Eli Lilly Canada Inc. v. Apotex Inc.
Leave to amend was granted because the proposed amendments disclose a reasonably arguable cause of action (including arguable direct infringement through manufacture/importation/stockpiling of a vendible product), the pleadings contain sufficient material facts in the circumstances, and prejudice to defendants from lateness can be mitigated by conditioning leave on bifurcation; therefore amendments allowed only if all issues related to the newly added cause of action are bifurcated and tried after liability issues in the existing causes are determined.
- Citation
- 2019 FC 884
- Parties
- Plaintiff/defendant by Counterclaim: Eli Lilly Canada Inc.; Plaintiff/defendant by Counterclaim: Eli Lilly and Company; Plaintiff/defendant by Counterclaim: Lilly Del Caribe, Inc.; Plaintiff/defendant by Counterclaim: Lilly, S.A.; Plaintiff/defendant by Counterclaim: ICOS Corporation Inc.; Defendant/plaintiff by Counterclaim: Apotex Inc.; Defendant/plaintiff by Counterclaim: Mylan Pharmaceuticals ULC; Defendant/plaintiff by Counterclaim: Teva Canada Limited; Defendant/plaintiff by Counterclaim: Pharmascience Inc.; Defendant/plaintiff by Counterclaim: Laboratoire Riva Inc.
- Court
- Federal Court
- Jurisdiction
- Canada
- Judgment Date
- 3 July 2019
- Procedural Posture
- Patent Infringement (tadalafil) / Motion for Leave to Amend Granted With Condition of Bifurcation; Trial of Construction and Invalidity Scheduled December 2, 2019; New Cause of Action to Be Tried After Liability Issues
- Outcome
- Leave to amend granted on condition that all issues related to the newly added cause of action (the '784 use patent claim for manufacture/importation/stockpiling and springboard damages) be bifurcated and tried only after liability issues in the existing causes of action are determined; costs in the cause.
- Legal Topics
- Leave to Amend, Bifurcation, Infringement, Indirect/induced Infringement, Use Patents, Stockpiling/importation, Pm(noc) Regulations, Springboard Damages
- Source Language
- English
Case Brief
Summary, issues, holding and outcome
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Parties
Eli Lilly Canada Inc.
Plaintiff/defendant by Counterclaim
Eli Lilly and Company
Plaintiff/defendant by Counterclaim
Lilly Del Caribe, Inc.
Plaintiff/defendant by Counterclaim
Lilly, S.A.
Plaintiff/defendant by Counterclaim
ICOS Corporation Inc.
Plaintiff/defendant by Counterclaim
Apotex Inc.
Defendant/plaintiff by Counterclaim
Mylan Pharmaceuticals ULC
Defendant/plaintiff by Counterclaim
Teva Canada Limited
Defendant/plaintiff by Counterclaim
Pharmascience Inc.
Defendant/plaintiff by Counterclaim
Laboratoire Riva Inc.
Defendant/plaintiff by Counterclaim
Procedural Posture
Patent Infringement (tadalafil) / Motion for Leave to Amend Granted With Condition of Bifurcation; Trial of Construction and Invalidity Scheduled December 2, 2019; New Cause of Action to Be Tried After Liability Issues
Legal Issues
- 1 Whether proposed amendments disclose a reasonably arguable cause of action
- 2 Whether pleadings include sufficient material facts to support new causes of action
- 3 Whether manufacture/importation/stockpiling prior to patent expiry can constitute direct infringement of a use-limited patent
Ratio Decidendi
Leave to amend was granted because the proposed amendments disclose a reasonably arguable cause of action (including arguable direct infringement through manufacture/importation/stockpiling of a vendible product), the pleadings contain sufficient material facts in the circumstances, and prejudice to defendants from lateness can be mitigated by conditioning leave on bifurcation; therefore amendments allowed only if all issues related to the newly added cause of action are bifurcated and tried after liability issues in the existing causes are determined.
Court Disposition
Leave to amend granted on condition that all issues related to the newly added cause of action (the '784 use patent claim for manufacture/importation/stockpiling and springboard damages) be bifurcated and tried only after liability issues in the existing causes of action are determined; costs in the cause.
Orders
- Leave to amend pleadings granted as requested subject to condition of bifurcation
- All issues related to the newly added '784 Patent cause of action shall be bifurcated and only tried after liability issues in the existing causes of action have been determined
Full Case Text
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