AstraZeneca Aktiebolag v. Apotex Inc.

AstraZeneca Aktiebolag v. Apotex Inc.

The Supreme Court's decision resolved the utility issue for the 653 Patent such that no other validity issues remain; because infringement was undisputed on the facts, the court granted a declaration of infringement of the 653 Patent and ordered a reference to quantify damages or defendants' profits (to include the 994 Patent, experimental and regulatory use exemptions, election of profits, and interest), and refused to re‑open the trial.

Citation
2018 FC 185
Parties
Plaintiff/defendant by Counterclaim: AstraZeneca Aktiebolag; Plaintiff/defendant by Counterclaim: AstraZeneca Canada Inc.; Plaintiff/defendant by Counterclaim: AstraZeneca UK Limited; Defendant/plaintiff by Counterclaim: Apotex Inc.; Defendant/plaintiff by Counterclaim: Apotex Pharmachem Inc.
Court
Federal Court
Jurisdiction
Canada
Judgment Date
16 February 2018
Procedural Posture
Patent Infringement and Related S.8 NOC Compensation Proceedings / Post‑supreme Court of Canada Decision; Motions on Declaration of Infringement and Referral to Quantify Damages/profits
Outcome
Plaintiffs' motion granted in part; defendants' motion dismissed; declaration of infringement of Canadian Patent No. 2,139,653; reference ordered to quantify damages or defendants' profits including issues related to Canadian Patent No. 2,193,994, experimental and regulatory use exemptions, election of profits and...
Legal Topics
Utility, Novelty (anticipation), Inventiveness (obviousness), Infringement, Damages and Accounting of Profits, Reference Procedure, Experimental and Regulatory Use Exemption, Promise Doctrine
Source Language
English
Intellectual Property Patent Law Regulatory Law Civil Procedure Utility Novelty (anticipation) Inventiveness (obviousness) Infringement +4 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 3 Authorities cited 6 Party arguments 2 Amounts and remedies 1
Sign in to unlock

Parties

AstraZeneca Aktiebolag

Plaintiff/defendant by Counterclaim

AstraZeneca Canada Inc.

Plaintiff/defendant by Counterclaim

AstraZeneca UK Limited

Plaintiff/defendant by Counterclaim

Apotex Inc.

Defendant/plaintiff by Counterclaim

Apotex Pharmachem Inc.

Defendant/plaintiff by Counterclaim

Procedural Posture

Patent Infringement and Related S.8 NOC Compensation Proceedings / Post‑supreme Court of Canada Decision; Motions on Declaration of Infringement and Referral to Quantify Damages/profits

Legal Issues

  1. 1 Whether the 653 Patent remains invalid for lack of utility after SCC decision
  2. 2 Whether other validity grounds (novelty, inventiveness/obviousness) remain live
  3. 3 Whether a declaration of infringement of the 653 Patent should be issued

Ratio Decidendi

The Supreme Court's decision resolved the utility issue for the 653 Patent such that no other validity issues remain; because infringement was undisputed on the facts, the court granted a declaration of infringement of the 653 Patent and ordered a reference to quantify damages or defendants' profits (to include the 994 Patent, experimental and regulatory use exemptions, election of profits, and interest), and refused to re‑open the trial.

Court Disposition

Plaintiffs' motion granted in part; defendants' motion dismissed; declaration of infringement of Canadian Patent No. 2,139,653; reference ordered to quantify damages or defendants' profits including issues related to Canadian Patent No. 2,193,994, experimental and regulatory use exemptions, election of profits and...

Orders

  • Plaintiffs' motion granted in part.
  • Defendants' motion dismissed.