Eli Lilly Canada Inc. v. Apotex Inc. et al., 2015 FC 1165

• Judge: Gleason, J.
• Court: Federal Court (Canada)
• Case Date: October 15, 2015
• Jurisdiction: Canada (Federal)
• Citations: 2015 FC 1165;[2015] F.T.R. TBEd. OC.028

Eli Lilly Can. Inc. v. Apotex Inc., [2015] F.T.R. TBEd. OC.028

MLB being edited

Currently being edited for F.T.R. - judgment temporarily in rough form.

Temp. Cite: [2015] F.T.R. TBEd. OC.028

Eli Lilly Canada Inc. (applicant) v. Apotex Inc. and The Minister of Health (respondents) and Icos Corporation (respondent/patentee)

(T-1598-13; 2015 FC 1165)

Indexed As: Eli Lilly Canada Inc. v. Apotex Inc. et al.

Federal Court

Gleason, J.

October 15, 2015.

Summary:

Eli Lilly Canada Inc. applied for an order under s. 6 of the Patented Medicines (Notice of Compliance) Regulations (PMNOC Regulations) to prohibit the Minister of Health from issuing a Notice of Compliance (NOC) to Apotex Inc. for approval to sell its generic version of tadalafil until after the expiry of Canadian Patent 2,226,784 (784 Patent). Apotex challenged the validity of the 784 Patent on the grounds that it was an impermissible double patenting of the invention claimed in the earlier 2,181,377 Canadian Patent that Eli Lilly was similarly licensed to use and which likewise pertained to tadalafil; and the 784 Patent was invalid for insufficiency because it failed to provide guidance on how to produce hydrate forms of the compounds claimed in the 784 Patent. Apotex also asserted that Eli Lilly lacked standing under the PMNOC Regulations to bring the application, as it had failed to show that there was a proper chain of title to the 784 Patent in its favour.

The Federal Court, in a decision reported at [2015] F.T.R. TBEd. JL.045, rejected Apotex's allegations of invalidity and its argument regarding Eli Lilly's standing. Accordingly, the court allowed Eli Lilly's application for an order prohibiting the Minister from issuing an NOC to Apotex for its tadalafil product. The court ordered that costs would follow the event. Eli Lilly claimed $509,895.41 in costs, whereas Apotex asserted that it should be liable for only $213,179.99.

The Federal Court determined that Eli Lilly was entitled to costs and post-judgment interest calculated in accordance with the terms of the court's reasons, which modified Eli Lilly's Bill of Costs (as amended by its Reply Submissions). The parties were to calculate the amount payable. If they incurred difficulties in agreeing as to the amount payable, they could refer the matter to an Assessment Officer.

Interest - Topic 3510

Statutory interest - On judgments - On judgments for costs - Commencement of - See paragraph 24.

Patents of Invention - Topic 8186

Practice - Costs - Entitlement - See paragraphs 1 to 25.

Practice - Topic 7062

Costs - Party and party costs - Counsel fees - Entitlement - See paragraphs 14 and 15.

Practice - Topic 7082

Costs - Party and party costs - Preparation for trial (incl. discovery) - See paragraphs 14, 15 and 17.

Practice - Topic 7114

Costs - Party and party costs - Special orders - Increase in scale of costs - Novel or important issues - See paragraphs 4 and 5.

Practice - Topic 7115

Costs - Party and party costs - Special orders - Increase in scale of costs - Difficulty and complexity of proceedings - See paragraphs 4 and 5.

Practice - Topic 7118.1

Costs - Party and party costs - Special orders - Multiplier - See paragraphs 6 to 13.

Practice - Topic 7134

Costs - Party and party costs - Disbursements - Photocopies, scanning, printing or binding - See paragraph 19.

Practice - Topic 7137

Costs - Party and party costs - Disbursements - Travelling expenses - Counsel - See paragraphs 14, 16, 20 and 21.

Practice - Topic 7141

Costs - Disbursements - Cost of expert advice - See paragraph 18.

Practice - Topic 7150.9

Costs - Party and party costs - Disbursements - Translation or interpretation services - See paragraph 22.

Practice - Topic 7470.3

Costs - Solicitor and client costs - Entitlement to solicitor and client costs - Thrown-away costs - See paragraph 23.

Counsel:

Adrian Howard, for the applicant and respondent patentee;

Harry B. Radomski, Jordan Scopa and Jaro Mazzola, for the respondent, Apotex Inc.

Solicitors of Record:

Borden Ladner Gervais, LLP, Ottawa, Ontario, for the applicant and respondent patentee;

Goodmans, LLP, Toronto, Ontario, for the respondent, Apotex Inc.

This costs matter was heard at Ottawa, Ontario, by Gleason, J., of the Federal Court, who delivered the following decision on October 15, 2015.