10th Annual Patent Colloquium

Friday, January 28, 2022 - 10:00 to 13:00
Location: 
Zoom Meeting

Introduction

10:00 – 10:10 am

Prof. Simon Stern
Director, Centre for Innovation Law & Policy Faculty of Law, University of Toronto

Chief Justice Paul Crampton Federal Court of Canada

Recent Changes and Trends in Patent Law

10:10 – 11:40 am

Moderator: Justice Michael Manson, Federal Court of Canada

Panelists:
Don Cameron (Bereskin & Parr LLP)
Carol Hitchman (Sprigings IP Law)
Brad White (Osler)

Slides - Trends in Patent Litigation
Summary Trials

Update on Virtual Trials

12:00 – 1:30 pm

Moderator: Chief Justice Paul Crampton, Federal Court of Canada

Panelists:
Andrew Brodkin (Goodmans LLP)
Yoon Kang (Smart & Biggar)
Kristin Wall (Norton Rose Fulbright)

Claim Construction Issues

1:45 – 3:15 pm

Moderator: Justice Angela Furlanetto, Federal Court of Canada

Panelists:
Melanie Baird (Blakes, Cassels & Graydon)
Jason Markwell (Fasken)
Jenna Wilson (Wilson Lue LLP)

Slides

MODERATORS’ & PANELISTS’ BIOS

Chief Justice Paul Crampton, Federal Court of Canada

Chief Justice Paul Crampton was appointed to the Federal Court on November 26, 2009 and to the position of Chief Justice on December 15, 2011. Prior to joining the bench, he specialized in competition/anti-trust law in private practice. After spending ten years as a partner at Davies, Ward, Phillips and Vineberg LLP, he spent five years as a partner at Osler LLP. Between his work at those firms, he took a two-year sabbatical at the OECD, where he was responsible for the organization’s work with developing countries in the competition law and policy field. At the outset of his career, he was Special Advisor to the Commissioner of Competition. 

Justice Michael Manson, Federal Court of Canada

Justice Michael Manson was appointed Judge of the Federal Court on October 5, 2012. He attended McGill University (BSc. 1976; Dip.Ed. 1978) and the University of British Columbia (L.L.B. 1982). He was called to the Bars of Ontario in 1984 and British Columbia in 1995. He was Associate and then Partner at Smart & Biggar from 1984 to 2012. In 1996-2012, he was an Adjunct Professor at the Faculty of Law of the University of Victoria.  He became a Registered Trade-mark Agent in 1984 and Patent Agent in 1989. He has authored more than one hundred articles and papers on intellectual property, trademark patents, and copyright law. In 2012, he was selected Vancouver Intellectual Property Lawyer of the Year by Best Lawyers; Preeminent IP Litigation Lawyer in British Columbia by Benchmark Canada; and Canadian Outstanding IP Practitioner by Managing Intellectual Property. He was also a Fellow of the Intellectual Property Institute of Canada and of the Litigation Counsel of America.

Justice Angela Furlanetto, Federal Court of Canada

Justice Angela Furlanetto was appointed a Judge of the Federal Court on February 26, 2021. She previously served as a Prothonotary of the Federal Court for two years before her appointment.

Prior to joining the Court, Justice Furlanetto practiced in all areas of intellectual property litigation as a Partner with Dimock Stratton LLP and later DLA Piper (Canada) LLP. She appeared regularly before the Federal Courts and was recognized by many peer-reviewed directories as a leading lawyer in Canada for intellectual property litigation, and in particular for her work in the area of patent litigation. She holds both a B.Sc. and M.Sc. in Biochemistry.

In practice, Justice Furlanetto served as a former Chair of the Canadian Bar Association’s National IP Section, one of the original members on the Federal Court IP User’s Committee and as IP Section representative of the Federal Courts Bench and Bar Committee. She was a Fellow of the Intellectual Property Institute of Canada and a former Chair of their Litigation Committee. Justice Furlanetto is one of the proud founders of the Harold G. Fox Moot, Canada’s only intellectual property moot, for which she served as Chair for ten years.

Don Cameron, Bereskin & Parr LLP

Don Cameron is a partner in the Toronto office of Bereskin & Parr LLP. He has been practising IP law since 1981, principally as a patent litigator. He has taught the Patent and Trade Secrets course at the University of Toronto since 1993, and in the LLM program at Osgoode Hall Law School since 2007. He has written and spoken widely on the topic of Patent Law and is a contributor and editor of Carswell’s Canadian Patent Benchbook. His full bio and course materials can be found on his website at www.JurisDiction.com.

Carol Hitchman, Sprigings IP Law

Carol Hitchman’s practice is primarily in the area of intellectual property litigation. She has appeared before all levels of the Federal Court and the Ontario Court, as well as the Supreme Court of Canada. Her practice is primarily in the area of pharmaceutical patents, but also includes trademark and copyright matters. She has been involved in cases relating to basic compound patents, formulation patents and use patents. She has also been involved extensively in litigation relating to trademarks for the appearance of pharmaceuticals.

Carol has written numerous papers and given presentations for the Intellectual Property Institute of Canada (IPIC), the Law Society of Ontario, the Canadian Bar Association (CBA), and the Advocates Society. Carol has been an instructor at the Patent Agent Tutorials for IPIC and at the IPIC McGill Patents course.

Brad White, Osler

Brad White is a partner in and immediate past-Chair of Osler’s National Intellectual Property Group, and current head of the firm’s patent litigation and patent prosecution practices. Brad practises complex patent litigation, focusing on pharmaceutical proceedings under PM(NOC) Regulations. He provides strategic advice on the enforcement of patent rights and coordination and management of litigation strategies throughout multiple jurisdictions. Brad has appeared as lead counsel before the Federal Court of Appeal, Federal Court, Ontario Superior Court and as worldwide coordinating litigation and IP counsel before the US International Trade Commission. A Registered Patent Agent, Brad specialises in Canadian and foreign patent and industrial design prosecution, strategic IP portfolio reviews, patentability, patent infringement and validity opinions, worldwide patent portfolio management and enforcement advice. He is registered to practise before the USPTO and is a past associate editor of the Canadian Patent Reporter. Brad has been recognized in major legal guides including Chambers Canada, Chambers Global, Acritas Stars, Benchmark Litigation Canada, IAM Patent 1000, IP Stars and Legal 500.

Andrew Brodkin, Goodmans LLP

Andrew Brodkin is a partner and a member of the Executive Committee at Goodmans. Andrew also heads the Litigation Group, which has been described as “the Bay Street gold standard” (Benchmark Canada).

Andrew’s practice focuses on intellectual property litigation, including patent, trademark and copyright disputes and the complex assessments of damages flowing from the infringement of such rights. He appears weekly before the Federal Court of Canada, Federal Court of Appeal, the Ontario Superior Court of Justice or the Ontario Court of Appeal. He has appeared before the Supreme Court of Canada on multiple occasions.

Yoon Kang,Smart & Biggar

Yoon Kang is a partner at Smart & Biggar, a firm practising exclusively in intellectual property and technology law. A graduate of the University of Toronto Faculty of Law, Yoon started at Smart and Biggar as an articling student and, for over 25 years at the firm, he has focused her practice on patent litigation and prosecution. Yoon is responsible for leading the life sciences practice in the firm’s Toronto office and a lead counsel in Smart & Biggar’s pharmaceutical litigation practice.

Kristin Wall, Norton Rose Fulbright

Kristin Wall provides strategic legal counsel in all areas of intellectual property law. She has extensive experience advising the innovative pharmaceutical and medical device industry in litigation and administrative proceedings under the Patent Act, Food and Drugs Act, Patented Medicines (Notice of Compliance) Regulations, Patented Medicines Regulations, Certificate of Supplementary Protection (CSP) Regulations and Food and Drug Regulations. Kristin has acted in many of the first litigation proceedings started under Canada's CETA-reformed patent legislation, including as counsel in the first series of court challenges under the amended Patented Medicines (Notice of Compliance) Regulations and CSP Regulations to secure patent term restoration. She is counsel in two ongoing pharmaceutical industry-wide litigation challenges to regulations and guidelines governing the Patented Medicine Prices Control Board (PMPRB).

Melanie Baird, Blakes, Cassels & Graydon

Melanie Baird’s diverse commercial and intellectual property litigation practice encompasses patent, trademark, complex commercial, class actions, product liability, cannabis and technology disputes. She is the go-to Canadian litigation adviser for a wide array of world-leading clients. She excels at litigating cases in emerging fields. She was counsel in the first biologic and biosimilar drug patent cases in Canada in addition to numerous precedent-setting trials, applications and appeals. She works extensively with life sciences companies on complex litigation of all types and is intimately familiar with the business of pharma and biotech. She also has broad experience in the software, tech and social media spaces, dealing with commercial, patent, trademark, copyright and licensing disputes. She leverages her unique experiences to navigate a wide variety of complex litigation, adeptly devising strategic options and addressing cross-border issues. She also acts on commercial and M&A transactions involving significant intellectual property assets and IP and IT licensing. She provides guidance on corporate governance with a focus on technology companies. She is widely sought after for her advice on both deal and litigation strategy, the evaluation and management of IP portfolios, regulatory issues and international considerations.

Melanie is consistently recognized as a leading litigator, including as one of the Top 50 Women Litigators in Canada by Benchmark Litigation, as one of the Top 250 Women in IP worldwide by Managing Intellectual Property IP Stars (one of only 12 Canadians recognized) and in all major directories. She is regularly asked to speak on IP and advocacy topics and is an active member in numerous professional organizations. She co-leads Blakes’ IP Litigation practice.

Jason Markwell, Fasken

Jason Markwell is a patent and drug regulatory litigator at Fasken in Toronto. He represents innovative pharmaceutical companies in disputes before Courts and administrative tribunals. He attended Queens University and Osgoode, and was called to the Bar of Ontario in 1999.

Jenna Wilson, Wilson Lue LLP

Jenna has more than 20 years of experience in intellectual property law with a focus on patent drafting and prosecution. Her patent prosecution work emphasizes emerging technologies and subject areas that challenge the boundaries of current patent law, such as biotechnology and information technology. As a registered patent agent, she has drafted patent applications and procured patent rights for clients across a wide range of fields ranging from medicine to oil & gas to financial technology.

Jenna is active in the intellectual property community as a writer, speaker, and educator. In addition to authoring articles on intellectual property matters, she is co-author of the patents chapter in Intellectual Property Disputes: Resolutions and Remedies published by Thomson Carswell and she has taught the Patent Law course at the University of Windsor.