On January 24, 2016, the Supreme Court of Canada dismissed
Apotex's application for leave to appeal from the Ontario Court
of Appeal in Apotex Inc v Eli Lilly and Company, 2015 ONCA 305,
which upheld the Divisional Court's ruling to strike out
Apotex's claim of unjust enrichment under s. 8 of the
Patented Medicines (Notice of Compliance)
In 2008, Eli Lilly ("Lilly") brought a prohibition
application against Apotex in respect of Lilly's '735
Patent relating to the use of atomoxetine hydrochloride in the
treatment of Attention Deficit Hyperactivity Disorders. Lilly's
application was dismissed on October 29, 2010, after the '735
Patent was invalidated by another generic manufacturer.1
Consequently, Apotex sought to recover damages under s. 8 of
In addition to the relief offered under s. 8 of
PM(NOC) Regulations, Apotex claimed for
unjust enrichment based on Lilly's profits while Apotex was
kept off the market. In response, Lilly brought a motion to strike
Apotex's unjust enrichment claim. The motion judge refused to
strike Apotex's claim but the Divisional Court reversed the
decision, finding that it was plain and obvious that the claim
could not reasonably succeed. On May 5, 2015, the Ontario Court of
Appeal upheld the Divisional Court's decision. Subsequently,
Apotex filed an application for leave to appeal before the Supreme
Court of Canada.
In determining whether Apotex's claim for unjust enrichment
should be struck the Ontario Court of Appeal looked at whether: (1)
Apotex suffered a deprivation by the delay in the issuance of the
Notice of Compliance for its generic product; (2) Lilly enjoyed a
corresponding benefit by an extension of its market exclusivity,
resulting in a windfall to Lilly; and (3) there was no juristic
reason for Lilly to retain that windfall.
Previously, Apotex had been unsuccessful in its attempts to
claim for unjust enrichment under s. 8 proceedings.2
Specifically, Apotex had failed to convince the Courts that the
Patent Act and PM(NOC)
Regulations did not constitute a complete code with
respect to available remedies and that the
PM(NOC) Regulations did not provide a
juristic reason for a patentee to retain its excess monopolistic
profits. Apotex argued that the facts of this case were different
because Lilly made misrepresentations when it obtained and listed
'735 Patent and subsequently commenced a prohibition
proceeding. As such, PM(NOC) Regulations
could not provide a valid juristic reason for Lilly to be immune
from an unjust enrichment claim.
However, the Ontario Court of Appeal rejected Apotex's claim
for unjust enrichment because Apotex was "never deprived of
the portion of Lilly's revenues represented by its monopolistic
profits because Apotex would never have earned those
Moreover, the Court held that even if Apotex could establish
that there was misrepresentation or abuse of process, this was not
a case where the "extraordinary" remedy of disgorgement
of profits was warranted.
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A recent Saskatchewan Court of Queen's Bench decision allowed a court-appointed receiver to sell and transfer intellectual property rights free and clear of encumbrances, finding that a license to use improvements of an invention was a contractual interest and not a property interest.
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