Merck & Co. et al. v. Apotex Inc. et al., (2011) 430 N.R. 66 (FCA)

• Judge: Evans, Gauthier and Stratas, JJ.A.
• Court: Federal Court of Appeal (Canada)
• Case Date: December 19, 2011
• Jurisdiction: Canada (Federal)
• Citations: (2011), 430 N.R. 66 (FCA);2011 FCA 363

Merck & Co. v. Apotex Inc. (2011), 430 N.R. 66 (FCA)

MLB headnote and full text

Temp. Cite: [2012] N.R. TBEd. MR.041

Apotex Inc. (appellant) v. Merck & Co. Inc. and Merck Frosst Canada Ltd. (respondents) and Apotex Fermentation Inc. (respondent)

(A-9-11)

Apotex Fermentation Inc. (appellant) v. Merck & Co. Inc. and Merck Frosst Canada Ltd. (respondents) and Apotex Inc. (respondent)

(A-11-11; 2011 FCA 363)

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

Federal Court of Appeal

Evans, Gauthier and Stratas, JJ.A.

December 19, 2011.

Summary:

The Federal Court, in a decision reported at 381 F.T.R. 162, found that Apotex Inc. (Apotex) and Apotex Fermentation Inc. (AFI) had infringed Merck & Co. Inc.'s Canadian Patent Number 1,161,380 (the '380 Patent). Apotex and AFI appealed.

The Federal Court of Appeal dismissed the appeal.

Patents of Invention - Topic 3781

Infringement actions - Evidence - General - A trial judge found that Apotex Inc. (Apotex) and Apotex Fermentation Inc. (AFI) had infringed Merck & Co. Inc.'s Canadian Patent Number 1,161,380 (the '380 Patent) - The patent covered a method for making lovastatin using a microorganism of the genus Aspergillus terreus - Specifically, the judge found that Apotex and AFI were liable for damages with respect to the Apo-lovastatin products made from, inter alia, the first commercial batch produced in Canada by AFI (batch CR0157) - The judge based her conclusion that the process used to produce batch CR0157 was infringing, on the expert evidence of Dr. Davis - She found that his test results were reliable and credible - On appeal, AFI submitted that the judge erred in failing to consider substantial relevant evidence - The Federal Court of Appeal stated that "Essentially, AFI invites this Court to reweigh all the evidence with respect to this particular batch. It did not point to any particular error in the 36 pages devoted to the analysis of all the expert evidence. ... [T]he trial judge is presumed to have considered all the information on the record and that the simple failure to rely expressly on, or to mention, some of the contradictory evidence in the reasons is insufficient proof to reverse such presumption" - See paragraphs 11 to 14.

Patents of Invention - Topic 3781

Infringement actions - Evidence - General - A trial judge found that Apotex Inc. (Apotex) and Apotex Fermentation Inc. (AFI) had infringed Merck & Co. Inc.'s Canadian Patent Number 1,161,380 (the '380 Patent) - The patent covered a method for making lovastatin using a microorganism of the genus Aspergillus terreus (AFI-1 process) - Specifically, the judge found that Apotex and AFI were liable for damages with respect to the Apo-lovastatin products made from, inter alia, the 294 batches of lovastatin produced by Blue Treasure (BT) in China after March 1998 - On appeal, AFI raised two issues which, in its view, vitiated the judge's ultimate finding of fact that the material was more likely than not to have been made using the AFI-1 process - The Federal Court of Appeal stated that "the fact that a judge does not re-discuss particular evidence presumably means that she did not find it significant enough to warrant further discussion. AFI failed to demonstrate a palpable error, let alone an overriding one" - Further, AFI had not established that the judge erred in her credibility findings - See paragraphs 16 to 18.

Patents of Invention - Topic 3781

Infringement actions - Evidence - General - A trial judge found that Apotex Inc. (Apotex) and Apotex Fermentation Inc. (AFI) had infringed Merck & Co. Inc.'s (Merck) Canadian Patent Number 1,161,380 (the '380 Patent) - Apotex and AFI appealed - The Federal Court of Appeal reiterated some basic principles - "First, to succeed in their attack, the appellants had to establish that the errors they raised, individually or taken together, constitute not only a clear and obvious error (palpable) but more importantly, one that is overriding. ... Second, the deference accorded to a trial judge with respect to simple findings of facts also applies to inferences she draws from the evidence. ... Third, as Apotex spent some time trying to explain how the proceeding and the trial evolved, most of which was disputed by Merck, it is useful to reiterate ... the wisdom of the policy favouring appellate deference, especially in long trials ..." - See paragraphs 19 to 23.

Patents of Invention - Topic 3788

Infringement actions - Evidence - Presumptions - [See first Patents of Invention - Topic 3781 ].

Practice - Topic 8803

Appeals - General principles - Whether trial judge must give reasons for rejecting evidence or for credibility findings - [See second Patents of Invention - Topic 3781 ].

Practice - Topic 8820

Appeals - General principles - Duty of appellate court re findings of credibility by trial judge - [See third Patents of Invention - Topic 3781 ].

Cases Noticed:

Housen v. Nikolaisen et al., [2002] 2 S.C.R. 235; 286 N.R. 1; 219 Sask.R. 1; 272 W.A.C. 1; 2002 SCC 33, refd to. [para. 14].

Browne v. Dunn (1893), 6 R. 67 (H.L.), refd to. [para. 16].

Waxman et al. v. Waxman et al. (2004), 186 O.A.C. 201; 44 B.L.R.(3d) 165 (C.A.), refd to. [para. 17].

Weatherford Canada Ltd. et al. v. Corlac Inc. et al. (2011), 422 N.R. 49; 2011 FCA 228, refd to. [para. 18].

Levesque v. Comeau, [1970] S.C.R. 1010; 5 N.B.R.(2d) 15, refd to. [para. 34].

Blatch v. Archer (1774), 1 Cowp. 63; 98 E.R. 969, refd to. [para. 34].

R. v. Jolivet (D.), [2000] 1 S.C.R. 751; 254 N.R. 1; 2000 SCC 29, refd to. [para. 34].

Authors and Works Noticed:

Bryant, Alan W., Lederman, Sydney N., and Fuerst, Michelle K., Sopinka, Lederman & Bryant: The Law of Evidence in Canada (3rd Ed. 2009), para. 6.449 [para. 36].

Counsel:

H. Radomski and Ben Hackett, for the appellant;

Andrew Reddon, Steven Mason and David Tait, for the respondents, Merck & Co. Inc. and Merck Frosst Canada Ltd.;

Patrick Riley and John Myers, for the respondent, Apotex Fermentation Inc. and appellant in A-11-11;

Andrew Brodkin, Ben Hackett and Jerry Topolski, for the respondent, Apotex Inc.

Solicitors of Record:

Goodmans LLP, for the appellant and the respondent, Apotex Inc. in A-11-11;

McCarthy Tétrault LLP, for the respondents, Merck & Co. Inc. and Merck Frosst Canada Ltd.;

Taylor McCaffrey LLP, for the respondent, Apotex Fermentation Inc. and the appellant in A-11-11.

This appeal was heard at Toronto, Ontario, on November 28-30, 2011, before Evans, Gauthier and Stratas, JJ.A., of the Federal Court of Appeal. In reasons written by Gauthier, J.A., the Court delivered the following judgment at Ottawa, Ontario, on December 19, 2011.