Canada’s deepest and most renowned intellectual property-based legal entity, Smart & Biggar, has etched itself a dominant position in the country’s IP community, most notably in the capacity as true trial lawyers. One peer notes, “More often than not, these cases actually go to court! And Smart & Biggar has a pretty stellar record of winning at trial.” Another sums up the firm’s ethos with the declaration, “There are IP lawyers and there are IP litigators. Smart definitely qualifies for the latter designation.”
The firm is revered for its range of experience covering patents, trademarks and copyrights, each being areas in which the firm has secured some landmark wins. Its celebrated patent practice leans heavily on the pharmaceutical industry, but is far from limited to this area, with a diverse portfolio of patent victories concerning everything from polymers to hockey helmets. One peer confirms, “I’m actually on a case against them right concerning waterslides! They are litigating this hard.” Its trademark practice, meanwhile, has attracted a list of clients that reads like a “Who’s who” of household names. Historically boasting its deepest bench in Ontario, with practitioners of equal horsepower in its offices in Toronto and Ottawa, the firm has recently provided a substantial boost to its Montréal office, which has grown to nearly double the size of just a few years ago. The firm has also made a noted push into the Alberta market, luring one of Calgary’s only IP practitioners, Evan Nuttall, to its bench. Nuttall brings a unique focus on patents in the oil and gas market, although his practice is not limited to this area.
In one of the most substantial and hard-fought pieces of non-pharmaceutical-related patent litigation in Canada as of late, a firm team based in its Ottawa office scored a milestone victory for Dow Chemicals in November 2022 when the Supreme Court of Canada affirmed the record-setting $645 million patent infringement award in the client’s case against Nova. This triumph, which includes is purported to be reported to be the largest Canadian patent award in history, finally puts this hotly contested and long-running sage to an end. Steve Garland, Jeremy Want and
Daniel Davies compose the Smart team behind this matter. Garland and Davies also defend AlumaSafway in trademark litigation involving five asserted marks. This litigation also involves claims and counterclaims under contract, competition law, restrictive covenants, breach of confidence, defamation, and interference with contractual relations. Garland, Davies and Toronto’s Mark Biernacki act for the plaintiff in litigation involving a patent covering a novel and lithium-ion portable automotive battery jump-starter.
Smart & Biggar’s Montréal office has been logging some exceptionally noteworthy wins as well.
François Guay, long a luminary in the Québec IP community, has been at the forefront of some particularly controversial and cutting-edge copyright issues concerning the media and broadcasting industry. Guay represented members of the Motion Picture Association of America, Bell Media, Amazon and Netflix in an interim and interlocutory injunction matter and show-cause contempt proceedings against the operators of the Beast IPTV service, an unauthorized online subscription service that provided access to a vast amount of illegal television content. Guay and Jean-Sébastien Dupont also represented Videotron, laying claim to a rare summary trial for copyright infringement in the Federal Court addressing a specific provision of the Copyright Act that allows for the retransmission of certain over-the-air stations by authorized broadcasters.
