Generic Ordered To Pay $1.7 Million In Accounting Of Profits

On March 12, 2013, the Federal Court released its decision in Apotex Inc. v. H. Lundbeck A/S, 2013 FC 192. The Court dismissed Apotex's action to impeach Lundbeck's Canadian Patent No. 1,339,452 and declared the patent valid and infringed by Apotex. Among other things, the Court addressed the equitable remedy of accounting of profits in circumstances of patent infringement. As decisions granting an accounting of an infringer's profits are rare, this article focuses on the Court's findings with respect to the accounting of profits remedy.

By way of background, Apotex brought an action seeking to impeach Lundbeck's Canadian Patent No. 1,339,452 (the "'452 Patent"). The '452 Patent claimed a compound known as "(+)-Citalopram" along with methods to make this compound. (+)-Citalopram is used in the treatment of clinical depression and is branded in Canada as Cipralex®. Apotex alleged that the '452 Patent was invalid based on the grounds of: inutility; insufficient disclosure; anticipation; and obviousness. In response, Lundbeck alleged that the claims of the '452 Patent were valid and infringed by Apotex.

Apotex admitted that if the '452 Patent was found to be valid, in whole or in part, it had infringed. After considering the expert evidence, Justice Harrington concluded that each of the claims of the '452 Patent were valid. Therefore, the only issue that remained was what remedy...