Federal Court of Appeal Remits Issue of Non-Infringing Alternative

On February 2, 2017, the Federal Court of Appeal issued its decision in Apotex Inc, et al v ADIR and Servier Canada Inc, 2017 FCA 23. The case was an appeal of the Federal Court decision determining the amount of Apotex’s profits attributable to the infringement of Canadian Patent 1,341,196 for the drug perindopril after Servier Canada Inc (Servier) had elected to recover profits. Apotex asserted that the Federal Court erred by failing to take into account the availability of non-infringing alternatives and by failing to segregate the profit earned by Apotex from the sale of perindopril from the profit it earned from providing an indemnity and related legal services.

The Federal Court of Appeal found that the Federal Court had erred with respect to the first of these issues, set aside paragraphs 3 and 4 of the judgment and remitted the following for redetermination: whether Apotex would and could have obtained quantities of non-infringing perindopril from arm’s length manufacturers Signa SA de CV, IPCA Laboratories Ltd or Intas Pharmaceuticals Ltd and, if so, whether Apotex would and could have used such non-infringing perindopril for sale to its affiliates in the United Kingdom and Australia.