Laboratoires Servier, Adir, Oril Industries, Servier Canada Inc. v. Apotex Inc.

Laboratoires Servier, Adir, Oril Industries, Servier Canada Inc. v. Apotex Inc.

Only ADIR (the patentee) and Servier Canada (who claims under the patentee) have standing; non-ADIR foreign affiliates lack an implied licence and were struck as plaintiffs; claims 1,2,3 and twice-corrected claim 5 of Canadian Patent No. 1,341,196 are valid and were infringed by Apotex's manufacture in Canada and sale of the 8 mg product in Canada; Apotex did not induce foreign purchasers because title passed on delivery abroad; the Commissioner’s two certificates of correction under s.8 were reasonable in the factual context and stand; Apotex failed to prove obviousness, lack of utility or unsound prediction; inventorship challenge barred by s.61(1)(b) and failed on the merits;...

Citation
2008 FC 825
Parties
Plaintiffs (defendants by Counterclaim): LES LABORATOIRES SERVIER; ADIR; ORIL INDUSTRIES; SERVIER CANADA INC.; SERVIER LABORATORIES (AUSTRALIA) PTY LTD; SERVIER LABORATORIES LIMITED; Defendants (plaintiffs by Counterclaim): APOTEX INC.; APOTEX PHARMACHEM INC.
Court
Federal Court
Jurisdiction
Canada
Judgment Date
2 July 2008
Procedural Posture
Patent Infringement Action With Counterclaims for Invalidity and Competition Act Damages / Trial Judgment (reasons for Judgment)
Outcome
Judgment for plaintiffs ADIR and Servier Canada: claims 1,2,3 and 5 of Canadian Patent No. 1,341,196 declared valid and infringed; counterclaim by Apotex dismissed; non-ADIR foreign plaintiffs struck; injunction, damages/accounting and interest ordered as below.
Legal Topics
Infringement, Validity, Obviousness, Utility, Sound Prediction, Inventorship, Standing, Claims Construction, Certificates of Correction, Inducement, Remedies, Limitation Period
Source Language
English
Patent Intellectual Property Competition Law Civil Procedure Infringement Validity Obviousness Utility +8 more

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Parties

LES LABORATOIRES SERVIER; ADIR; ORIL INDUSTRIES; SERVIER CANADA INC.; SERVIER LABORATORIES (AUSTRALIA) PTY LTD; SERVIER LABORATORIES LIMITED

Plaintiffs (defendants by Counterclaim)

APOTEX INC.; APOTEX PHARMACHEM INC.

Defendants (plaintiffs by Counterclaim)

Procedural Posture

Patent Infringement Action With Counterclaims for Invalidity and Competition Act Damages / Trial Judgment (reasons for Judgment)

Legal Issues

  1. 1 Standing of foreign affiliates under s.55(1)
  2. 2 Claims construction and scope of the '196 Patent
  3. 3 Direct infringement by manufacture and sale in Canada

Ratio Decidendi

Only ADIR (the patentee) and Servier Canada (who claims under the patentee) have standing; non-ADIR foreign affiliates lack an implied licence and were struck as plaintiffs; claims 1,2,3 and twice-corrected claim 5 of Canadian Patent No. 1,341,196 are valid and were infringed by Apotex's manufacture in Canada and sale of the 8 mg product in Canada; Apotex did not induce foreign purchasers because title passed on delivery abroad; the Commissioner’s two certificates of correction under s.8 were reasonable in the factual context and stand; Apotex failed to prove obviousness, lack of utility or unsound prediction; inventorship challenge barred by s.61(1)(b) and failed on the merits;...

Court Disposition

Judgment for plaintiffs ADIR and Servier Canada: claims 1,2,3 and 5 of Canadian Patent No. 1,341,196 declared valid and infringed; counterclaim by Apotex dismissed; non-ADIR foreign plaintiffs struck; injunction, damages/accounting and interest ordered as below.

Orders

  • Non-ADIR foreign plaintiffs (LLS, Oril, Servier Australia, Servier UK) struck from style of cause
  • Declaration: Claims 1,2,3 and 5 of Canadian Patent No.1,341,196 are valid