Friday, March 15, 2013
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Outstanding Infringement Trial Not Relevant to Section 8 Claim: Astrazeneca Canada Inc. V. Apotex Inc. (2013 FCA 77)

Friday, March 15, 2013
The Federal Court of Appeal has affirmed Justice Hughes’ May 11, 2012 judgement in APOTEX INC. v ASTRAZENECA CANADA INC. (2012 FC 559) where he found Apotex was entitled to Section 8 damages even though there was an outstanding infringement action.

Astrazeneca’s appeal of this decision as it relates to the outstanding infringement action can be summarized by the question “[i]s it relevant to the section 8 claim that Astrazeneca has sued Apotex for infringement of the patent in issue and the infringement trial has not yet been completed?” (Paragraph [2] of the FCA decision).

Astrazeneca had requested a delay in the section 8 proceedings in view of the outstanding infringement action. Justice Hughes, using his discretion under subsection 8(5) refused the request, noting:

[148] A Court hearing the pending infringement action, if it concludes that the patent is valid and has been infringed by Apotex in making the omeprazole drug that is the subject of these proceedings, can at that time craft a remedy that is appropriate, having in mind any compensation awarded in these proceedings.

The FCA agreed with Justice Hughes and further noted “[i]t will be for the judge trying the infringement action to ensure that overall, taking both proceedings together, a party is compensated for its provable loss, if any, on proper principles, no more and no less.” (See Paragraph [7] of FCA decision).

The decision can be found at the following link: http://decisions.fcacaf.gc.ca/en/2013/2013fca77/2013fca77.html

By Claire Palmer

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