Merck & Co. et al. v. Apotex Inc., (1996) 206 N.R. 289 (FCA)

• Judge: Stone, Strayer and Linden, JJ.A.
• Court: Federal Court of Appeal (Canada)
• Case Date: October 31, 1996
• Jurisdiction: Canada (Federal)
• Citations: (1996), 206 N.R. 289 (FCA)

Merck & Co. v. Apotex Inc. (1996), 206 N.R. 289 (FCA)

MLB headnote and full text

Apotex Inc. v. Merck & Co. Inc. and Merck Frosst Canada Inc.

(A-81-96; A-86-96; A-87-96; A-100-96)

Richard Barbeau and Roger Moore v. Merck & Co. Inc. and Merck Frosst Canada Inc.

(A-105-96)

Indexed As: Merck & Co. et al. v. Apotex Inc.

Federal Court of Appeal

Stone, Strayer and

Linden, JJ.A.

October 31, 1996.

Summary:

Merck sued Apotex for patent infringement of the compounds enalapril and enalapril maleate by the sale of Apo-Enalapril. Apotex counterclaimed for a declaration that Merck's patent was invalid.

The Federal Court of Canada, Trial Divi­sion, in a decision reported 88 F.T.R. 260, allowed Merck's action and dismissed the counterclaim. The court granted a permanent injunction to prevent Apotex from infringing Merck's patent. Apotex appealed.

The Federal Court of Appeal, in a decision reported 180 N.R. 373, allowed the appeal in part. The court dismissed the counterclaim appeal. Subsequently, Apotex and two of its officers were ordered to show cause why they should not be found in contempt of court for allegedly breaching the injunction. Apotex raised various preliminary motions.

The Federal Court of Canada, Trial Divi­sion, in a decision reported 106 F.T.R. 114, determined the issues accordingly. Apotex appealed.

The Federal Court of Appeal dismissed the appeal.

Editor's Note: For related cases involving this matter see 69 F.T.R. 209; 90 F.T.R. 1; 106 F.T.R. 99; 106 F.T.R. 104; 198 N.R. 225 and 198 N.R. 238.

Barristers and Solicitors - Topic 787

Duty to court - Disqualification of counsel - When required - Merck was granted an injunction restraining Apotex from infring­ing Merck's patent - Apotex and two of its officers were ordered to show cause why they should not be found in contempt of court for allegedly breaching the injunction - Apotex moved to disqualify Merck's counsel from further participation in the contempt proceedings, claiming that they had demonstrated a "vindictive attitude and not the fair, impartial demeanour proper for a prosecutor seeking to bring forward evidence of wrongdoing in proceedings that ... are essentially criminal" - The trial judge refused the motion - The Federal Court of Appeal dismissed an appeal by Apotex.

Contempt - Topic 10

General principles - Scope of contempt power - [See Contempt - Topic 503 ].

Contempt - Topic 503

What constitutes contempt - General principles - Civil and criminal contempt distinguished - Merck was granted an injunction restraining Apotex from infring­ing Merck's patent - Apotex and two of its officers were ordered to show cause why they should not be found in contempt of court for allegedly breaching the injunction - One of the alleged breaches occurred after the trial reasons were given but before formal judgment was entered - The trial judge stated that the fact that the breach occurred "before the court's order was filed, but after reasons for its judg­ment were filed, so that the contempt is based upon the public aspects of the offence and not on the violation of a court order, does not, in itself, result in convert­ing what is civil contempt into criminal contempt" - The Federal Court of Appeal dismissed an appeal by Apotex.

Contempt - Topic 690

What constitutes contempt - Judgments and orders - Injunctions - Disobedience of - [See Contempt - Topic 503 ].

Contempt - Topic 5002

Practice - General principles - Nature of a contempt hearing - Merck was granted an injunction restraining Apotex from infringing Merck's patent - Apotex and two of its officers were ordered to show cause why they should not be found in contempt of court for allegedly breaching the injunction - On a preliminary motion Apotex applied to dismiss or stay the proceeding - Apotex claimed that because the proceedings were criminal in nature, its officers were entitled to have the proceed­ings prosecuted by the Attorney General or some other prosecutor independent from Merck's counsel - The trial judge rejected the argument - The Federal Court of Appeal dismissed an appeal by Apotex.

Contempt - Topic 5002

Practice - General principles - Nature of a contempt hearing - [See Practice - Topic 3709 ].

Contempt - Topic 5103

Practice - Hearing - Procedure - [See Barristers and Solicitors - Topic 787 and first Contempt - Topic 5002 ].

Practice - Topic 3709

Evidence - Undertakings respecting - Information compelled by court order - Collateral use - Merck sued Apotex for patent infringement by selling Apo-Enalapril - Apotex was ordered to main­tain accounts of its sales and ship­ments of Apo-Enalapril and give the information to Merck - In contempt pro­ceedings Apotex claimed that use of the information was precluded - The trial judge stated that there was an implied undertaking that the party receiving the information would not use it for a collat­eral or ulterior purpose - Contempt pro­ceedings were an integral part of the court's process in the trial of the patent action and not a collateral pur­pose - The trial judge ordered that the information be sealed and treated in confi­dence - The Federal Court of Appeal dismissed an appeal by Apotex.

Practice - Topic 3712

Evidence - Sealed evidence - When available - [See Practice - Topic 3709 ].

Counsel:

Brian H. Greenspan, Harry Radomsky and Andrew R. Brodkin, for the appellant, Apotex (in A-81-96, A-86-96, A-87-96);

D.H. Jack, for the appellant, Apotex (in A-100-96);

Timothy H. Gilbert, for the appellants, Richard Barbeau and Roger Moore;

Brian Crane, Q.C., and Emmanuel Mano­lakis, for the respondents.

Solicitors of Record:

Greenspan, Humphrey, Toronto, Ontario, and Goodman, Phillips & Vineberg, Toronto, Ontario, for the appellant, Apotex (in A-81-96, A-86-96, A-87-96);

McDonald & Hayden, Toronto, Ontario, for the appellant, Apotex (in A-100-96);

Lenczner & Slaght, Toronto, Ontario, for the appellants, Richard Barbeau and Roger Moore.

Gowling Strathy & Henderson, Ottawa, Ontario, for the respondents.

This appeal was heard at Ottawa, Ontario, on October 30 & 31, 1996, by Stone, Strayer and Linden, JJ.A., of the Federal Court of Appeal.

On October 31, 1996, Strayer, J.A., delivered the following oral judgment for the Court of Appeal.