Apotex v Eli Lilly, 2017 ONSC 224

In this Ontario Superior Court (“ONSC”) decision, Apotex Inc. (“Apotex”), sought compensation from Eli Lilly and Company Limited (“Eli Lilly”) for damages suffered for delayed entry to the market for its generic version of olanzapine, Apo-olanzapine. [6]

Background: PM(NOC) Proceedings

Eli Lilly had successfully obtained an order prohibiting the Minister of Health (“the Minister”) from issuing an approval to Apotex for its generic until the expiry of the olanzapine patent. [4]

However, during the same time period, Eli Lilly was in Patented Medicines (Notice of Compliance) (“PM(NOC)”) proceedings with another generic manufacturer, Novopharm Limited (“Novopharm”), in which the validity of Eli Lilly’s patent was brought into question. Eli Lilly was unable to demonstrate that Novopharm’s allegation of invalidity was not justified. [5]

Analysis: Claims under Statutes of Monopolies and Trade-marks Act Allowed to Proceed

In light of Eli Lilly’s failure to defend its patent against the allegation of invalidity, Apotex claimed treble damages under the Ontario Statute of Monopolies and the English Statute of Monopolies, damages under section 8 of the PM(NOC) Regulations, damages under section 53.2 of the Trade-marks Act, and damages at law. [6]

Eli Lilly was scheduled to bring a motion to strike the entirety of Apotex’s claim, however, they abandoned the motion on the day of the hearing after their request for an adjournment was dismissed. [9]. Eli Lilly’s abandonment of its motion is curious, but appears to have been influenced by a recent decision (Apotex Inc v Eli Lilly and Company et al, 2015 ONSC 5396) which found that “it was not ‘plain and obvious’ that an action based on the Ontario Statute of Monopolies and the English Statute of Monopolies could not succeed,” [7] and another recent decision (Apotex Inc v Schering Corporation, 2016 ONSC 3407) which found that “ it was not plain and obvious that a claim under sections 7(d) and 53.2 of the Trade-marks Act had no chance of success despite the argument that the right to compensation under section 8 of the Regulation creates a ‘complete code’ for compensation.” [7]

The ONSC undertook a brief analysis of the Rules of Civil Procedure, [10] offers to settle, [13] bills of costs [15-24] and other matters relevant to costs, [34-36] and ordered Eli Lilly to pay Apotex a total of $20,000.00. [37]