan, a lawyer who complements her litigation prowess with knowledge of enforcement, protection, commercialization and brand-building affairs.

    Other key lawyers:

    Jeilah Chan; Robert McDonald KC; Emily Kettel

    Work highlights

      Borden Ladner Gervais LLP

      Borden Ladner Gervais LLP is geared to support on an array of prosecution, enforcement, dispute, licensing and transactional IP affairs, including those relating to patents, industrial designs, copyrights and trade secrets. The practice is spearheaded by Calgary-based Jason Howg, both a patent and trademark agent, who possesses an in-depth knowledge of IT, software and computer-related technologies. In Toronto, Justine Wiebe hones her focus on global trademark strategies, acting for domestic clients in addition to those with international portfolios, meanwhile Brandon Evenson is a protection and enforcement expert who leverages his background in computer and software engineering to support a number of high-tech players. Over at the Ottawa office, Chantal Saunders is routinely involved in copyright and trademark infringement litigation, whereas Beverley Moore is a go-to for patent litigation and actions under the Patented Medicines Regulations.

      Practice head(s):

      Jason Howg

      Other key lawyers:

      Justine Wiebe; Chantal Saunders; Beverley Moore; Brandon Evenson; Jason Howg; Geneviève Bergeron; Jeff Gordon; Jennifer Ponton

      Key clients

      Elanco Animal Health Incorporated

      Titan Medical Inc.

      M-I L.L.C. (an affiliate of Schlumberger)

      Eli Lilly Canada Inc., Eli Lilly and Company, Lilly Del Caribe, Inc., Lilly S.A., and ICOS Corporation

      Locust Lane Estate Winery Corp.

      VNDLY Canada Technologies Inc.

      Ecolab Inc.

      Mobility View Inc.

      Bora Creations S.L. c/o Squire Patton Boggs

      Network Innovations Ltd.

      Paybright Inc.

      Work highlights

      • Advised Elanco Animal Health Incorporated on the signing of four contracts with EVAH Corp.
      • Representing Eli Lilly Canada Inc., Eli Lilly and Company, Lilly Del Caribe, Inc., Lilly S.A., and ICOS Corporation against all marketing generic companies in a number of appeals relating to patent infringement matters relating to the CIALIS® and ADCIRCA® tadalafil products.
      • Defended an application in the Federal Court by Hidden Bench Vineyards & Winery Inc. for a declaration that it is the owner of the unregistered trademark LOCUST LANE, as well as relief for alleged passing off by Locust Lane Estate Winery Corp.

      DLA Piper (Canada) LLP

      DLA Piper (Canada) LLP leverages a broad national and international footprint to support on an array of high-end IP dispute, acquisition, licensing and portfolio management affairs. Toronto-based Sangeetha Punniyamoorthy leads the practice, supplementing her prowess in copyright, patent and trademark litigation with extensive procurement and enforcement knowledge; she is especially knowledgeable of the pharmaceutical industry and operates alongside Bruce Stratton who recently transitioned from partner to counsel and is especially well-versed in patent disputes pertaining to computer-related technology. Other sectors of particular focus include sports, video games, financial services, food and beverage, charities, life sciences, mining and energy, automotive and franchising.

      Practice head(s):

      Sangeetha Punniyamoorthy

      Other key lawyers:

      Chris Bennett; Alan Macek; Geoff Mowatt; Bentley Gaikis; Michal Kasprowicz

       

       

      Testimonials

      ‘This team keeps us up to date with all our fillings and provides continual input on our patent strategy.’

      Key clients

      BMW Group, BMW AG

      Videotron Ltd.‎ (subsidiary of Quebecor Inc.)‎

      Tetra Tech Canada Inc.‎

      Edibles Arrangements LLC, Edible IP LLC, Edible International LLC

      DeepRoot Green Infrastructure

      Canadian Energy Services

      Diligent Corporation

      G&W Trademarks Inc., G&W Distilling Inc.

      Pfizer Inc., Pfizer ‎Canada Inc.‎

      Aurora Cannabis Enterprises Inc.

      Mountain Equipment Company (“MEC”)‎

      Sandvik Mining and Construction Oy

      Work highlights

      • Successfully defended Videotron on four patents asserted by Rovi, a U.S. companies with significant ‎patent licensing ‎practices, on technology relating to interactive program guides. In June 2022, the Federal Court found all the patents invalid and no liability for Videotron in a precedent setting decision on patent portfolio licensing practices in Canada.
      • Acted for the Pfizer entities as co-counsel defending a patent infringement action brought by Janssen ‎related to Janssen’s Remicade and Pfizer’s Inflectra, both of which are infliximab products for use in ‎treating rheumatoid arthritis and various irritable bowel diseases, such as Crohn’s disease and ‎ulcerative collitis.‎
      • Retained to argue an appeal from an adverse finding in a patent ‎infringement ‎action. While the appeal decision was pending, the team represented the client in the ‎damages phase of ‎the litigation.‎ After the adverse finding was overturned, the group also represented the client in a hearing on the validity of the certain claims of the opposing party’s patent.

      Fasken

      Fasken fields a full-service IP practice which works across protection, enforcement, licensing, portfolio management and transactional affairs, operating in close tandem with the firm’s London, Beijing and Johannesburg in the process. David Turgeon, a registered patent agent and patent litigator in the US and Canada, leads the practice from Montreal and is especially well-versed within the life sciences, biomedical device and manufacturing fields; he is supported locally by litigator Julie Desrosiers, a go-to for high-tech companies looking to protect their IP, trade secrets and strategic information, as well as Michael Shortt, a trademark agent with an in-depth knowledge of the life science and video game sectors. At associate level, Patricia Hénault is a media and IP law expert with significant exposure to contentious trade secret, patent, copyright and trademark matters.

      Practice head(s):

      David Turgeon

      Other key lawyers:

      Julie Desrosiers; Michael Shortt; Patricia Hénault; Armand Benitah; Marek Nitoslawski; Jay Kerr-Wilson; Joanie Lapalme; Nathan Haldane

       

      Key clients

      Automation Tooling Systems Inc. (“ATS”)

      Pattison Outdoor Advertising Limited Partnership et al.

      Nova Ventures Corporation

      Atlas Copco Canada Inc.

      Merck Canada Inc.

      Thermolec Ltée

      Equisoft Inc.

      Nuheara Ltd.

      Pavemetrics Systems Inc.

      Canadian Broadcasting Corporation (CBC)

      Entertainment Software Association et al.

      Rio Tinto Alcan

      Agnico Eagle Mines Ltd. (Laronde Division)

      Work highlights

      • Advising and representing Pavemetrics Systems Inc. in the complex, multi-faceted patent infringement dispute against the American giant Tetra Tech, Inc. and its Canadian subsidiary Tetra Tech TAS Inc.
      • Advising Pattison Outdoor Advertising in the complex, multi-faceted patent infringement dispute against T-Rex Property AB.
      • Led a constitutional challenge to the federal government’s amendments to the Patented Medicines Regulations and to the regulation of patented drug prices by the Patented Medicines Prices Review Board (PMPRB) as a whole.

      Goodmans LLP

      At Goodmans LLP, the full-suite IP offering spans the development, acquisition, sale, commercialization, enforcement and protection of patents, trademarks, copyrights, trade dress and secrets, confidential information and industrial designs. Harry Radomski and Andrew Brodkin have respectively litigated a number of leading patent, trademark, copyright and damage issue cases, including those before the Supreme Court of Canada; they head the practice from Toronto jointly with Amalia Berg, a client counselling and portfolio management specialist with significant trademark clearance and prosecution, opinion work, enforcement, transactional, licensing and domain name capabilities. Other standout names include Jordan Scopa and associate Jaclyn Tilak, both of whom are developing prominent track records in respect of patent validity and infringement proceedings.

      Other key lawyers:

      Jordan Scopa; Ben Hackett; Jaclyn Tilak

       

      Testimonials

      ‘They have the largest team in Canada dedicated to intellectual property litigation. They have high-quality lawyers at all levels of practice, including some of the best in the industry.’

      ‘Harry Radomski has unparalleled experience. Andrew Brodkin has exceptional persuasive abilities. Jordan Scopa is brilliant and on the rise.’

      ‘The team is unique in its ability to provide timely, practical advice and service. We appreciate that Goodmans IP practice is informed by its corporate and litigation practices and this gives the IP practice a practical, hands-on focus that helps drive successful solutions.’

      ‘Amalia Berg is an outstanding colleague and has assisted me and my clients with reliable, creative, timely and valuable advice and service. She is always available and routinely comes up with creative guidance to overcome difficult situations (including where other attorneys were unable to do so).’

      ‘Goodmans has a very strong intellectual property litigation practice with a unrivalled record of success in leading cases over the last thirty years.’

      ‘Harry Radomski is a senior statesman of the IP Bar in Canada. He has appeared on (and won) more precedent-setting cases than any other patent lawyer. He is excellent in Court and treats opposing counsel with the utmost respect.

      ‘Andrew Brodkin is the current chair of the IP practice. Andrew is one of the most skilled litigators in Canada whose courtroom presence is second to none.’

      ‘Ben Hackett and Jordan Scopa are younger partners in the group who are well on their way to becoming leading lawyers in the profession.’

      ‘Andrew Brodkin and Jordan Scopa both exemplify excellence as external counsel – they are incredibly smart, responsive and effective.’

      Key clients

      Epiroc Canada Inc.

      Alvotech Hf. (pharmaceuticals)

      Google (home audio technology)

      JAMP Pharma Corporation (pharmaceuticals)

      Canadian Generic Pharmaceutical Association (pharmaceuticals)

      Novo Nordisk (pharmaceuticals)

      Pharmascience Inc. (pharmaceuticals)

      GEMAK Trust (detergent)

      Apotex Inc./ Apotex Pharmachem Inc. (pharmaceuticals)

      Advanced Powders & Coatings (division of General Electric) (metal powders)

      Duracell (Procter & Gamble) (batteries)

      ARC Resources Ltd. (oil, gas and energy)

      SoulCycle Inc. (U.S. fitness company and brand headquartered in New York)

      Trudell Medical International (medical devices)

      Wabtec Holding Corp. (train components and industrial equipment)

      Westinghouse Air Brake Technologies Corporation (train components and industrial equipment)

      MSA Technology, LLC (safety products for people and facility infrastructures)

      ToonBox Entertainment (Canadian animation studio that produces family entertainment content seen in theatres and in home entertainment)

      Arterra Wines Canada (formerly Constellation Brands Canada Inc.) (producer and marketer of beer, wine and spirits)

      Give & Go Prepared Foods (manufacturer of quality frozen, thaw and serve baked goods)

      Mongohouse.com (Toronto-based real estate information website)

      HouseSigma (Toronto-based real estate information website)

      Panacea Biotec (India-based pharmaceutical company)

      Strataca Systems, LLC (medical devices)

      Cognitive Systems Corp. (Wi-Fi motion technology)

      Quantum Valley Fund (quantum information science and quantum computing)

      Work highlights

        Baker McKenzie

        Baker McKenzie runs a workload spread across advisory and portfolio management, anti-counterfeiting, copyright and patent strategy device, transactional support and licensing, in addition to a wealth of disputes. The practice is headed by Christopher Aide who is well-versed in both Canadian and European Union prosecutions and oppositions, demonstrating particular accomplishment within the consumer product, agricultural product and IT sectors. Stephanie Vaccari is among the key practitioners, namely due to her prowess in trademark portfolio management, opposition and cancellation affairs, as well as internet and domain name issues.

        Practice head(s):

        Christopher Aide

        Testimonials

        ‘The team is extremely knowledgeable, accurate and dependable in all aspects of intellectual property that we deal with. Stephanie Vaccarri and her team are always on top of matters.’

        ‘Stephanie Vaccari and her team go above and beyond to make sure we are aware of potential claims, infractions or general concerns regarding our business.’

        ‘Efficient and responsive service delivery – Ethical billing practices – Renowned experts – The firm has a solid focus on diversity, equity and inclusion issues and the team is diverse both by gender and racial lines which brings a unique and creative perspective.’

        ‘The expertise and knowledge of Stephanie Vaccari and her team is excellent. She is always responsive and attentive to our needs, which has been a key enabler for us to achieve our goals.’

        ‘Stephanie Vaccari stands out as a practitioner who is not only an expert in her field but is also committed to client service and is attentive to her client’s individual needs and circumstances.’

        Key clients

        Unilever

        Meltwater News

        Pfizer Inc.

        Zhaojin Mining

        BNSF Railway Co.

        Zoom Video Communications

        Mars-Wrigley

        Meta

        Work highlights

        • Coordinating Unilever’s global trademark portfolio. The work is significant, as Unilever owns one of the largest trademark portfolios in Canada and in the world. Some of their widely recognized brands include Dove, Ben & Jerry’s, Knorr, and Axe.
        • Representing Meltwater News after it was sued for copyright infringement and breach of contract by several of Canada’s largest online news publishers and their licensing agent, alleging that by scraping their web sites and providing search results to its customers.
        • On August 23, 2021 Pfizer Inc. and Trillium Therapeutics Inc., a clinical stage immuno-oncology company developing innovative therapies for the treatment of cancer, announced that they entered into a definitive agreement under which Pfizer would acquire Trillium. As part of the firm’s advisory role, its IP team was responsible for the intellectual property that was being transferred, including that associated with its proprietary targeting molecules.

        Blake, Cassels & Graydon LLP

        Adept in portfolio management, a wealth of disputes and the IP elements of corporate transactions, Blake, Cassels & Graydon LLP‘s team is led from Toronto by Chris Hunter, Andrew Skodyn and Melanie Baird. Hunter runs a patent and trademark prosecution practice in addition to his brand protection and portfolio activities, whereas Skodyn is a disputes specialist with considerable knowledge of the biotech, technology and life sciences industries. Baird holds the distinction of serving as counsel in Canada’s first ever biologic patent and biosimilar patent case.

        Other key lawyers:

        Sean Jackson

        Key clients

        Bausch Health, Canada Inc.

        Danaher Corporation

        Facebook Inc.

        Great Hill Partners

        HgCapital

        IBM Corporation

        Janssen Inc.

        Mill Street Brewery

        Penn National Gaming, Inc.

        SoftBank

        Work highlights

        • Acted on the IP elements of Penn National’s acquisition of Score Media and Gaming.
        • Represented Mill Street Brewery (owned by Labatt) in a passing off, trademark infringement, copyright infringement and competition claim brought by one of Canada’s most iconic bands.
        • Acted for Danaher Corporation in its acquisition of Precision Nanosystems, Inc. (PNI), a manufacturer of genetics medicines that deliver RNA or DNA directly into cells to treat disease at its molecular root cause.

        Cassels Brock & Blackwell LLP

        The IP offering at Cassels Brock & Blackwell LLP encompasses international trademark portfolio management and opposition proceedings, high-stakes copyright disputes and global patent filings, among other services. Casey Chisick is a media law expert, who caters to major players within the music, film, publishing, gaming and television sectors; he co-chairs the practice alongside Alison Hayman, a specialist in the protection, licensing and enforcement of IP, chiefly focusing on the trademark space. A further point of differentiation for the practice is its prowess within the cannabis sector, a forte which frequently sees it instructed on industry-specific trademark, industrial design, patent and copyright affairs.

        Practice head(s):

        Casey Chisick; Alison Hayman

        Other key lawyers:

        Mark Davis; Stephanie Roberts; Steven Kennedy; Eric Mayzel; Chandimal Nicholas; Jessica Zagar

        Key clients

        McCain Foods Limited

        World of Wonder Entertainment (producer of RuPaul’s Drag Race)

        Diamond Estates Wines & Spirits Ltd.

        Canadian Musical Reproduction Rights Agency (CMRRA)

        Coca-Cola Ltd./ The Coca-Cola Company

        Music Canada and Music Publishers Canada

        BBC Canada

        Society of Authors, Composers and Music Publishers of Canada (SOCAN)

        Mattel Inc. / Mega Bloks / American Girl, LLC

        University of Toronto

        October’s Very Own (OVO)

        Canadian Tire Corporation Limited

        Air Miles International Trading BV and LoyaltyOne, Co.

        Conservative Party of Canada

        Little Caesar Enterprises, Inc.

        Stikeman Elliott LLP

        Specialists in the IP elements of major corporate transactions, Stikeman Elliott LLP’s team is tailor-made to support on assignment, distribution, development, research and co-existence agreements, among many other matters. In Montreal, Jonathan Auerbach also provides the practice with noteworthy trademark and copyright dispute, prosecution, clearance and enforcement abilities, meanwhile at the Ottawa office, managing partner Justine Whitehead is a go-to for portfolio management and marketing affairs in addition to the licensing and acquisition of IP rights. Key sectors for the group include food and beverage, fashion, transport, technology, cosmetics and cannabis.

        Other key lawyers:

        Kevin Graham; Ryan Sheahan; Andrea Kroetch; Alexa Teofilovic

        Work highlights