If you are a patent owner, you are entitled to damages if
someone infringes your patent. The measure of damages is
compensatory damages, lost profits or a "reasonable
royalty". Is it fair for the infringer to say that the damages
should be reduced because the infringer could have made
the same sales using an available alternative that did not infringe
the patent?
Marck sued its rival Apotex for patent infringement for sales of
the drug lovastatin. The trial judge awarded Merck a total damages
award of $119 million. In the decision in Apotex Inc. v. Merck &
Co., Inc. 2015 FCA 171, the court considered
Apotex's argument about "non-infringing
alternatives". In a nutshell, Apotex was saying, okay, we
infringed when we sold lovastatin using the patent process,
but we could have made the same sales of
lovastatin using another process that did not infringe.
Therefore, the measure of damages should be lower, since the loss
of profits could still have been suffered by the
