Allergan Inc. v. Sandoz Canada Inc.

Allergan Inc. v. Sandoz Canada Inc.

The Court awarded Sandoz lump sum costs by starting at the mid-point of the typical 25%-50% lump-sum range (37.5% of eligible legal fees), rounding to $225,000, and increasing that amount by $47,000 to reflect a bona fide defendant settlement offer that met Rule 420 requirements (Offer #2), resulting in fees of $272,000; added HST $35,360 and adjusted disbursements to $77,145.69 for a total award to Sandoz of $384,505.69; Allergan was not granted a set-off despite prevailing on two issues because controlling jurisprudence precludes reduction for partial success of this kind; Kissei, having prevailed on its limited defence, was awarded fees $23,670 (upper end Column IV) plus adjusted...

Citation
2021 FC 186
Parties
Plaintiff; Defendant by Counterclaim: Allergan Inc.; Defendant; Plaintiff by Counterclaim: Sandoz Canada Inc.; Defendant; Patent Owner; Defendant by Counterclaim: Kissei Pharmaceutical Co., Ltd.
Court
Federal Court
Jurisdiction
Canada
Judgment Date
26 February 2021
Procedural Posture
Patent Infringement Under the Patented Medicines (notice of Compliance) Regulations / Post Judgment Costs Determination
Outcome
Allergan ordered to pay Sandoz $384,505.69; Sandoz ordered to pay Kissei $40,296.34
Legal Topics
Costs, Obviousness, Infringement, Admissibility of Prosecution History (s.53.1 Patent Act), Settlement Offers (rule 420), Expert Evidence
Source Language
English
Intellectual Property Patent Law Administrative/regulatory Law Costs Obviousness Infringement Admissibility of Prosecution History (s.53.1 Patent Act) Settlement Offers (rule 420) +1 more

Case Brief

Summary, issues, holding and outcome

More case intelligence is available

Unlock the full research layer for this judgment.

Full judgment text Legal principles 4 Authorities cited 14 Party arguments 2 Amounts and remedies 8
Sign in to unlock

Parties

Allergan Inc.

Plaintiff; Defendant by Counterclaim

Sandoz Canada Inc.

Defendant; Plaintiff by Counterclaim

Kissei Pharmaceutical Co., Ltd.

Defendant; Patent Owner; Defendant by Counterclaim

Procedural Posture

Patent Infringement Under the Patented Medicines (notice of Compliance) Regulations / Post Judgment Costs Determination

Legal Issues

  1. 1 Whether Sandoz’s product infringes the '002 Patent (claims construction)
  2. 2 Whether prosecution history representations are admissible under s.53.1 Patent Act
  3. 3 Whether the '002 Patent is invalid for obviousness

Ratio Decidendi

The Court awarded Sandoz lump sum costs by starting at the mid-point of the typical 25%-50% lump-sum range (37.5% of eligible legal fees), rounding to $225,000, and increasing that amount by $47,000 to reflect a bona fide defendant settlement offer that met Rule 420 requirements (Offer #2), resulting in fees of $272,000; added HST $35,360 and adjusted disbursements to $77,145.69 for a total award to Sandoz of $384,505.69; Allergan was not granted a set-off despite prevailing on two issues because controlling jurisprudence precludes reduction for partial success of this kind; Kissei, having prevailed on its limited defence, was awarded fees $23,670 (upper end Column IV) plus adjusted...

Court Disposition

Allergan ordered to pay Sandoz $384,505.69; Sandoz ordered to pay Kissei $40,296.34

Orders

  • Allergan shall pay to Sandoz lump sum costs of $384,505.69 comprising fees of $272,000, HST of $35,360 and disbursements of $77,145.69.
  • Sandoz shall pay to Kissei costs of $40,296.34 comprising fees of $23,670.00 (upper end of Column IV of Tariff B) and disbursements of $16,626.34.