Canada’s Intellectual Property Firm

Federal Court of Appeal confirms patent infringer not entitled to dictate appropriate remedy

Authored byUrszula Wojtyra

The Federal Court previously found that Apotex and Cobalt infringed Bayer’s valid patent for an oral contraceptive composition combining drospirenone and ethinyl estradiol (Bayer’s YAZ and YASMIN) (2016 FC 1013, as reported here). The Federal Court subsequently held that Bayer was entitled to elect between damages and an accounting of Apotex’s profits (2016 FC 1192, as reported here). In so holding, the Federal Court disagreed with Apotex’s argument that it, rather than Bayer, should be entitled to elect whether Bayer should be limited to recovering Apotex’s profits. The Federal Court of Appeal dismissed Apotex’s appeal of the latter decision, holding that “the proposition that the infringer of a patent can determine the remedy to which the patentee is entitled is an astounding proposition” (Apotex Inc v Bayer Inc, 2018 FCA 32). The Federal Court of Appeal affirmed that, under the Patent Act, a successful patentee always has a right to its damages, and only it has the right to elect an accounting of profits, subject to the court’s discretion.