Canada: Pharma In Brief - Teva Found Liable For Over $18 Million In Patent-Infringement Damages For Generic Levofloxacin

Case: Janssen Inc. v Teva Canada Limited, 2016 FC 593 (Court Files No. T-2175-04 and T-2056-11)

Drug: LEVAQUIN® (levofloxacin)

Nature of case: Determination and quantification of damages further to action for patent infringement/impeachment under the Patent Act, RSC 1985, c P-4 (Patent Act)

Successful party: Janssen Inc. and Janssen Pharmaceuticals, Inc.

Date of decision: May 31, 2016


Beginning in 1998, Janssen Inc. (Janssen Canada) marketed levofloxacin in Canada under the name LEVAQUIN® for use in the treatment of bacterial infection. In 2004, Teva Canada Limited (Teva) began selling generic levofloxacin-containing tablets in Canada after successfully challenging Canadian Patent No. 1,304,080 (the '080 Patent), which was listed on the patent register against LEVAQUIN®, in a prohibition proceeding under the Patented Medicines (Notice of Compliance) Regulations.

Subsequently, the Federal Court held that the '080 Patent was valid and infringed by Teva in an action brought by Janssen Canada under the Patent Act. This decision concerns the quantification of Teva's liability to Janssen Canada and Janssen Pharmaceuticals, Inc. (Janssen US; collectively, Janssen) resulting from that action. The Court held that Teva owed $5,498,270 to Janssen Canada and $13,342,949 to Janssen US, inclusive of pre-judgment interest, plus costs.  


The relationship between Janssen Canada, Janssen US, and Daiichi Sankyo Company, Limited (Daiichi) was central to the Court's decision in the quantification proceeding.

Daiichi owned the '080 Patent. In the underlying liability proceeding, Janssen Canada and Daiichi were co-plaintiffs. Janssen Canada was a licensee of the '080 Patent; on this basis, it had standing to seek damages as a person claiming under the patentee. Daiichi subsequently settled its damages claim against Teva and did not participate further. After the liability judgment, Janssen US started a second action seeking damages as an upstream member of the chain of LEVAQUIN® sales into Canada. Teva argued that Janssen US lacked standing to seek damages. The two actions were heard and decided together.  

Janssen US had standing to claim damages on the basis of transfer sales into Canada

The dispute as to standing turned on whether, by virtue of having sold LEVAQUIN® to Janssen Canada, Janssen US could claim damages as a person "claiming under" the patentee pursuant to subsection 55(1) of the Patent Act. Teva argued that because Janssen US never held title to levofloxacin tablets in Canada, it never "used" the invention claimed by the '080 Patent and therefore was not a person "claiming under" the patentee.

In deciding this issue, Hughes J summarized the circumstances under which persons other than the patentee may claim patent-infringement damages. He held that to establish standing as a person claiming under the patentee:

  • The person must be 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;
  • It does not matter whether a licensee is exclusive or non-exclusive;
  • The licence must be proved but it need not exist in writing; and
  • The claim must be in respect of a use in Canada and not elsewhere in the corporate chain.

Janssen Canada and Janssen US were operating as part of a team whereby licensed levofloxacin tablets ultimately found their way to Canada. Daiichi knew of and acquiesced to the sale of the tablets, which were manufactured by other Janssen companies, through Janssen US to Janssen Canada. The Court was satisfied that Daiichi's acquiescence gave rise to a licence or permission in favour of Janssen US. As a result, Janssen US had standing to claim its lost sales at the transfer price of the tablets, less expenses. Under these circumstances, it was immaterial whether it ever had title to the tablets in Canada.  

Quantum of damages, pre-judgment interest, and mitigation

But-for scenarios.  In determining the quantum of damages, Hughes J preferred the first of two "but-for" scenarios presented by Janssen over any of the six scenarios presented by Teva, subject to some modification of the underlying assumptions based on the evidence before the Court. These modifications were incorporated into revised damages calculations following the release of draft reasons to the parties.

Pre-judgment interest.
 In the liability judgment, Janssen Canada was awarded pre-judgment interest, not compounded, at the average established bank rate. The Court held that Janssen US should equally be held to these terms and dismissed its claim for either compound interest or the income it would have earned on profits lost.

Mitigation.   Justice Hughes held that a party seeking to recover damages for patent infringement is under a duty to mitigate those damages. However, he also held that it was Teva's burden to show that mitigation was possible and Janssen had not made reasonable efforts to do so. In the absence of any evidence from Teva as to what ought to have been done, the Court refused to conclude that the steps actually taken by Janssen were insufficient to mitigate.  


About Norton Rose Fulbright Canada LLP

Norton Rose Fulbright is a global law firm. We provide the world's preeminent corporations and financial institutions with a full business law service. We have 3800 lawyers and other legal staff based in more than 50 cities across Europe, the United States, Canada, Latin America, Asia, Australia, Africa, the Middle East and Central Asia.

Recognized for our industry focus, we are strong across all the key industry sectors: financial institutions; energy; infrastructure, mining and commodities; transport; technology and innovation; and life sciences and healthcare.

Wherever we are, we operate in accordance with our global business principles of quality, unity and integrity. We aim to provide the highest possible standard of legal service in each of our offices and to maintain that level of quality at every point of contact.

For more information about Norton Rose Fulbright, see

Law around the world

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

In association with
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at and we will use commercially reasonable efforts to determine and correct the problem promptly.