Expertise
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Practice Areas:
- Bar Admissions:
- Education:
- University of Toronto Faculty of Law (2009) JD
- McGill University (2005) MSc (Biology)
- McGill University (2001) BSc (Biology)
Details
- Bio
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- Blog Posts
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Andrew Moeser
is a partner at Lenczner Slaght.
Andrew’s practice is primarily focused on intellectual property litigation. In patent matters, Andrew has experience with industries such as pharmaceutical and biologics, information technology, and oil and gas. In trademark, copyright, and trade secret matters, Andrew has represented clients in disputes relating to software, gaming, and beauty products. Andrew also has experience in commercial litigation relating to environmental contamination, and in judicial reviews in regulated industries such as pharmaceuticals and renewable energy.
Andrew has represented clients before all levels of court in Ontario, the Federal Court and Federal Court of Appeal, and the Alberta Court of Appeal.
He has also acted pro hac vice in proceedings in the United States and has extensive experience as part of international teams litigating large cross-border disputes.
Andrew is also an Adjunct Professor at the University of Toronto Faculty of Law, where he supervises a legal clinic providing assistance to the Structural Genomics Consortium, a not-for-profit public-private partnership that engages in precompetitive basic science research to facilitate and enable the discovery of new medicines.
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Counsel to the intervener Professor Ariel Katz in an appeal to the Supreme Court of Canada addressing the interpretation of the “making available” provision of the Copyright Act, the role of the Copyright Board of Canada in determining legal questions, and the question of when copyrights trigger entitlements to royalties.
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Counsel to Rovi Guides (a subsidiary of Xperi Holding Corporation) in a patent infringement action involving four patents related to digital entertainment technologies.
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Merck Sharp & Dohme Corp et al v JAMP Pharma Corporation
Counsel to JAMP in NOC action relating to JANUVIA (sitagliptin), a medication used to control high blood sugar in people with type 2 diabetes.
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Sakab Saudi Holding Company v Al Jabri et al
Counsel to Canadian cybersecurity suppliers in dispute between Saudi companies and former Minister of Saudi government. Successfully set aside Norwich Orders affecting the Canadian suppliers that had been obtained on an ex parte basis.
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Eli Lilly Canada Inc v Mylan Pharmaceuticals ULC
Counsel to Mylan in multiple related NOC proceedings and appeals relating to patents over CIALIS® (tadalafil); first generic challenge to CIALIS®. Mylan successfully justified allegations of invalidity and non-infringement in respect of a dosage patent and a formulation patent, which allowed Mylan to enter the market four years earlier than it would have otherwise. Lilly abandoned its appeal of the decision on the dosage patent, and the decision on the formulation patent was upheld by the Federal Court of Appeal. (Prior to joining Lenczner Slaght)
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Teva Pharmaceutical Industries Ltd v Mylan Pharmaceuticals ULC
Counsel to Mylan in a NOC proceeding relating to a composition of matter patent over COPAXONE® (glatiramer acetate – a random polypeptide); this was the first and only Canadian generic challenge to COPAXONE®. Teva and Mylan also litigated in the U.S., U.K., Netherlands and elsewhere over this blockbuster product. Canadian proceeding settled before hearing. (Prior to joining Lenczner Slaght)
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Halliburton Energy Services Inc v BJ Services Company
Counsel to Halliburton Energy Services in patent infringement litigation regarding wellbore completion patented methods used in North American shale formations. McKool Smith and Gilbert’s formed a cross-border team, and the U.S. and Canadian actions were launched on same day. The proceedings were converted to an arbitration. (Prior to joining Lenczner Slaght)
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Bayer Inc v Fresenius Kabi Canada Ltd
Counsel to Fresenius in a NOC proceeding relating to patents over AVELOX I.V.TM (moxifloxacin hydrochloride). On a preliminary motion, Fresenius successfully struck the portion of the proceeding relating to a formulation patent. (Prior to joining Lenczner Slaght)
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Skypower CL 1 LP v Minister of Energy
Counsel to Skypower, a renewable energy developer, in a judicial review relating to an Ontario government program for renewable energy projects. (Prior to joining Lenczner Slaght)
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Counsel to Microsoft in copyright infringement litigation relating to unlicensed software. Microsoft was awarded statutory and exemplary and punitive damages. (Prior to joining Lenczner Slaght)
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University of Toronto Faculty of Law - Adjunct Professor, Clinical Legal Education: Externship - Structural Genomics Consortium (2016 - present)
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Intellectual Property Institute of Canada - Conference Committee (2021-present); CPD Committee (2021-present)
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The Advocates’ Society
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Canadian Bar Association
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Ontario Bar Association
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Insights on the Independence of Expert Evidence
In the recently released decision dTechs EPM Ltd v British Columbia Hydro and Power Authority and Awesense Wireless Inc, the Federal Court of Appeal (“FCA”) weighed in on the role and independence of experts in patent cases. In particular, the FCA provided guidance on (1) the role counsel may play in preparing expert reports; (2) an expert’s role in claim construction; and (3) the difference in the role of an expert where anticipation is alleged based on prior use versus prior publication.
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Shocking Result? Summary Trial on Battery Jump Starter Patent Fails to Get Going
Patent infringement cases are complex and technical, and historically Canadian courts were reluctant to endorse summary disposition in the patent context. However, in recent years there has been an increased trend towards the application of summary proceedings in this area. In particular, we have previously commented on decisions of the Federal Court (“FC”) (Canmar, Kobold, and Janssen) and Federal Court of Appeal (“FCA”) (Canmar and ViiV) that demonstrate the Court’s willingness to approve summary proceedings in patent cases under the appropriate circumstances. Last fall, the FCA decision in Gemak was interpreted by some commentators as a return to the historical position, but in our view, Gemak can be viewed as tapping the brakes on summary judgment rather than signalling a more sweeping reversal of the trend towards summary adjudication.
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Clarity on the Test for Inducing Infringement in Canadian Patent Law
Indirect infringement or “inducement” often arises in pharmaceutical patent infringement cases where a defendant generic manufacturer may not ultimately “use” the drug in question (i.e., directly infringe). Since 2011, the Federal Court of Appeal’s (“FCA”) Corlac Inc v Weatherford Canada Inc decision has frequently been cited as the leading authority for the tripartate test for inducement. In 2020, the Federal Court suggested that Corlac had changed the law of inducement—particularly at the second step determining influence—thereby requiring “a higher threshold for establishing inducement than was applied in the earlier cases”. In the recent decision of Teva Canada Limited v Janssen Inc (“Paliperidone”), the FCA has rejected that interpretation of Corlac. The FCA held that Corlac incorporates the same principles of inducing infringement as had been established in cases dating back to 1906. In doing so, it overturned the lower Court’s inducement determination based on a supposed higher standard and found that the defendant was liable for inducement when the Corlac test was properly applied.
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To Consolidate or Not to Consolidate – This is the Federal Court’s Question
In a recent decision, Takeda Canada Inc v Apotex Inc, the Federal Court dismissed the Plaintiff, Takeda’s, motion for consolidation of two actions against Apotex relating to Takeda’s dexlansoprazole (DEXILANT) under section 6 of the Patented Medicines (Notice of Compliance) Regulations (the “PM(NOC) Regulations”).
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Better Together – or Maybe Not
Some things just go better together and probably always will, as Luke Combs sings in ‘Better Together’. Like a cup of coffee and a sunrise; Sunday drives and time to kill. Multiple section 8 actions however have not made the cut. According to the recent decision of Justice Southcott in Apotex Inc v Janssen Inc, multiple actions for section 8 damages should not have common issues heard together.
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FCA Taps the Brakes on Summary Judgment in Patent Cases
Over the last several years there has been a trend towards increased adoption of summary proceedings for resolving patent cases in Canada. In particular, we have previously commented on decisions of the Federal Court (e.g., Kobold partial SJ motion) and Federal Court of Appeal (e.g., Canmar Appeal) that signalled a willingness to move away from the historic reluctance of those courts to approve summary judgment for patent infringement actions. We had also noted that summary proceedings were a trend to watch this year.
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Do I pay the same? Am I only streaming? Or is "making available" a separate, compensable claim?
Last week, the Supreme Court of Canada released its decision in SOCAN and Music Publishers of Canada v ESA, the latest instalment in a decade long battle about whether and how copyright owners should be compensated for making works available online (even if those works are not subsequently downloaded or streamed by a user).
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The Federal Court Clarifies the Burden of Proof in Summary Trial
In 2022, the use of summary proceedings in patent matters continues at the Federal Court. In Janssen Inc v Pharmascience Inc, the Court:
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First Application of the New Prior Use Defence
On January 7, 2022, the Federal Court released the public reasons in Kobold Corporation v NCS Multistage Inc. This summary judgment motion is the first judicial consideration of the prior use defence since the substantial amendments to section 56 of the Patent Act in 2018. Our comments on the procedural aspects of this summary judgment motion are available in a companion post here.
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Partial Summary Judgment Narrows Patent Infringement Case
The recent patent infringement case of Kobold Corporation v NCS Multistage Inc is interesting for two reasons: (1) it shows how a summary judgment motion can advance a case even if certain issues require a full trial; and (2) it is the first time a court has interpreted the defence of prior use since the 2018 amendments to section 56 of the Patent Act. This post considers the use of summary adjudication. Click here to read our companion post which considers the substance of the prior use defence.
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Lexpert's Top 10 Business Decisions of 2021/2022
In Lexpert's Top 10 Business Decisions of 2021/2022, Lenczner Slaght is featured for its involvement in Li v Barber and Society of Composers, Authors and Music Publishers of Canada v Entertainment Software Association. Monique Jilesen was further interviewed on our involvement in Li v Barber, where our team successfully obtained a precedent-setting Mareva order.
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Lenczner Slaght Stands Out as a “Litigation Powerhouse” in Legal 500 Canada
Canada’s leading litigation firm is once again ranked in Tier 1 for Dispute Resolution by Legal 500 Canada.
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Lenczner Slaght’s Expert IP Team Receives Worldwide Recognition
Canada’s leading litigation firm continues to be recognized for its exceptional Intellectual Property expertise by IAM Patent 1000.
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Legal 500 Highlights Lenczner Slaght’s Litigation Dominance
Legal 500 recognizes Canada’s leading litigation firm as “a regular fixture in the country’s ground-breaking contentious cases”.
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Lenczner Slaght Welcomes New IP Partner
Canada’s leading litigation firm adds Andrew Moeser to its formidable Intellectual Property team.
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A 360 Review of the Amended PMNOC Regulations
Andrew Moeser shared his expertise at the Intellectual Property Institute of Canada's program on "A 360 Review of the Amended PMNOC Regulations".
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Our expert IP litigators, Sana Halwani and Andrew Moeser, were invited to speak at IPIC's Annual Conference.
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IP Culture Shift: The Rise of Summary Disposition
Andrew Moeser authored the Lexpert article "IP Culture Shift: The Rise of Summary Disposition". In this article, Andrew comments on the shift towards summary disposition in Canadian IP litigation.
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Commissioned by the Federal Government (Innovation, Science and Economic Development Canada), Andrew Moeser prepared a report on strategies to integrate and exploit intellectual property for idea-based enterprises.
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A trust approach for sharing research reagents
Andrew Moeser co-authored the article “A trust approach for sharing research reagents”, which was published in Science Translational Medicine: Volume 9, Issue 392.
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Patents and Pills: Linkage, Litigation and Generic Drug Approval
Andrew Moeser lectured at the Faculty of Law, University of Toronto, Pharmaceutical Governance Course.
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Canada: Modernisation and Flux
Andrew Moeser co-authored the article Canada: Modernisation and Flux, which was published in IAM Magazine – IP Value: 2013. The article provided a review of Canada's IP regime, with discussions of the 2012 Copyright legislative reform and Supreme Court decisions, nontraditional Trademarks updates, Canada's unique sound prediction disclosure requirement, and the role of IP in Canada's trade talks.
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Andrew Moeser’s article A shift in the Canadian law of obviousness: a comment on Sanofi- Synthelabo Canada Inc. v. Apotex Inc., was published in the University of Toronto Faculty of Law Review: Volume 67.
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IAM Patent 1000 (2022)
Patent Litigation: Recommended Individual (Bronze)
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The Legal 500 Canada (2022-2023)
Intellectual Property (Recommended Lawyer)