• Court Awards Damages for Patent Infringement in Second Part of a Bifurcated Decision
  • July 14, 2016 | Authors: Adrian J. Howard; Beverley Moore; Chantal Saunders
  • Law Firm: Borden Ladner Gervais LLP - Ottawa Office
  • Janssen Inc. v. Teva Canada Limited, 2016 FC 593

    Drug: levofloxacin

    The Court has completed its assessment of damages for an earlier finding of patent infringement by the Federal Court (2006 FC 1234) which was upheld on appeal (2007 FCA 217).

    There were still a few outstanding issues to decide. One was that Janssen US argued it was a person claiming under the patentee, which Teva denied. The Court reviewed the jurisprudence and determined that a party is claiming under when:
    • The person is one who, as a user, an assignee, a licensee or a lessee has a title or a right that can be traced back to the patentee;
    • The licensee is exclusive or non-exclusive;
    • The licence is proved but it need not exist in writing;
    • The claim is one in respect of a use in Canada and not elsewhere in the corporate chain.
    After reviewing the evidence, the Court concluded that Janssen US has proven it has the licence or permission, by acquiescence, of Daiichi, to be involved in the chain of the sale of tablets made in Puerto Rico, through Janssen US to Janssen Canada. It was found to be immaterial whether Janssen US had title, even momentarily, to the tablets in Canada.

    The Court then reviewed the submissions as to damages, looking at the marketplace as it existed in fact and what the "but for" world would have looked like. This analysis turned largely on the facts, on the submissions of experts, and the Court's preference for each side's witnesses.

    Damages were ultimately awarded for the period of infringement, as well as beyond. Losses to prescription sales were terminated two months after the patent expired and hospital losses terminated about a year after the patent expired.

    Pre-judgment interest was awarded, but not compounded, and a further claim to lost profits was not allowed on the evidence.

    Teva unsuccessfully argued that Janssen failed to mitigate its damages, and in the end, the Court awarded damages, inclusive of pre-judgment interest to both Janssen US and Janssen Canada.