Federal Court

Intellectual Property


Actions for infringement

Patent not invalid for lack of utility

Plaintiffs commenced action against defendants for infringement of Canadian Patent No. 2,139,653 (653 patent) and Canadian Patent No. 2,193,994 (994 patent). Action was bifurcated and trial proceeded on 653 patent alone. Trial judge found 653 patent had required novelty and inventiveness but was invalid because it lacked utility. Trial decision was upheld on appeal but overturned by Supreme Court of Canada (SCC), which found trial judge applied wrong test for utility and declared 653 patent was not invalid for utility. Plaintiffs brought motion for declaration that defendants infringed 653 patent and directing quantification of damages or defendants’ profits by reference; defendants brought cross-motion to re-open trial. Motion granted; cross-motion dismissed. Validity of 653 patent was finally decided by SCC and no other validity issue remained for debate. Plaintiffs were entitled to declaration that defendants infringed 653 patent and order for reference. Determination of plaintiffs’ right to elect profits would form part of reference, after discovery on both damages and profits. There was no point in re-opening trial.

AstraZeneca Aktiebolag v. Apotex Inc. (2018), 2018 CarswellNat 1395, 2018 CarswellNat 1396, 2018 FC 185, 2018 CF 185, George R. Locke J. (F.C.).

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