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39172

Apotex Inc., et al. v. ADIR, et al.

(Federal) (Civil) (By Leave)

Docket

Judgments on applications for leave to appeal are rendered by the Court, but are not necessarily unanimous.

List of proceedings
Date Proceeding Filed By
(if applicable)
2021-09-08 Close file on Leave
2021-09-08 Correspondence (sent by the Court) to, all parties, Re: certificate of taxation
2021-09-02 Certificate of taxation issued to, Judith Robinson
2021-09-02 Decision on the bill of costs, in the amount of $1,021.60, DeRg
2021-09-02 Submission of the bill of costs, DeRg
2021-07-30 Correspondence (sent by the Court) to, parties, from Acting Registrar, Re: response to letter by counsel dated July 22, 2021
2021-07-22 Correspondence received from, Mr. Harry Radomski, Re: response to Acting Registrar letter not accepting reconsideration for filing Apotex Inc.
2021-07-14 Correspondence (sent by the Court) to, parties, by the Acting Registrar, Re: reconsideration not accepted for filing
2021-07-14 Reconsideration not accepted for filing
2021-03-23 Response to the bill of costs, (Letter Form), Completed on: 2021-07-19, (Printed version due on 2021-03-30) Apotex Inc.
2021-03-23 Bill of costs, (Book Form), Completed on: 2021-07-19, (Printed version due on 2021-03-30) ADIR
2021-03-03 Letter acknowledging receipt of a complete motion for reconsideration
2020-12-02 Correspondence received from, in response to applicant's reply ADIR
2020-12-01 Reply to motion for reconsideration of the application for leave to appeal, Completed on: 2021-03-01 Apotex Inc.
2020-11-30 Response to motion for reconsideration of the application for leave to appeal, Completed on: 2021-03-01 ADIR
2020-11-27 Motion for reconsideration of the application for leave to appeal, (Book Form), Completed on: 2021-03-01 Apotex Inc.
2020-09-25 Copy of formal judgment sent to Registrar of the Court of Appeal and all parties
2020-09-25 Judgment on leave sent to the parties
2020-09-24 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-128-18, 2020 FCA 60, dated March 11, 2020, is dismissed with costs.
Dismissed, with costs
2020-09-22 Correspondence received from, (Letter Form), Responding to correspondence received 2020-09-21 ADIR
2020-09-21 Correspondence received from, (Letter Form), Counsel for the Applicant writes to bring the Court's attention to the recent decision of the FCA in 2020 FCA 141 Apotex Inc.
2020-08-17 All materials on application for leave submitted to the Judges, for consideration by the Court
2020-08-11 Certificate (on limitations to public access), (Letter Form), 23B-Reply Apotex Inc.
2020-08-10 Applicant's reply to respondent's argument, (Book Form), required: 23B to accompany reply (rec'd 2020/085/11), Completed on: 2020-08-11 Apotex Inc.
2020-07-30 Certificate (on limitations to public access), (Letter Form), 23B ADIR
2020-07-30 Certificate (on limitations to public access), (Letter Form), 23A ADIR
2020-07-30 Notice of name, (Letter Form) ADIR
2020-07-30 Respondent's response on the application for leave to appeal, (Book Form), Completed on: 2020-07-30 ADIR
2020-06-09 Correspondence received from, (Letter Form), respondents will file a response to the application for leave in this matter, but additional time is required in light of COVID-19 ADIR
2020-05-20 Letter acknowledging receipt of a complete application for leave to appeal, FILE OPENED 2020-05-20
2020-05-20 Certificate (on limitations to public access), (Letter Form), 23B
required: amended 23B (rec'd 2020/05/20)
Apotex Inc.
2020-05-20 Certificate (on limitations to public access), (Letter Form), 23A Apotex Inc.
2020-05-20 Notice of name, (Letter Form) Apotex Inc.
2020-05-11 Application for leave to appeal, (Book Form), required:
-amended 23B (rec'd 2020/05/20)
-amended application (rec'd 2020/05/21), Completed on: 2020-05-20
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

Main parties - Appellants
Name Role Status
Apotex Inc. Applicant Active
Apotex Pharmachem Inc. Applicant Active

v.

Main parties - Respondents
Name Role Status
ADIR Respondent Active
Servier Canada Inc. Respondent Active

Counsel

Party: Apotex Inc.

Counsel
Harry B. Radomski
Nando DeLuca
Benjamin Hackett
Goodmans LLP
Bay Adelaide Centre
333 Bay Street, Suite 3400
Toronto, Ontario
M5H 2S7
Telephone: (416) 597-4142
Email: hradomski@goodmans.ca
Agent
Christopher C. Rootham
Nelligan O'Brien Payne LLP
66 Slater St
Suite 1900
Ottawa, Ontario
K1P 5H1
Telephone: (613) 231-8311
FAX: (613) 788-3667
Email: christopher.rootham@nelliganlaw.ca

Party: Apotex Pharmachem Inc.

Counsel
Harry B. Radomski
Nando DeLuca
Benjamin Hackett
Goodmans LLP
Bay Adelaide Centre
333 Bay Street, Suite 3400
Toronto, Ontario
M5H 2S7
Telephone: (416) 597-4142
Email: hradomski@goodmans.ca
Agent
Christopher C. Rootham
Nelligan O'Brien Payne LLP
66 Slater St
Suite 1900
Ottawa, Ontario
K1P 5H1
Telephone: (613) 231-8311
FAX: (613) 788-3667
Email: christopher.rootham@nelliganlaw.ca

Party: ADIR

Counsel
Judith Robinson
Joanne Chriqui
Norton Rose Fulbright Canada LLP
1 Place Ville Marie
Suite 2500
Montréal, Quebec
H3B 1R1
Telephone: (514) 847-4747
FAX: (514) 286-5474
Email: judith.robinson@nortonrose.com
Agent
Matthew Halpin
Norton Rose Fulbright Canada LLP
45 O'Connor Street
Suite 1500
Ottawa, Ontario
K1P 1A4
Telephone: (613) 780-8654
FAX: (613) 230-5459
Email: matthew.halpin@nortonrosefulbright.com

Party: Servier Canada Inc.

Counsel
Judith Robinson
Joanne Chriqui
Norton Rose Fulbright Canada LLP
1 Place Ville Marie
Suite 2500
Montréal, Quebec
H3B 1R1
Telephone: (514) 847-4747
FAX: (514) 286-5474
Email: judith.robinson@nortonrose.com
Agent
Matthew Halpin
Norton Rose Fulbright Canada LLP
45 O'Connor Street
Suite 1500
Ottawa, Ontario
K1P 1A4
Telephone: (613) 780-8654
FAX: (613) 230-5459
Email: matthew.halpin@nortonrosefulbright.com

Summary

Keywords

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?

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 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.

Lower court rulings

June 18, 2015
Federal Court

2015 FC 721 ;, T-1548-06 ;

Applicants ordered to pay respondents profits attributable to infringement of respondents’ patent


March 28, 2018
Federal Court

2018 FC 346 ;, T-1548-06 ;

See file (this decision located in authorities)

March 11, 2020
Federal Court of Appeal

2020 FCA 60 ;, A-128-18 ;

Applicants’ appeal 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

Not available

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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Webcasts

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Date modified: 2025-05-21