Ontario Superior Court Dismisses Apotex's Claims For Damages Under Statutes Of Monopolies

• Published date: 16 March 2021
• Subject Matter: Intellectual Property, Patent, Trademark
• Law Firm: Borden Ladner Gervais LLP
• Author: Ms Beverley Moore and Chantal Saunders

In March 2021, the Ontario Superior Court granted summary judgment, in favour of Lilly, dismissing Apotex's claim for treble damages pursuant to the Ontario and English Statutes of Monopolies and the Trademarks Act.¹

Background

Lilly obtained a patent covering the compound olanzapine. This patent was listed on the Patent Register in accordance with the NOC Regulations. Apotex sent a Notice of Allegation (NOA) pursuant to the NOC Regulations, triggering a prohibition proceeding. Lilly was successful in this proceeding both at trial and on appeal. An order was issued, preventing Apotex from entering the market with its generic olanzapine product until the patent expired.

Novopharm also sent a NOA, triggering the NOC Regulations. Lilly was unsuccessful in the resulting proceeding and its appeal was dismissed. Novopharm entered the market with its generic olanzapine product. Lilly sued Novopharm for patent infringement, however the Federal Court (FC) declared the patent invalid. The Federal Court of Appeal (FCA) overturned and sent the decision back to the FC for reconsideration. The FC again declared the patent invalid, and the FCA upheld that decision. Lilly was also ordered to pay damages to Novopharm pursuant to s. 8 of the NOC Regulations for keeping Novopharm off the market during the initial prohibition proceeding.

Apotex sought reconsideration of the Order that prohibited its entry into the market, due to the invalidity of the patent following the Novopharm infringement action. The Court refused, holding that Apotex had the full opportunity to raise all possible allegations in its NOA, and it could have sued to impeach the patent.

Apotex then started the within action against Lilly, seeking damages at common law and pursuant to the Ontario and English Statutes of Monopolies for keeping Apotex out of the market with a patent subsequently found to be invalid, as well as pursuant to the Trademarks Act for alleged false and misleading statements by Lilly in reliance on its patent. Lilly brought a summary judgment motion based on the expiry of the limitations period, and in respect of its allegation that any harm allegedly suffered by Apotex was caused by the operation of the NOC Regulations and a court order, and that damages are not recoverable other than pursuant to s. 8 of the NOC Regulations.

Summary judgment

The Court held that in this case, both parties are sophisticated and well represented. The factual matrix is not in dispute and both parties are...