Sheldon Hamilton

Practice Details

• Firm Information
  Position

  Partner, Toronto; Barrister and Solicitor; Patent and Trademark Agent

  Firm Name

  Smart & Biggar
• Representative Cases & Transactions
  Cases

  Experience: Proceedings under the Patented Medicines (Notice of Compliance) Regulations
  AstraZeneca Canada Inc. et al v. Mylan Pharmaceuticals ULC et al, 2011 FC 1023 - Court granted Order of prohibition rejecting generic's arguments of inutility
  obviousness.
  sanofi-aventis Canada Inc v. Pharmascience Inc., 2008 FC 782 - Court granted Order of prohibition following earlier finding that the generic was estopped from litigating the validity of the patent.
  sanofi-aventis Canada Inc. v. Pharmascience Inc., 2007 FC 1057 - Court applied issue estoppel to preclude generic from litigating a second allegation of invalidity where the generic had initially failed on an allegation of invalidity
  another generic had subsequently succeeded.
  sanofi-aventis Inc. v. Laboratoire Riva Inc., 2007 FC 532 - Court would have found allegation of invalidity regarding compound patent not justified but ruled that it was bound by decision in another case that the same allegation was justified.
  Aventis Pharma Inc. v. Pharmascience Inc., 2005 FC 340 - Allegation of invalidity not justified for compound patent.
  AB Hassle v. Apotex Inc., 2005 FC 234 - Court applied issue estoppel to preclude generic from relitigating allegation of non-infringement
  litigating allegation of invalidity that could have been raised in an earlier proceeding.
  Astrazeneca AB v. Apotex Inc.
  AB Hassle v. Apotex Inc., 2004 FC 761, 2004 FC 762 - Court permitted filing of further evidence related to testing of samples produced by generic.
  AB Hassle v. Apotex Inc., 2003 FCT 771 - Allegation of invalidity of salt patent not justified.
  AB Hassle v. Apotex Inc., 2002 FCT 931 - Allegation of non-infringement of formulation patents not justified.
  Hassle v. Canada (Minister of National Health
  Welfare), T-366-98 - Allegation of non-infringement of formulation patent not justified.
  AB Hassle v. Canada (Minister of National Health
  Welfare), T-1712-95 - Allegation of non-infringement of compound patent not justified on basis of non-infringing process
  generic process is obvious chemical equivalent of patented process. Court prohibits Minister from issuing notice of compliance.
  Patent infringement
  validity actions
  sanofi-aventis Canada Inc. v. Apotex Inc.
  sanofi-aventis Canada Inc. v. Novopharm Inc., 2009 FC 676 - Actions for infringement
  validity of compound patent
  reference for damages. Cases proceeded to trial on all issues, including remedy, in two years.
  Merck & Co. Inc. v. Apotex Inc., 2006 FC 524 - Compound patent valid
  infringed
  generic enjoined from further sale pending patent expiry
  damages awarded to patentee
  licensee.
  Apotex Inc. v. Syntex Pharmaceuticals International Ltd., T-2870-96 - Sustained release formulation patent.
  Applications for judicial review
  AB Hassle v. Canada (Minister of National Health
  Welfare)
  AstraZeneca Canada Inc. v. Canada (Minister of Health), 2004 FC 377, 2004 FC 378 - Court granted motion allowing use of confidential information from one proceeding in a judicial review application.
  Hoffmann-La Roche Ltd. v. Canada (Minister of National Health
  Welfare), T-2309-98 - Court quashed notice of compliance issued to generic.
  Appeals
  Apotex Inc. v. sanofi-aventis Inc., 2008 FCA 394 - Court of Appeal upheld Trial Judge's decision not to recuse herself from trial on the basis of reasonable apprehension of bias arising from an earlier decision by the same Judge.
  Pharmascience Inc. v. sanofi-aventis Canada Inc., 2008 FCA 213 - Court of Appeal confirmed the application of issue estoppel where generic had failed on one allegation of invalidity
  attempted to litigate a second allegation of invalidity on the basis of another generic's intervening success. The Court refused to allow the generic to relitigate.
  Apotex Inc. v. Merck & Co., 2006 FCA 323 - Court of Appeal affirmed findings of infringement
  validity of compound patent.
  Pharmascience Inc. v. sanofi-aventis Canada Inc., 2006 FCA 210 - Court of Appeal dismissed motion by generic to have appeal dismissed as abuse of process.
  Apotex Inc. v. AstraZeneca Canada Inc.
  Apotex Inc. v. AB Hassle, 2004 FCA 226, 2004 FCA 227 - Court dismissed appeal from variation of protective Order allowing use of evidence from one proceeding in another proceeding.
  Apotex Inc. v. AB Hassle, 2004 FCA 255 - Court of Appeal upheld trial decision permitting further evidence related to testing of samples provided by the generic.
  Apotex Inc. v. AB Hassle, 2003 FCA 87 - Court of Appeal declined to admit fresh evidence on appeal.
  Rhoxalpharma Inc. v. AB Hassle, 2002 FCA 147 - Court of Appeal affirmed decision that allegation of non-infringement regarding formulation patent was not justified.
  Other
  Laboratoires Servier v. Apotex Inc., 2008 FC 321 - Court quashed subpoenas issued at request of generic to patent attorneys involved in settlement of prior proceeding.
  sanofi-aventis Canada Inc. v. Apotex Inc., 2008 FC 320 - Court dismissed in part motion by generic for relief from the implied undertaking not to use discovery documents from one proceeding for purposes of another proceeding.
  Apotex Inc. v. Syntex Pharmaceuticals International Ltd., T-2870-96 - Court dismissed motion by generic for summary judgment related to sustained release formulation patent.