On September 9 2016 the Federal Court found that Apotex and Cobalt had infringed Bayer's valid patent for an oral contraceptive composition combining drospirenone and ethinyl estradiol (Bayer's Yaz and Yasmin).(1) The Federal Court subsequently held that Bayer was entitled to elect between damages and an accounting of Apotex's profits.(2) In so holding, the court disagreed with Apotex's argument that it, rather than Bayer, should be entitled to elect whether Bayer should be limited to recovering Apotex's profits.

The Federal Court of Appeal dismissed Apotex's appeal of the latter decision, holding that "the proposition that the infringer of a patent can determine the remedy to which the patentee is entitled is an astounding proposition".(3) The Federal Court of Appeal affirmed that under the Patent Act, a successful patentee:

  • always has a right to its damages; and
  • is the only party that has the right to elect an accounting of profits, subject to the court's discretion.

For further information on this topic please contact Urszula Wojtyra at Smart & Biggar/Fetherstonhaugh by telephone (+1 416 593 5514) or email (uawojtyra@smart-biggar.ca). The Smart & Biggar/Fetherstonhaugh website can be accessed at www.smart-biggar.ca.

Endnotes

(1) 2016 FC 1013. Further details are available here.

(2) 2016 FC 1192. Further details are available here.

(3) Apotex Inc v Bayer Inc, 2018 FCA 32.

 

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