On February 8, 2018, Canada’s Federal Court of Appeal (FCA) dismissed Teva Canada Limited’s consolidated appeals from a Federal Court  (FC) decision ordering Teva to pay damages to Janssen Canada and Janssen US for infringement of Canadian Patent No 1,304,080 (the ‘080 Patent) claiming levofloxacin (Janssen’s LEVAQUIN®) (Teva Canada Limited v Janssen Inc, 2018 FCA 33, aff’g 2016 FC 593).  Daiichi Sankyo Company, Limited, the owner of the ‘080 Patent, licensed Janssen Canada the rights to sell levofloxacin in Canada.

The FCA noted that the errors asserted by Teva were largely challenges to the FC’s appreciation of the evidence.  The FCA found no errors on the part of the FC, thus dismissing Teva’s appeals. 

Regarding mitigation, the FCA confirmed that the burden of establishing the plaintiff’s failure to mitigate is on the defendant, and that the defendant must show both that the plaintiff failed to make reasonable efforts to mitigate and that mitigation was possible.

Regarding “persons claiming under the patentee”, the FCA noted that the purpose of subsection 55(1) of the Patent Act “is to provide redress to those which have a right which may be traced back to a patentee and who suffer damage as a result of infringement of the patent. A party need only establish that they enjoy rights under a patent in order to be a person claiming under the patentee.”  Therefore, the FCA found that the US affiliate of Janssen Inc. was not required to demonstrate that it held title in Canada to LEVAQUIN® that it sold to Janssen Canada, as it was sufficient that it was part of the supply chain which marketed LEVAQUIN® in Canada.

Summary by: Junyi Chen

E-TIPS® ISSUE

18 02 21

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