Merck & Co. et al. v. Apotex Inc., (1997) 161 F.T.R. 161 (TD)

• Judge: Joyal, J.
• Court: Federal Court (Canada)
• Case Date: December 19, 1996
• Jurisdiction: Canada (Federal)
• Citations: (1997), 161 F.T.R. 161 (TD)

Merck & Co. v. Apotex Inc. (1997), 161 F.T.R. 161 (TD)

MLB headnote and full text

Temp. Cite: [1999] F.T.R. TBEd. MY.148

Merck & Co. Inc. and Merck Frosst Canada Inc. (plaintiffs) v. Apotex Inc. (defendant) (T-2408-91)

Apotex Inc. (plaintiff) v. Merck & Co. Inc. and Merck Frosst Canada Inc. (defendants)

(T-294-96)

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

Federal Court of Canada

Trial Division

Joyal, J.

February 14, 1997.

Summary:

Merck & Co. ("Merck") sued Apotex Inc. ("Apotex") for patent infringement. Merck had issued a licence at one time regarding the patented chemical compound used in medicine.

The Federal Court of Canada, Trial Di­vision, in a decision reported at 88 F.T.R. 260, found Apotex guilty of patent infringe­ment. The extent of the infringement and recovery of damages was outstanding. Apo­tex appealed.

The Federal Court of Appeal, in a decision reported at 180 N.R. 373, held that Apotex was liable for patent infringement and enjoined Apotex from selling only the par­ticular shipments of the drug which had been acquired after the patent was issued and which were before the court at that time. Apotex sued Merck, seeking a declaration that the manufacture and sale of a drug from the licensed bulk patent chemical did not infringe Merck's patent. Apotex's affidavit of documents disclosed that Apotex had purchased two subsequent lots of the patented drug. Merck moved for leave to use the information produced in Apotex's action as evidence on Merck's action regarding extent of the infringement and the quantum of damages.

The Federal Court of Canada, Trial Di­vision, dismissed the motion.

Patents of Invention - Topic 8118

Practice - Discovery - Documents - Re­specting other infringement actions - [See Practice - Topic 4157 ].

Practice - Topic 4157

Discovery - General principles - Collateral use of discovery information (implied undertaking rule) - Merck sued Apotex for patent infringement - Apotex was liable for patent infringement, but the extent of the infringement and damages were outstand­ing - In an action Apotex brought against Merck, Apotex's affidavit of documents showed evidence not disclosed in the Merck action - Merck moved for leave to use and rely on the production and dis­covery or cross-examination in the Apotex action - At issue was whether Merck was released from the implied undertaking rule - The Federal Court of Canada, Trial Di­vision, dismissed the motion, stating that Apotex would suffer little, if any, injustice if the release was granted, but Merck did not show that it would suffer any prejudice in bringing a motion for production in its action.

Cases Noticed:

Canada v. ICHI Canada Ltd., [1992] 1 F.C. 571; 49 F.T.R. 254 (T.D.), refd to. [para. 10, footnote 2].

Eli Lilly & Co. et al. v. Interpharm Inc. et al. (1993), 156 N.R. 234; 50 C.P.R.(3d) 208 (F.C.A.), refd to. [para. 12, footnote 3].

Lubrizol Corp. et al. v. Imperial Oil Ltd. et al., [1991] 1 F.C. 325; 39 F.T.R. 43 (T.D.), refd to. [para. 14, footnote 4].

Goodman v. Rossi (1995), 83 O.A.C. 38; 24 O.R.(3d) 359 (C.A.), refd to. [para. 18, footnote 5].

Crest Homes Ltd v. Marks et al., [1987] A.C. 829; 93 N.R. 256; [1987] 2 All E.R. 1074 (H.L.), refd to. [para. 19, footnote 6].

Control Data Canada Ltd. v. Senstar Corp., [1988] 3 F.C. 439 (T.D. Protho.), refd to. [para. 21, footnote 8].

Gleadow v. Nomura Canada Inc. (1996), 18 C.C.E.L.(2d) 210; 44 C.P.C.(3d) 133 (Ont. Gen. Div.), refd to. [para. 22, footnote 9].

Chandler (B.E.) Co. v. Mor-Flo Industries Inc. et al. (1996), 7 O.T.C. 60; 30 O.R.(3d) 139 (Gen. Div.), refd to. [para. 23, footnote 10].

Authors and Works Noticed:

Laskin, John B., The Implied Undertaking in Ontario (1990), 11 Adv. Q. 298, gen­erally [para. 23, footnote 11].

Counsel:

G. Alexander Macklin, Q.C., for Merck & Co. and Merck Frosst Canada Inc.;

Harry B. Radomski, for Apotex Inc.

Solicitors of Record:

Gowling, Strathy & Henderson, Ottawa, Ontario, for Merck & Co. and Merck Frosst Canada Inc.;

Goodman, Phillips & Vineberg, Toronto, Ontario, for Apotex Inc.

These motions were heard on December 19, 1996, at Ottawa, Ontario, by Joyal, J., of the Federal Court of Canada, Trial Division, who delivered the following judgment on February 14, 1997.