Robert MacFarlane

International Trademark Assocation (INTA)

Litigation Cases

MediaTube Corp. et al. v. Bell Canada et al.
Representing MediaTube in an action for patent infringement relating to Internet protocol TV services.
Counsel: Robert MacFarlane and Josh Spicer
(2013), (T-705-13)

Accede Energy Services, Ltd. v. Pomerleau
Representing Accede Energy in a patent impeachment action relating to the optimization of vacuum systems and methods for drying drill cuttings.
Counsel: Robert MacFarlane and Andrew McIntosh
(2012), (T-1969-12)

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)

Superior Industries, LLC v. Thor Global Enterprises Ltd.
Represented Superior Industries in an action for patent infringement relating to braced telescoping support struts for stacking conveyors.
Counsel: Robert MacFarlane and Adam Bobker
(2010), (T-960-10)

Target Corporation et al. v. Fairweather Ltd.
Represented Target Corporation in a passing off action to restrain the defendants' use of the TARGET APPAREL trademark and bulls eye device in association with retail department stores in Canada, in anticipation of the 2013 launch of TARGET stores in Canada.
Counsel: Robert MacFarlane, Mark Robbins and Megan Langley Grainger
(Reported decisions: 2011 FC 758)
(2010), (T-1902-10)

High Liner Foods Incorporated ats. Contessa Premium Foods, Inc
Defended High Liner Foods in an action for patent infringement relating to shrimp serving trays.
Counsel: Robert MacFarlane and Josh Spicer
(2009), (T-2068-09)

BJ Services Company ats. Halliburton Energy Services, Inc.
Defended BJ Services/Baker Hughes in a patent infringement action relating to hydraulic fracking technology. Obtained a stay of the Canadian proceedings in favour of a U.S. arbitration.
Counsel: Robert MacFarlane and Josh Spicer
(2008), (T-1960-08)

Canadian Imperial Bank of Commerce et al. ats. Datatreasury
Represented the CIBC in a patent infringement action relating to cheque scanning technology. The action was settled shortly before trial.
Counsel: Robert MacFarlane and Andrew McIntosh
(Reported decisions: 2008 FC 955)
(2007), (T-1472-07; T-1661-07)

DBC Marine Safety Systems Ltd. v. Canada (Commissioner of Patents)
Retained by the Intellectual Property Institute of Canada to bring an application for leave to intervene in an appeal involving the interpretation of the Patent Act, R.S.C. 1985, c.P-4.
Counsel: Robert MacFarlane
(Reported decisions: 2008 FCA 148)
(2007), (A-558-07)

Vestas-Canadian Wind Technology, Inc. ats. Aloys Wobben
Defended Vestas-Canadian Wind Technology in an action for patent infringement relating to voltage control of wind power installations connected to a power grid.
Counsel: Robert MacFarlane and Adam Bobker
(2007), (T-564-07)

Raymor Industries ats. Canada
Acted for the plaintiff patentee, Raymor Industries, in a patent infringement action involving nanotechnology.
Counsel: Robert MacFarlane
(Reported decisions: 2007 CF 37)
(2006), (T-1856-06)

Duratech Industries Ltd. et al. ats. Bridgeview Manufacturing Inc. et al.
Defended Duratech Industries, a US manufacturer of farm equipment, and two of its Canadian distributors in a patent infringement action relating to bale shredding machinery. The trial judge held the patent to be invalid and not infringed. The Federal Court of Appeal upheld the finding of non-infringement. An application for leave to appeal to the Supreme Court of Canada was dismissed.
Counsel: Robert MacFarlane and Adam Bobker
(Reported decisions: 2009 FC 50, 2010 FCA 188)
(2005), (T-1554-05;)

Pfizer Canada Inc. et al. v. Novopharm Limited et al.
Acted for Pfizer in Patented Medicine Notice of Compliance (PMNOC) proceedings relating to the COX II inhibitor anti-inflammatory drug celecoxib (brand name CELEBREX). The hearing judge dismissed the application for a prohibition order, but the Federal Court of Appeal reversed the hearing judge's decision and granted the order.
Counsel: Robert MacFarlane
(Reported decisions: 2007 FC 81, 2007 FCA 173, 2007 FCA 256)
(2005), (T-1067-05; A-66-07)

Ulextra Inc. ats. Pronto Luce Inc.
Represented Ulextra in the defence of an action alleging copyright infringement, passing off and infringement of various industrial design registrations by the sale of various lighting fixture designs. Obtained summary judgment dismissing the action. (Reported decisions: 2004 FC 590)
Counsel: Robert MacFarlane
(2004), (T-185-04)

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)

Plasticair Inc. ats. M.K. Plastics Corporation
Defended Plasticair in a patent infringement action relating to exhaust fans. The action was dismissed at trial and double costs were awarded.
Counsel: Robert MacFarlane
(Reported decisions: 2007 FC 574, 2007 FC 1029)
(2003)

Suntec Environmental Inc. v. Trojan Technologies Inc.
Represented Suntec Environmental in an appeal to the Federal Court of Appeal from an order granting summary judgment in a patent infringement action. The technology involved related to the use of ultraviolet light to disinfect wastewater. The injunction was stayed pending appeal, and on appeal the summary judgment was overturned.
Counsel: Robert MacFarlane
(Reported decisions: 2003 FCA 309, 2004 FCA 140)
(2003), (A-321-03)

Target Corporation et al. ats Target Convenience Stores Limited
Defended Target Corporation in a quia timet trademark infringement and passing off action brought by an Ontario convenience store and gas bar that owned several Canadian trademark registrations for TARGET and related marks. The plaintiff was seeking an order effectively prohibiting Target Corporation from using its TARGET brand in Canada. The case was settled after mediation.
Counsel: Robert MacFarlane and Mark Robbins
(2003), (T-220-03)

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)

Asterix Security Hardware International Inc. ats. Les Editions Albert Rene S.A.R.L.
Defended Asterix Security Hardware in an action for copyright infringement and trademark infringement relating to the trademark ASTERIX and the copyright-protected character name Asterix.
Counsel: Robert MacFarlane and Brigitte Chan
(2001), (T-1988-01)

Weatherford Canada Partnership et al. v. National-Oilwell Canada Ltd. et al.
Represented Weatherford Canada in the prosecution of a patent infringement action relating to sealing technology for surface drives used with down-hole pumps for heavy oil that was licensed to Weatherford Canada. An injunction issued after a six-week trial. The Federal Court of Appeal upheld the Trial Judge's findings of validity and infringement with respect to all of the claims at issue, with the exception of one method claim. After a redetermination hearing, the infringement of the method claim was confirmed. Weatherford Canada then settled its damages claims, along with its damages claims in a related action. An application for leave to appeal the original trial decision to the Supreme Court of Canada was dismissed. The Federal Court of Appeal did later send back the method claim for a further redetermination. The patentee's damages claims are also still pending.
Counsel: Robert MacFarlane, Adam Bobker, and Josh Spicer
(Reported decisions: 2005 FCA 300, 2007 FC 396, 2008 FC 1271, 2009 FC 449, 2009 FC 569, 2010 FC 602, 2010 FC 667, 2011 FCA 228, 2012 FC 76)
(2001), (T-1236-01;T-2059-03,T-26-05)

Weatherford Canada Partnership et al. v. National-Oilwell Inc. et al.
Represented Weatherford Canada in a patent infringement damages action against National-Oilwell relating to rotary drive technology for down-hole oil pumps. Action settled at trial in early 2012.
Counsel: Robert MacFarlane and Adam Bobker
(2001), (T-380-01)

Softrak Systems, Inc. ats. Accpac International, Inc.
Defended a copyright infringement action on behalf of Softrak Systems in which it was alleged that the look and feel of Softrak's software infringed the plaintiff's copyright. Won a solicitor and client costs award for Softrak after the plaintiff's motion for an interlocutory injunction was withdrawn. The action was then settled. (Reported decisions: 2000 CanLII 15909 (FC) )
Counsel: Robert MacFarlane
(1999), (T-1381-99)

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)

Royal Canadian Mint ats. Westaim Corporation
Represented the Royal Canadian Mint in the defence of a patent infringement action relating to the production of blanks for minting into coins. The patent was declared invalid at trial. An appeal was launched but the action settled before the hearing of the appeal.
Counsel: Robert MacFarlane and Andrew McIntosh
(Reported decisions: 1998 CanLII 8537 (FC), 2002 FCT 1217)
(1998), (T-453-98; A-32-03)

Illinois Tool Works Inc. et al. v. Cobra Anchors Co. Ltd.
Acted for ITW in an action and appeal for patent infringement relating to wall anchors.
Counsel: Robert MacFarlane, Andrew McIntosh and Brigitte Chan
(Reported decisions: 2002 FCT 829, 2003 FCA 358)
(1996), (T-2313-96; A-522-02)

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)