Michael E. Charles

Toronto Intellectual Property Group (TIPG)

Litigation Cases

Nova Chemical Company ats. Dow Chemical Corporation
Defending Nova Chemical in a patent infringement action relating to polyethylene resin compositions. Action is scheduled for trial in September 2013.
Counsel: Robert MacFarlane, Mike Charles, Andrew McIntosh, Josh Spicer
(2010), (T-2051-10)

Daiichi Sankyo Company Limited et al. v. Apotex Inc. et al.
Represented Daiichi in Patented Medicines Notice of Compliance (PMNOC) proceedings against Apotex relating to the antibiotic LEVOFLOXICIN. A prohibition application was heard and an order was granted, but on appeal the matter was remitted back to the hearing judge for redetermination. The original hearing judge recused himself and a subsequently appointed hearing judge "terminated" the proceeding for mootness, because by then the patent had expired. A further appeal was taken from the decision to consider the application to have been "terminated". On this further appeal, the prohibition application was determined to have been "dismissed" for mootness.
Counsel: Mike Charles
(Reported decisions: 2008 FC 744, 2009 FCA 212, 2010 FC 711, 2010 FCA 213, 2011 FCA 57, 2011 FCA 58)
(2005), (T-1508-05; A-373-08;A-240-10)

Daiichi Pharmaceutical Co. Ltd. et al. v. Novopharm Limited
Represented Daiichi in patent infringement proceedings against Novopharm relating to the antibiotic LEVOFLOXICIN. An injunction and damages were awarded at trial, a stay of the injunction was denied and the trial judgment was upheld by the Federal Court of Appeal. An application for leave to appeal to the Supreme Court of Canada was dismissed.
Counsel: Mike Charles, Andrew McIntosh and Josh Spicer
(Reported decisions: 2006 FC 1234, 2006 FCA 406, 2007 FCA 105, 2007 FCA 269, 2007 FCA 217)
(2004), (T-2175-04; A-500-06;)

Daiichi Pharmaceutical Co., Ltd. et al. v. Novopharm Limited et al.
Represented Daiichi Pharmaceutical Co. in Patented Medicines Notice of Compliance (PMNOC) proceedings against Novopharm relating to the antibiotic LEVOFLOXICIN. An application for a prohibition order was dismissed but Novopharm was subsequently enjoined and ordered to pay damages in an infringement action.
Counsel: Mike Charles
(Reported decisions: 2004 FC 1631, 2005 FCA 2, 2005 FCA 6)
(2003), (T-214-03; A-630-04)

Pfizer Canada Inc. et al. v. Lilly ICOS LLC et al.
Represented Pfizer in patent infringement proceedings in which a patent for Pfizer's drug VIAGARA was asserted against Eli Lilly's drug CIALIS, a competing drug for the treatment of erectile dysfunction. The action settled before trial.
Counsel: Robert MacFarlane, Andrew McIntosh and Mike Charles
Don Cameron and Scott MacKendrick represented Eli Lilly in the action. They joined Bereskin & Parr LLP in 2012.
(Reported decisions: 2003 FC 1278, 2004 FC 223)
(2003), (T-1721-03)

Pfizer Canada Inc. et al. ats Bayer Aktiengesellschaft et al.
Represented Pfizer in a patent impeachment action relating to one of Pfizer's patents for the drug VIAGARA brought by Bayer.
Counsel: Robert MacFarlane, Andrew McIntosh and Mike Charles
Don MacOdrum represented Bayer in the action. He joined Bereskin & Parr LLP in 2012.
(2002), (T-865-02)

Pfizer Canada Inc. et al. ats. Lilly ICOS LLC et al.
Represented Pfizer in a patent impeachment action relating to one of Pfizer's patents for the drug VIAGARA brought by Eli Lilly. The action settled before trial.
Counsel: Robert MacFarlane, Andrew McIntosh and Mike Charles
Don Cameron and Scott MacKendrick represented Eli Lilly in the action. They joined Bereskin & Parr LLP in 2012.
(Reported decisions: 2006 FC 1465, 2006 FC 1500, 2006 FC 1501)
(2002), (T-341-02)

Fero Holdings Ltd. v. Enterprises Givesco Inc.
Represented Fero Holdings in patent infringement proceedings relating to masonry connection technology used in the construction industry, as well as proceedings to enforce a settlement agreement entered into with one of the infringers.
Counsel: Robert MacFarlane, Mike Charles, and Josh Spicer
(Reported decisions: 1999 CanLII 8526 (FC), 2003 FCT 353)
(1998), (T-1828-98;T-167-99;T-779-01)

Interface Flooring Systems (Canada) Inc. ats. Milliken & Co.
Acted for Interface Flooring System in the defence of a copyright proceeding relating to the design of floor tiles installed at the Calgary airport. The claim for copyright infringement was dismissed at trial and the trial judgment was upheld on appeal. 1997 CanLII 5231 (FC), 1998 CanLII 7706 (FC), 1998 CanLII 9044 (FC), 2003 FC 1258, 2000 CanLII 14871 (FCA)
Counsel: Robert MacFarlane and Mike Charles
(1992)