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Dino Clarizio*

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Dino is a leading intellectual property litigation lawyer in Canada. Dino has practised exclusively in the field of intellectual property law for more than thirty years. He has represented clients in high stakes cases and is the co-author of several leading IP textbooks.
Dino’s work includes all aspects of IP litigation with a focus on patent litigation in the chemical, pharmaceutical and life sciences. Dino has acted as counsel in IP litigation for a variety of different clients, from sole inventors to Fortune 500 companies. He has extensive litigation experience involving all aspects of patent law in Canada, including the law relating to claim construction, infringement, remedies, anticipation, obviousness, and other invalidity issues. Dino has also been counsel on trademark cases involving issues such as confusion, depreciation of goodwill, trade dress infringement, functionality and survey evidence.
In addition to litigating IP disputes, Dino is also a registered patent agent in both Canada and the U.S., and a registered trademark agent in Canada. He was awarded the prize for the top overall marks in the Canadian patent agent qualifying examinations in 1993. Throughout his career, Dino has had a patent prosecution practice spanning all kinds of technologies, with an emphasis on patenting in the chemical, pharmaceutical and biotech industries.
Dino is the co-author of two of the leading textbooks on Canadian patent law, and of an annual consolidation of Canada’s patent laws and regulations. He is also a frequent author and speaker on IP law and litigation, and is involved with the Intellectual Property Institute of Canada, sitting on several committees and presenting at various conferences and seminars. For many years Dino served as a tutor for students writing the annual patent agent exams.
  • Practising through a professional corporation.

Books

  • Co-Author of “Hughes & Woodley on Patents”, 2nd ed. Loose-Leaf Service, since 2007 (LexisNexis), cited by the Supreme Court of Canada and Federal Court of Appeal in, for example:
  • Nova Chemicals Corp. v. Dow Chemical Co., 2022 SCC 43
  • Merck Frosst Canada Ltd. v. Canada (Health), 2012 SCC 3
  • Teva Canada Ltd. v. Pfizer Canada Inc., 2012 SCC 60
  • Bristol-Myers Squibb Co. v. Canada (Attorney General), 2005 SCC 26
  • Monsanto Canada Inc. v. Schmeiser, 2004 SCC 34
  • Eli Lilly Canada Inc. v. Mylan Pharmaceuticals ULC, 2016 FCA 119
  • Bayer Schering Pharma v. Canada (Attorney General), 2010 FCA 275
  • Pfizer Canada Inc. v. Novopharm Limited, 2010 FCA 242
  • Apotex Inc. v. ADIR, 2009 FCA 222
  • Pfizer Canada Inc. v. Canada (Minister of Health), 2008 FCA 108
  • Co-Author of “Patents, Trade Secrets and Industrial Designs” chapter in Halsbury’s Laws of Canada, 1st ed., published in 2007, and Reissues published in 2012, 2016 and 2020 (LexisNexis), cited in, for example:
  • Merck Frosst Canada Ltd. v. Canada (Health), 2012 SCC 3
  • TDC Broadband Inc. v Nova Scotia (Attorney General), 2018 NSCA 22
  • Catalyst Canada Services LP v Catalyst Changers Inc, 2013 ABQB 73
  • Medavie v. PNB (Department of Health), 2018 NBQB 121
  • Co-Author of “Patent Legislation & Commentary”, 2015 to 2023 editions (LexisNexis).
  • Co-Author of “Patents and Trade Secrets” chapter of “Canadian Forms and Precedents”, Butterworths, published since 1992.
  • Original Co-Author of Patents chapter in Dimock, Ronald E., “Intellectual Property – Disputes, Resolutions and Remedies”, Carswell, published December, 2002
  • Original Co-Author of “Intellectual Property” chapter of Commercial Law Guide, CCH Canada, published since 1997.

Selected Reported Cases:

  • Canada (Attorney General) v. Benjamin Moore & Co., 2023 FCA 168
  • Warner Bros. Entertainment Inc. v. White (Beast IPTV), 2023 FC 907
  • IPack B.V. v. McInnes Cooper, 2023 FC 243
  • Allergan Inc. v. Apotex Inc., 2022 FC 260
  • Janssen Inc. v. Apotex Inc., 2022 FC 107
  • Les Laboratoires Servier v. Apotex Inc., 2019 FC 616
  • Gilead Sciences, Inc. v. Canada (Health), 2016 FC 857
  • Gilead Sciences, Inc. v. Canada (Health), 2016 FC 856
  • Allergan Inc. v. Apotex Inc., 2016 FC 344
  • Apotex Inc. v. Allergan Inc., 2014 FC 567 and 2015 FCA 137 (Appeal)
  • Laboratoires Servier v. Canada (Health), 2015 FC 108
  • Alcon Canada Inc. v. Apotex Inc., 2014 FC 791
  • Alcon Canada Inc. v. Apotex Inc., 2014 FC 699
  • Novartis Pharmaceuticals Canada Inc. v. Apotex Inc., 2013 FC 142
  • Alcon Canada Inc. v. Apotex Inc., 2012 FC 410
  • Hoffmann-La Roche Limited v. Apotex Inc., 2011 FC 875
  • Eli Lilly Canada Inc. v. Apotex Inc., 2010 FC 1065
  • Apotex Inc. v. Pfizer Canada Inc., 2010 FC 447 (T.D.) and 2011 FCA 236 (Appeal)
  • Biovail Corporation v. Canada (Health), 2010 FC 46
  • Pfizer Canada Inc. v. Apotex Inc., 2009 FCA 8
  • Ferring Inc. v. Canada (Minister of Health), 2007 FC 300
  • G.D. Searle & Co. v. Novopharm Ltd., 2007 FC 81 (T.D.) and 2007 FCA 173 (Appeal)
  • Bristol-Myers Squibb Canada Co. v. Novopharm Ltd., 2005 FC 1458
  • Pfizer Canada Inc. v. Novopharm Ltd., 2005 FC 1299
  • Novopharm Ltd. v. Pfizer Canada Inc., 2005 FCA 270
  • Kirkbi AG v. Ritvik Holdings Inc., (1998), 81 C.P.R. (3d) 289 (Summary Judgment), (2002) 20 C.P.R. (4th) 224 (Trial) and (2003), 26 C.P.R. (4th) 1 (Appeal)
  • Free World Trust v. Electro Santé Inc., Procter & Gamble, Intervenor, [2000] 2 S.C.R. 1024 (S.C.C.)
  • Camco Inc. v. Whirlpool Corporation: (1995), 65 C.P.R. (3d) 63 (Inter. Injunction), (1997), 72 C.P.R. (3d) 285 (Summary Judgment), (1998), 76 C.P.R. (3d) 150 (Trial) and (1999), 85 C.P.R. (3d) 129 (Appeal)
  • Succession Picasso v. PRC Inc. (1996), 70 C.P.R. (3d) 313 (Inter. Injunction)
  • Proctor & Gamble Inc. v. Unilever PLC (1995), 61 C.P.R. (3d) 499 (Appeal)
  • CFM Inc. v. Wolf Steel Ltd. (1995), 64 C.P.R. (3d) 75 (Appeal)
  • Baker Hughes v. Galvanic Analytical Systems (1991), 37 C.P.R. (3d) 512 (Inter. Injunction)