Brian R. Daley

Partner
Norton Rose Fulbright Canada LLP

Brian R. Daley

Brian R. Daley

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Biography

Brian Daley is a Montreal-based patent litigator who has been practising for over 25 years. He has particular experience in regulatory matters and litigation involving mechanical, medical device and pharmaceutical patents. More recently, Brian has become involved in arbitration in the pharmaceutical field. He is known to support clients by "inspiring confidence through years of expertise" and "controlling the courtroom." An opposing counsel once observed that Brian is "better prepared than any other lawyer he faces in Court." These are a few of the reasons why Brian is asked to act as lead counsel on complex patent litigation and has been recognized as one of Canada's leading lawyers in this area. 

Prior to studying law, Brian worked as an engineer for four years. In addition to helping him understand complex technology, it instilled his systematic approach to litigation. Brian uses legal project management to track budgets and report monthly to clients. He also sets up collaboration portals directly with clients to share information and provide up-to-the-minute information on the status of files.

Brian led a team that obtained an important victory in the Federal Court of Appeal in defence of a patent infringement action against a Canadian company specializing in dry eye diagnosis and management. The ensuing decisions are often cited for their precedential value on  interlocutory injunctions and patent validity. While Brian has led many successful cases before the courts, he understands that resolving disputes at opportune moments and on favourable terms is often a better solution than a trial.   

Brian is a frequent presenter to professional organizations and companies as well as a contributor to publications in the intellectual property and regulatory fields in North America and Europe. He supports the United Way as co-chair of the firm's annual campaign and is involved in the firm's management.


Professional experience

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LL.B./B.C.L., McGill University, 1993
M.A.Sc., Technical University of Nova Scotia, 1985
B.Eng., Mechanical Engineering, Memorial University, 1983
  • Quebec 1994
  • Canada (trademarks) 1995
  • Professional Engineer, Ontario 1986

 

  • Mr. Daley is counsel to major pharmaceutical companies such as AstraZeneca, Cephalon, DuPont, Elan, Gilead, GlaxoSmithKline, Merck & Co., Pfizer, sanofi-aventis and Servier. He advises them on intellectual property, data protection and regulatory compliance
  • Mr. Daley advises clients in the aerospace and refrigeration industries and in 2015 completed an important trial for a client in this industry

Recent decisions of note in which Mr. Daley has acted include: 

  • TearLab Corporation v. I-MED Pharma Inc. and The Regents of the University of California, 2018 FC 164  (court file T-300-16). Represented I-MED Pharma Inc. in its successful defence of an action for patent infringement brought by TearLab Corporation. I-MED successfully asserted that the claims of TearLab's patent that were allegedly infringed were invalid for obviousness and lack of novelty. I-MED also won an order entitling it to recover its costs and disbursements from TearLab. 
  • TearLab Corporation v. I-MED Pharma Inc. and The Regents of the University of California, 2017 FCA 8 (court file A-199-16) appealing 2016 FC 606 (court file T-300-16). Represented I-MED Pharma Inc. as lead counsel in the appeal of judgments dismissing interlocutory and interim injunctions in a medical device patent infringement action
  • Gilead Sciences, Inc. et al v. The Minister of Health and Apotex Inc, 2016 FC 857 (court file T-1694-14). Represented Gilead as co-lead counsel in an application to prevent a generic drug company from coming to market with a generic version of an important anti-HIV drug prior to patent expiry
  • Toromont Industries Limited v Carnot Réfrigération Inc., (court file T-393-13). Represented Toromont in English and French in a patent infringement trial in April 2015
  • Merck & Co., et al v Apotex Inc. (court file T-2792-96). Acted for Merck and AstraZeneca in a damages reference after successfully suing Apotex for patent infringement
  • Gilead Sciences, Inc. v Teva Canada Limited, 2013 FC 1270. Obtained an order prohibiting the minister of health from issuing marketing authorization (notice of compliance) to Teva in respect of various drugs containing tenofovir disoproxil fumarate
  • Apotex Inc. v Pfizer Canada Inc., 2013 FC 493. Acted for Pfizer in defence of a claim for damages under s. 8 of the Patented Medicines (Notice of Compliance) Regulations
  • Apotex Inc. v Merck & Co., Inc. 2010 FC 287. Acted for Merck in a claim for damages under section 8 of the Patented Medicines (Notice of Compliance) Regulations. Successfully limited the period during which Apotex claimed damages

 

  • Lexpert Special Edition: Technology 2021
  • Lexpert Special Edition: Health Sciences 2021
  • Who's Who Legal: Canada - Life Sciences, Patents 2010-2011, 2014-2015, 2017, 2020
  • Canadian Legal Lexpert Directory, 2013-2022: recommended in Life Sciences & Health; 2017-2022: recommended in Intellectual Property; 2013-2014, 2018-2022: recommended in Litigation - Intellectual Property
  • Chambers Canada, Nationwide: Intellectual Property: Litigation, Chambers and Partners, 2022
  • Chambers Global, Canada: Intellectual Property: Litigation, Chambers and Partners, 2022
  • LMG Life Sciences (2017)
  • Co-lead counsel for Gilead in litigation against Apotex that was chosen as one of the top three "Canadian IP Impact Cases of the Year" for 2016 by LMG Life Sciences
  • Best Lawyers in Canada: Intellectual property law, 2013-2022
  • Who's Who Legal: Life Sciences 2016
  • IAM Patent 1000: World’s Leading Patent Professionals (2012, 2015, 2017, 2019, 2021)
  • The International Who’s Who of Life Sciences Lawyers (2012-2013)
  • The International Who’s Who of Patents Lawyers (2011-2013)
  • The World’s Leading Patent Litigators (2011)
  • Guide to the World’s Leading Patent Law Practitioners
  • IAM Life Sciences 250: The World’s Leading Life Sciences Patent Litigators (2010)
  • "Patent Case Law Series 2022/Claim Construction," Intellectual Property Institute of Canada webinar, presenter, March 8, 2022.
  • "Year in Review in IP Law / Patent Law," Intellectual Property Institute of Canada webinar, moderator, February 8, 2022.
  • Testimony before the House of Commons' Standing Committee on International Trade in view of its study entitled "Canada's International Trade and Investment Policy: Selected Considerations Concerning COVID-19 Vaccines," April 19, 2021.
  • "Is it Really So Obvious?  Recent Struggles to Apply the Sanofi Test for Obviousness" (co-presenter with David Turgeon), Intellectual Property Institute of Canada webinar, November 19, 2019.
  • "Unpacking Canada's New & Improved Intellectual Property Legislation: What's New, What's Changed and What It Means for You," AIPLA Annual Meeting, Washington, DC, October 25, 2019.
  • "Damages or Accounting of Profits - A Valuator's Guide,"  Intellectual Property Institute of Canada webinar (co-presenter with Jeff Pellarin and Denise Lacombe) February 26, 2018.
  • "Interlocutory Injunctions: The Unicorns of Patent Law,"  Intellectual Property Institute of Canada webinar (co-presenter with Professor Norman Siebrasse), November 10, 2017.
  • “Practice Tips from the Court and Bar,” IPIC Annual Meeting, Gatineau, QC, September 27, 2013.
  • “Does the doctrine of sound prediction prevent smart people from patenting their inventions in Canada?” IPIC Annual Meeting, Chicago, September 15, 2011.
  • Legal Project Management for Litigators (co-host: Ann Gomez, Clear Concept Inc.), Canadian Bar Association webinar, Toronto, September 14, 2011.
  • Canadian Bar Association
    • Member, National Intellectual Property Section Executive
  • Intellectual Property Institute of Canada
    • Past chair, Montreal Informals Committee
  • American Intellectual Property Law Association
    • Professional Programs Committee
  • International Association for the Protection of Intellectual Property
  • Professional Engineers of Ontario

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