Case information
Conduct a refined search of the Supreme Court of Canada database to obtain details on the status of a matter before the Court.
36655
Apotex Inc., et al. v. Merck & Co. Inc., et al.
(Federal) (Civil) (By Leave)
(Sealing order)
Docket
Judgments on applications for leave to appeal are rendered by the Court, but are not necessarily unanimous.
| Date | Proceeding | Filed By (if applicable) |
|---|---|---|
| 2016-04-19 | Close file on Leave | |
| 2016-04-15 | Copy of formal judgment sent to Registrar of the Court of Appeal and all parties | |
| 2016-04-15 | Judgment on leave sent to the parties | |
| 2016-04-14 |
Judgment of the Court on the application for leave to appeal, The applications for leave to appeal from the judgments of the Federal Court of Appeal, in docket Number A-242-13, 2015 FCA 171, dated July 23, 2015, and November 6, 2015, are both dismissed with costs. Dismissed, with costs |
|
| 2016-02-29 | All materials on application for leave submitted to the Judges, CJ Mo Ga | |
| 2016-02-18 | Applicant's reply to respondent's argument, (Book Form), SECOND APPLICATION., Completed on: 2016-02-18, (Electronic version filed on 2016-02-18) | Apotex Inc. |
| 2016-02-08 | Notice of name, (Letter Form), (Electronic version filed on 2016-02-08) | Merck & Co. Inc. |
| 2016-02-08 | Certificate (on limitations to public access), (Letter Form), (Electronic version filed on 2016-02-08) | Merck & Co. Inc. |
| 2016-02-08 | Respondent's response on the application for leave to appeal, (Book Form), SECOND APPLICATION., Completed on: 2016-02-08, (Electronic version filed on 2016-02-08) | Merck & Co. Inc. |
| 2016-01-13 | Letter acknowledging receipt of a complete application for leave to appeal, SECOND APPLICATION. | |
| 2016-01-06 | Notice of application for leave to appeal, (Letter Form), SECOND APPLICATION., Completed on: 2016-01-06, (Electronic version filed on 2016-01-06) | Apotex Inc. |
| 2016-01-05 | Notice of name, (Letter Form), (Electronic version filed on 2016-01-06) | Apotex Inc. |
| 2016-01-05 | Certificate (on limitations to public access), (Letter Form), Amended certificate received 2016-01-22., (Electronic version filed on 2016-01-06) | Apotex Inc. |
| 2016-01-05 | Application for leave to appeal, (Book Form), (4 volumes), SECOND APPLICATION : 6 Sealed envelope of Protected documents containing tabs 11C, D & E., Completed on: 2016-01-05, (Electronic version filed on 2016-01-06) | Apotex Inc. |
| 2015-11-12 | Correspondence received from, (Letter Form), Cousel for the Respondents re: motion for reconsideration of the Judment from which leave to appeal is sought was dismissed., (Electronic version filed on 2015-11-12) | Merck & Co. Inc. |
| 2015-11-12 | Applicant's reply to respondent's argument, (Book Form), Completed on: 2015-11-16, (Electronic version filed on 2015-11-12) | Apotex Inc. |
| 2015-11-02 | Respondent's response on the application for leave to appeal, (Book Form), Completed on: 2015-11-02, (Electronic version filed on 2015-11-02) | Merck & Co. Inc. |
| 2015-11-02 | Certificate (on limitations to public access), (Letter Form), (Electronic version filed on 2015-11-02) | Merck & Co. Inc. |
| 2015-11-02 | Notice of name, (Letter Form), (Electronic version filed on 2015-11-02) | Merck & Co. Inc. |
| 2015-10-30 | Correspondence received from, Heather Hill dated 2015-10-30. Re: Christopher Rootham will be acting as agent for the applicants | Apotex Inc. |
| 2015-10-01 | Letter acknowledging receipt of an incomplete application for leave to appeal, FIRST APPLICATION : file opened 2015-10-01. | |
| 2015-09-29 | Certificate (on limitations to public access), (Letter Form), (Electronic version filed on 2015-09-29) | Apotex Inc. |
| 2015-09-29 | Notice of name, (Letter Form), (Electronic version filed on 2015-09-29) | Apotex Inc. |
| 2015-09-29 | Application for leave to appeal, (Book Form), (3 volumes), FIRST APPLICATION : Sealed envelope containing Tab 9J. Service by E-mail consented by counsel for Respondent, Merck 2015-10-05., Completed on: 2015-10-05, (Electronic version filed on 2015-09-29) | 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 |
| Apotex Fermentation Inc. | Applicant | Active |
v.
| Name | Role | Status |
|---|---|---|
| Merck & Co. Inc. | Respondent | Active |
| Merck Canada Inc. | Respondent | Active |
Counsel
Party: Apotex Inc.
Counsel
3400 - 333 Bay Street
Toronto, Ontario
M5H 2S7
Telephone: (416) 979-2211
FAX: (416) 979-1234
Email: hradomski@goodmans.ca
Agent
1500-50 O'Connor Street
Ottawa, Ontario
K1P 6L2
Telephone: (613) 231-8311
FAX: (613) 788-3667
Email: christopher.rootham@nelligan.ca
Party: Apotex Fermentation Inc.
Counsel
400 St. Mary Ave
9th Floor
Winnipeg, Manitoba
R3C 4K5
Telephone: (204) 949-1312
FAX: (204) 957-0945
Email: jamyers@tmlawyers.com
Agent
1500-50 O'Connor Street
Ottawa, Ontario
K1P 6L2
Telephone: (613) 231-8311
FAX: (613) 788-3667
Email: christopher.rootham@nelligan.ca
Party: Merck & Co. Inc.
Counsel
Steven Mason
David Tait
Brandon Kain
Box 48, Suite 4700
Toronto Dominion Bank Tower
Toronto, Ontario
M5K 1E6
Telephone: (416) 362-1812
FAX: (416) 868-0673
Agent
160 Elgin Street, Suite 2600
Ottawa, Ontario
K1P 1C3
Telephone: (613) 786-0171
FAX: (613) 563-9869
Email: jeff.beedell@gowlingwlg.com
Party: Merck Canada Inc.
Counsel
Steven Mason
David Tait
Brandon Kain
Box 48, Suite 4700
Toronto Dominion Bank Tower
Toronto, Ontario
M5K 1E6
Telephone: (416) 362-1812
FAX: (416) 868-0673
Agent
160 Elgin Street, Suite 2600
Ottawa, Ontario
K1P 1C3
Telephone: (613) 786-0171
FAX: (613) 563-9869
Email: jeff.beedell@gowlingwlg.com
Summary
Keywords
None.
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.
(SEALING ORDER)
Intellectual property — Patents — Medicines — Patent infringement — Calculation of damages — Patentee awarded damages for patent infringement — What is correct legal framework applicable to damages awarded pursuant to s. 55(1) of Patent Act, R.S.C. 1985, c. P-4 — Whether defendant’s ability to compete legally in “but for” world relevant only if alternatives available to defendant are “instantaneously available” at exact moment of first infringement.
The respondents (collectively, “Merck”) own the product-by-process 380 patent for the anti-cholesterol drug lovastatin (“AFI-1 process”), which they sold in Canada under the trade name Mevacor. The patent was issued to Merck in 1984 and expired on January 31, 2001. In 1993, the applicants (collectively, “Apotex”) applied to the Minister of Health for a notice of compliance that would enable it to market a generic version of lovastatin in Canada. Apotex alleged it would not infringe the patent because it would use a process to produce lovastatin that would not fall within the scope of the patent (“AFI-4 process”). A notice of compliance was issued to Apotex on March 27, 1997. Later that year, Merck commenced an action against Apotex alleging infringement of the 380 patent. After a lengthy trial, the patent was held to be valid and infringed by Apotex. The judge found that Merck was entitled to compensatory damages rather than an accounting of profits. Following the exhaustion of all rights of appeal relating to the liability phase, the judge found that Merck was entitled to a total damages award of $119,054,327, plus pre-judgment and post-judgment interest. The judge rejected the argument advanced by Apotex that the availability of non-infringing lovastatin should be taken into account in assessing damages. This decision was upheld on appeal.
Lower court rulings
Federal Court
T-1272-97, 2010 FC 1265
Respondents’ action for patent infringement allowed; applicants’ counter-claims dismissed.
Federal Court
T-1272-97, 2013 FC 751
Respondents awarded damages of $119,054,327 for patent infringement.
Federal Court of Appeal
A-242-13, 2015 FCA 171
Applicants’ appeal dismissed.
Federal Court of Appeal
A-242-13
Applicants’ motion for reconsideration dismissed.
Memorandums of argument on application for leave to appeal
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 filing 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 613‑996‑7933 or at 1‑888‑551‑1185.
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
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Related links
Factums on appeal
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 613‑996‑7933 or at 1‑888‑551‑1185.
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
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