Case information
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37368
Apotex Inc. v. Eli Lilly Canada Inc., 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) |
|---|---|---|
| 2017-12-18 | Close file on Leave | |
| 2017-12-15 | Discontinuance of the bill of costs, Correspondence received from Christina Christie (by email). The respondents will not proceed with the taxation of the costs. | Eli Lilly Canada Inc. |
| 2017-11-28 | Correspondence received from, (Letter Form), Christina Christie (by email). Status of the taxation. | Eli Lilly Canada Inc. |
| 2017-11-24 | Bill of costs, (Letter Form), Completed on: 2017-11-24 | Eli Lilly Canada Inc. |
| 2017-04-28 | Copy of formal judgment sent to Registrar of the Court of Appeal and all parties | |
| 2017-04-28 | Judgment on leave sent to the parties | |
| 2017-04-27 |
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-330-15, 2016 FCA 267, dated November 4, 2016, is dismissed with costs to the respondents, Eli Lilly Canada Inc. and Icos Corporation. Dismissed, with costs |
|
| 2017-04-12 | Correspondence received from, H.B. Radomski dated 2017-04-11. Re: Submission of a new authority (2017 FC 296) - Submitted to the Court on 2017-04-19 | Apotex Inc. |
| 2017-03-13 | All materials on application for leave submitted to the Judges, for consideration by the Court | |
| 2017-02-14 | Certificate (on limitations to public access) | Apotex Inc. |
| 2017-02-14 | Applicant's reply to respondent's argument, (Book Form), Completed on: 2017-02-14 | Apotex Inc. |
| 2017-02-06 | Certificate (on limitations to public access) | Eli Lilly Canada Inc. |
| 2017-02-06 | Notice of name | Eli Lilly Canada Inc. |
| 2017-02-06 | Respondent's response on the application for leave to appeal, (Book Form), Completed on: 2017-02-06 | Eli Lilly Canada Inc. |
| 2017-01-13 | Respondent's response on the application for leave to appeal, (Letter Form), Will not be filing a response, Completed on: 2017-01-13 | Minister of Health |
| 2016-12-29 | Letter acknowledging receipt of a complete application for leave to appeal, File opened on 2016-12-29 | |
| 2016-12-28 | Certificate (on limitations to public access) | Apotex Inc. |
| 2016-12-28 | Notice of name | Apotex Inc. |
| 2016-12-28 | Application for leave to appeal, (Book Form), (4 volumes), Completed on: 2016-12-28 | 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 Canada Inc. | Respondent | Active |
| Icos Corporation | Respondent | Active |
| Minister of Health | Respondent | Active |
Counsel
Party: Apotex Inc.
Counsel
Andrew R. Brodkin
Jordan Scope
3400 - 333 Bay Street
Toronto, Ontario
M5H 2S7
Telephone: (416) 979-2211
FAX: (416) 979-1234
Email: hradomski@goodmans.ca
Agent
300 - 50 O'Connor Street
Ottawa, Ontario
K1P 6L2
Telephone: (613) 231-8311
FAX: (613) 788-3667
Email: christopher.rootham@nelligan.ca
Party: Eli Lilly Canada Inc.
Counsel
Chantal J. Saunders
World Exchange Plaza
1300-100 Queen Street
Ottawa, Ontario
K1P 1J9
Telephone: (613) 369-4782
FAX: (613) 230-8842
Agent
World Exchange Plaza
100 Queen Street, suite 1300
Ottawa, Ontario
K1P 1J9
Telephone: (613) 787-3562
FAX: (613) 230-8842
Email: neffendi@blg.com
Party: Icos Corporation
Counsel
Chantal J. Saunders
World Exchange Plaza
1300-100 Queen Street
Ottawa, Ontario
K1P 1J9
Telephone: (613) 369-4782
FAX: (613) 230-8842
Agent
World Exchange Plaza
100 Queen Street, suite 1300
Ottawa, Ontario
K1P 1J9
Telephone: (613) 787-3562
FAX: (613) 230-8842
Email: neffendi@blg.com
Party: Minister of Health
Counsel
Exchange Tower
130 King Street West, Suite 3400
Toronto, Ontario
M5X 1K6
Telephone: (416) 973-5996
FAX: (416) 973-5004
Agent
50 O'Connor Street, Suite 500, Room 557
Ottawa, Ontario
K1A 0H8
Telephone: (613) 670-6290
FAX: (613) 954-1920
Email: christopher.rupar@justice.gc.ca
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.
Intellectual property – Patents – Medicines – Invalidity – Double patenting – Holder of patent for tadalafil seeking to prohibit generic manufacturer from selling its generic version of drug until after expiry of patent – Whether there is appellate-level contradiction regarding how obviousness-type double patenting should be assessed, including the correct date of assessment.
Apotex Inc. sought a Notice of Compliance (“NOC”) from the Minister of Health to market its generic version of tadalafil, a drug used to treat, inter alia, erectile dysfunction (“ED”) Eli Lilly markets tadalafil under its brand name, Cialis. Its 784 Patent is listed against Cialis on the Patent Register. Apotex served Eli Lilly with its Notice of Allegation on August 16, 2013, alleging that the 784 Patent was invalid on several grounds. Eli Lilly filed an application to prohibit the Minister from issuing a NOC to Apotex until after the expiry of the 784 Patent on July 11, 2016. Apotex argued that the 784 Patent was invalid because it was an impermissible double patenting of the invention claimed in the earlier 377 Patent. That patent was also licenced to Eli Lilly and pertained to a number of compounds including tadalafil for use as a medicine in humans. Apotex also alleged that the 784 Patent was invalid for insufficiency because it failed to provide guidance on how to produce hydrate forms of the compounds claimed.
Lower court rulings
Federal Court
T-1598-13, 2015 FC 875
Respondent’s application for order of prohibition granted
Federal Court of Appeal
A-330-15, 2016 FCA 267
Applicant’s appeal dismissed
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
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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
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