Apotex Inc. v. H. Lunbeck A/S

Apotex Inc. v. H. Lunbeck A/S

The Court held patent 1,339,452 valid and each claim upheld: (+)-Citalopram was not anticipated and was not obvious to the person skilled in the art in 1988; alleged inutility (Pamoic salt toxicity) was not established; insufficiency allegations (including human-test statement and claim 7) failed; sound prediction arguments did not vitiate the patent. Defendants infringed (admitted if patent valid). Equitable relief awarded: accounting of profits (Apotex Inc. CAD 1,410,906.21; Apotex Pharmachem Inc. CAD 304,177.38), punitive damages denied, permanent injunction until patent expiry (9 Sep 2014), delivery-up/destruction protocol to be agreed, prejudgment interest fixed (Apotex from 1 Jan...

Citation
2013 FC 192
Parties
Plaintiff; Defendant by Counterclaim: Apotex Inc.; Defendant; Plaintiff by Counterclaim: H. Lundbeck A/S; Defendant by Counterclaim: Apotex Pharmachem Inc.
Court
Federal Court
Jurisdiction
Canada
Judgment Date
26 February 2013
Procedural Posture
Patent Invalidity and Infringement (impeachment and Counterclaim) / Trial Judgment on the Merits (reasons for Judgment)
Outcome
Patent 1,339,452 upheld as valid; infringement by Apotex Inc. and Apotex Pharmachem Inc. established (admitted contingent on validity); accounting of profits ordered; punitive damages denied; permanent injunction granted; delivery-up/destruction to be agreed; interest awarded; costs deferred.
Legal Topics
Anticipation, Obviousness/obvious to Try, Insufficiency of Disclosure, Inutility, Sound Prediction, Claim Construction, Infringement, Accounting of Profits, Punitive Damages, Permanent Injunction, Delivery Up/destruction, Interest, Costs, Confidentiality
Source Language
English
Patent Law Intellectual Property Pharmaceutical Regulatory Law Civil Remedies Anticipation Obviousness/obvious to Try Insufficiency of Disclosure Inutility +10 more

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Parties

Apotex Inc.

Plaintiff; Defendant by Counterclaim

H. Lundbeck A/S

Defendant; Plaintiff by Counterclaim

Apotex Pharmachem Inc.

Defendant by Counterclaim

Procedural Posture

Patent Invalidity and Infringement (impeachment and Counterclaim) / Trial Judgment on the Merits (reasons for Judgment)

Legal Issues

  1. 1 Whether Canadian patent 1,339,452 (Escitalopram) is invalid for anticipation, obviousness, inutility or insufficient disclosure; whether claims (including claim 7) are sufficiently disclosed; whether sound prediction was made; whether Apotex and Apotex Pharmachem infringed; appropriate remedies (accounting of profits, punitive damages, delivery-up/destruction, injunction, interest, costs)

Ratio Decidendi

The Court held patent 1,339,452 valid and each claim upheld: (+)-Citalopram was not anticipated and was not obvious to the person skilled in the art in 1988; alleged inutility (Pamoic salt toxicity) was not established; insufficiency allegations (including human-test statement and claim 7) failed; sound prediction arguments did not vitiate the patent. Defendants infringed (admitted if patent valid). Equitable relief awarded: accounting of profits (Apotex Inc. CAD 1,410,906.21; Apotex Pharmachem Inc. CAD 304,177.38), punitive damages denied, permanent injunction until patent expiry (9 Sep 2014), delivery-up/destruction protocol to be agreed, prejudgment interest fixed (Apotex from 1 Jan...

Court Disposition

Patent 1,339,452 upheld as valid; infringement by Apotex Inc. and Apotex Pharmachem Inc. established (admitted contingent on validity); accounting of profits ordered; punitive damages denied; permanent injunction granted; delivery-up/destruction to be agreed; interest awarded; costs deferred.

Orders

  • Apotex Inc. to account to Lundbeck for profits in the amount of CAD 1,410,906.21 (subject to calculation and interest)
  • Apotex Pharmachem Inc. to account to Lundbeck for profits in the amount of CAD 304,177.38 (subject to calculation and interest)