Case information
Consult our database for details on a Supreme Court of Canada case.
38485
Apotex Inc. v. Eli Lilly and Company, et al.
(Federal) (Civil) (By Leave)
Docket
Judgments on applications for leave to appeal are rendered by the Court, but are not necessarily unanimous.
| Date | Proceeding | Filed By (if applicable) |
|---|---|---|
| 2019-06-03 | Close file on Leave | |
| 2019-05-24 | Copy of formal judgment sent to Registrar of the Court of Appeal and all parties | |
| 2019-05-24 | Judgment on leave sent to the parties | |
| 2019-05-23 |
Judgment of the Court on the application for leave to appeal, The application for leave to appeal from the judgment of the Federal Court of Appeal, Number A-64-15, 2018 FCA 217, dated November 23, 2018, is dismissed with costs. Dismissed, with costs |
|
| 2019-04-23 | All materials on application for leave submitted to the Judges, for consideration by the Court | |
| 2019-03-14 | Applicant's reply to respondent's argument, (Book Form), new covers and 23B required-rec'd 2019/03/21, Completed on: 2019-03-21 | Apotex Inc. |
| 2019-03-04 | Certificate (on limitations to public access), (Letter Form), 23B | Eli Lilly and Company |
| 2019-03-04 | Certificate (on limitations to public access), (Letter Form), 23A | Eli Lilly and Company |
| 2019-03-04 | Notice of name, (Letter Form) | Eli Lilly and Company |
| 2019-03-04 | Respondent's response on the application for leave to appeal, (Book Form), Completed on: 2019-03-04 | Eli Lilly and Company |
| 2019-01-31 | Letter acknowledging receipt of a complete application for leave to appeal, FILE OPENED 2019/01/31 | |
| 2019-01-24 | Book of authorities, (Book Form), (2 volumes), Completed on: 2019-01-24 | Apotex Inc. |
| 2019-01-22 | Certificate (on limitations to public access), (Letter Form), 23B | Apotex Inc. |
| 2019-01-22 | Certificate (on limitations to public access), (Letter Form), 23A | Apotex Inc. |
| 2019-01-22 | Notice of name, (Letter Form) | Apotex Inc. |
| 2019-01-22 | Application for leave to appeal, (Book Form), (3 volumes), Completed on: 2019-01-22 | Apotex Inc. |
Parties
Please note that in the case of closed files, the “Status” column reflects the status of the parties at the time of the proceedings. For more information about the proceedings and about the dates when the file was open, please consult the docket of the case in question.
Main parties
| Name | Role | Status |
|---|---|---|
| Apotex Inc. | Applicant | Active |
v.
| Name | Role | Status |
|---|---|---|
| Eli Lilly and Company | Respondent | Active |
| Eli Lilly Canada Inc. | Respondent | Active |
Counsel
Party: Apotex Inc.
Counsel
Sandon Shogilev
Bay Adelaide Centre
333 Bay Street, Suite 3400
Toronto, Ontario
M5H 2S7
Telephone: (416) 597-4142
Email: hradomski@goodmans.ca
Agent
50 O'Connor Street
Suite 300
Ottawa, Ontario
K1P 6L2
Telephone: (613) 231-8311
FAX: (613) 788-3667
Email: christopher.rootham@nelliganlaw.ca
Party: Eli Lilly and Company
Counsel
Adam Heckman
Suite 2600, Box 466
160 Elgin Street - Stn. D.
Ottawa, Ontario
K1P 1C3
Telephone: (613) 232-1781
FAX: (613) 563-9869
Email: Anthony.creber@gowlingwlg.com
Party: Eli Lilly Canada Inc.
Counsel
Adam Heckman
Suite 2600, Box 466
160 Elgin Street - Stn. D.
Ottawa, Ontario
K1P 1C3
Telephone: (613) 232-1781
FAX: (613) 563-9869
Email: Anthony.creber@gowlingwlg.com
Summary
Keywords
Intellectual property — Patents — Medicines — Infringement — Damages — Damages assessed for patent infringement — Whether awarding damages for non infringing acts is commensurate with policy objectives of Patent Act and principle remoteness — Whether it is appropriate to assume that party would not have made non infringing sales that were made in real world when constructing but for world — What is non infringing alternative and when should it be considered?
Summary
Case summaries are prepared by the Office of the Registrar of the Supreme Court of Canada (Law Branch). Please note that summaries are not provided to the Judges of the Court. They are placed on the Court file and website for information purposes only.
The respondents (collectively, “Lilly”) own eight Canadian patents for the processes related to the making of a key intermediate compound required to make the antibiotic, cefaclor, a drug used to treat certain bacterial infections. In 1993, Apotex filed a Notice of Compliance (“NOC”) submission for its generic version of cefaclor with Health Canada. Lilly’s application for an order prohibiting Apotex from selling its cefaclor product in Canada was dismissed. Apotex obtained its NOC for Apo cefaclor in January 1997 and began selling it in Canada. Apotex had two suppliers of cefaclor: South Korean Kyong Bo Chemical Ltd. (“Kyong Bo”) and Lupin Laboratories Ltd. (“Lupin”) of India. Apotex received batches of commercial Kyong Bo and Lupin 1 cefaclor. In 1998, Apotex received a shipment of “Lupin 2 cefaclor”.
Lilly instituted an action for infringement. At the liability trial, the court found that Lilly patents were valid and infringed by Apotex as a result of its importation and use of the Kyong Bo and Lupin 1 cefaclor. The Lupin 2 cefaclor was not found to be infringing. Lilly then elected to proceed by way of a trial on the issue of damages. The Federal Court ordered Apotex to pay Lilly $31,234,000.00 in damages pursuant to s. 55(1) of the Patent Act, R.S.C. 1985, c. P 4. Lilly was also awarded $75,040,649.00 in prejudgment compound interest. Apotex appealed. The Court of Appeal upheld the award of s. 55 damages but remitted the award of compound interest to the trial judge for reconsideration.
Lower court rulings
Federal Court
T-1321-97, 2014 FC 1254
Damages for patent infringement awarded to respondent
Federal Court of Appeal
A-64-15, 2018 FCA 217
Applicant’s appeal dismissed except with respect to award of interest; Interest issue remitted to trial judge for reconsideration
Filed documents
The memorandums of argument on an application for leave to appeal will be posted here 30 days after leave to appeal has been granted unless they contain personal information, information that is subject to a publication ban, or any other information that is not part of the public record. You may also obtain copies of the memorandum by filling out the Request for Court records form or by contacting the Court’s Records Centre either by email at records-dossiers@scc-csc.ca or by telephone at 613-996-8666 or at 1-844-365-9662.
If you have questions about a memorandum of argument or want to use a memorandum of argument, please contact the author of the memorandum of argument directly. Their name appears at the end of the memorandum of argument. The contact information for counsel is found in the “Counsel” tab of this page.
Downloadable PDFs
Not available
Related links
The factums of the appellant, the respondent and the intervener will be posted here at least 2 weeks before the hearing unless they contain personal information, information that is subject to a publication ban, or any other information that is not part of the public record. You may also obtain copies of factums by filling out the Request for Court records form or by contacting the Court’s Records Centre either by email at records-dossiers@scc-csc.ca or by telephone at 613-996-8666 or at 1-844-365-9662.
If you have questions about a factum or want permission to use a factum, please contact the author of the factum directly. Their contact information appears on the first page of each factum.
Downloadable PDFs
Not available
Related links
The condensed books of the appellant, the respondent and the intervener will be posted here upon receipt of the electronic version, 2 days prior to the scheduled appeal hearing. You may also obtain copies of condensed books by filling out the Request for Court records form or by contacting the Court’s Records Centre either by email at records-dossiers@scc-csc.ca or by telephone at 613-996-8666 or at 1-844-365-9662.
If you have questions about a condensed book or want permission to use a condensed book, please contact the author of the condensed book directly. Their contact information appears on the first page of each condensed book.
Downloadable PDFs
Not available