Apotex Inc., et al. v. ADIR, et al.
(Federal) (Civil) (By Leave)
Intellectual property - Patents, Medicines - Intellectual property — Patents — Medicines — Infringement — Remedy — Respondents choosing accounting of profits as remedy for infringement of respondents’ patent — Trial judge determining that applicants not entitled to rely on non infringing alternative defence to accounting of profits to reduce amount payable to respondents — Whether framework for quantifying damages for patent infringement applies to assessing profits to be disgorged by way of an accounting of profits — What is the appropriate framework for assessing non-infringing alternatives in accounting of profits for patent infringement?.
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The respondent, ADIR, is the owner of the 196 Patent which claims the drug perindopril, used primarily in the treatment of hypertension and cardiac insufficiency. The respondent, Servier Canada Inc., is a corporate affiliate of ADIR (collectively, “Servier”) and exploited the 196 Patent in Canada. The applicant, Apotex Pharmachem Inc. manufactures and supplies drugs in Canada. In or around 2006, it began manufacturing a generic version of perindopril in tablet form in Canada that were sold to Apotex Inc., which sold the tablets in Canada and abroad (collectively “Apotex”). In 2006, Servier successfully prosecuted an action against Apotex for infringement of its 196 Patent. This judgment allowed Servier to claim either an accounting of Apotex’s profits or damages. Servier elected an accounting of the profits.
The trial took place where the court was required to determine what proportion of the profits earned by Apotex from its sales of perindopril-containing products to Apotex’s affiliates in Australia and the United Kingdom during the period of infringement were attributable to its infringing activities. Apotex raised as a defence the availability of non infringing perindopril from a number of sources outside of Canada, which would have had the effect of reducing the profits it would have been required to disgorge to the respondents. After the first trial and appeal, the matter was remanded to the Federal Court to consider the non infringing alternative defence with respect to three alleged suppliers. The Federal Court determined that Apotex had not established one component of the defence and that it therefore could not reduce the quantum of profits it was required to disgorge. This decision was upheld on appeal.
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