Merck Frosst Canada Inc. et al. v. Apotex Inc. et al., (1999) 240 N.R. 195 (FCA)
Judge | Décary, Létourneau and Noël, JJ.A. |
Court | Federal Court of Appeal (Canada) |
Case Date | April 21, 1999 |
Jurisdiction | Canada (Federal) |
Citations | (1999), 240 N.R. 195 (FCA) |
Merck Frosst Can. Inc. v. Apotex Inc. (1999), 240 N.R. 195 (FCA)
MLB headnote and full text
Temp. Cite: [1999] N.R. TBEd. MY.029
Merck Frosst Canada Inc. and Merck & Co., Inc (appellants/applicants) v. The Minister of National Health and Welfare and Apotex Inc. (respondents/respondents)
(A-265-97)
Indexed As: Merck Frosst Canada Inc. et al. v. Apotex Inc. et al.
Federal Court of Appeal
Décary, Létourneau and Noël, JJ.A.
April 21, 1999.
Summary:
Merck patented the drug lovastatin. Apotex developed a generic form of lovastatin. Merck sought an order prohibiting the Minister from issuing a notice of compliance to Apotex. The 30 month statutory stay prescribed by the Patented Medicines (Notice of Compliance) Regulations expired before the application could be heard. A one year extension was granted on consent. The hearing could not be scheduled until after the expiry of the one year extension. Merck obtained a further extension. Apotex appealed.
The Federal Court of Appeal, in a decision reported 208 N.R. 388, set aside the extension where the only basis for altering the stay was under s. 7(5) of the Regulations, which was not argued before the court. Merck applied for an extension order under s. 7(5) of the Regulations. At issue was whether the court had jurisdiction to extend time under s. 7(5) or to issue a prohibition order under s. 6(2) after expiry of the statutory stay.
The Federal Court of Canada, Trial Division, in a decision reported at 128 F.T.R. 210, held that it was without jurisdiction to issue a prohibition order or to extend time after expiry of the statutory stay. Merck appealed.
The Federal Court of Appeal dismissed the appeal for mootness.
Editor's note: for related proceedings see 133 F.T.R. 1 and 136 F.T.R. 3.
Estoppel - Topic 386
Estoppel by record (res judicata) - Res judicata as a bar to subsequent proceedings -Issues decided in prior proceedings - [See second Food and Drug Control - Topic 1111.1 ].
Food and Drug Control - Topic 1111.1
Drugs - New drugs - Notice of compliance - Practice - The Federal Court of Canada, Trial Division, held that it was without jurisdiction to issue a prohibition order under s. 6(2) or to extend time under s. 7(5) after expiry of a statutory stay under s. 7 of the Patented Medicines (Notice of Compliance) Regulations - The court considered that: a patentee had no statutory remedy when a notice of compliance was issued after expiry of a stay and based on an unjustified allegation; the Regulations provided a summary mechanism; and extension or shortening applications must be made within the period of the statutory stay - Furthermore, an infringement action was still open to the patentee - The Federal Court of Appeal dismissed an appeal for mootness where the Minister had issued a notice of compliance.
Food and Drug Control - Topic 1111.1
Drugs - New drugs - Notice of compliance - Practice - Merck patented the drug lovastatin - Apotex developed a generic form of lovastatin - Merck filed a prohibition application - The statutory stay under the Patent Medicines (Notice of Compliance) Regulations expired before the application could be heard - A one year extension was granted - The hearing could only be scheduled after the one year extension - Merck obtained another extension - On appeal, the extension was set aside where the only basis for altering the stay was under s. 7(5) of the Regulations, which was not argued before the court - Merck sought an extension order under s. 7(5) - The trial judge held that the extension issue was res judicata and Merck could not reapply regardless of its new arguments, available at the time of the original litigation - There were no special circumstances warranting the court redeciding the issue - The Federal Court of Appeal dismissed an appeal for mootness where the Minister had issued a notice of compliance.
Food and Drug Control - Topic 1111.1
Drugs - New drugs - Notice of compliance - Practice - Merck patented the drug lovastatin - Apotex developed a generic form of lovastatin - Merck filed a prohibition application - The statutory stay under s. 7 of the Patent Medicines (Notice of Compliance) expired before the application could be heard - Merck applied for an extension order, arguing that Apotex failed to reasonably cooperate in expediting the application under s. 7(5) of the Regulations - The trial judge held that it was without jurisdiction to extend time under s. 7(5) after the expiry of the statutory stay - Alternatively, a 1.5 to two month delay was attributable to Apotex - However, the additional five month extension required to provide a remedy to Merck would be over and above the period attributable to Apotex's failure to cooperate in expediting the application - The Federal Court of Appeal dismissed an appeal for mootness where the Minister had issued a notice of compliance.
Counsel:
Brian Daly and Robert Charlton, for the appellants;
H.B. Radomski and Andrew Brodkin, for the respondent, Apotex Inc.
Solicitors of Record:
Ogilvy Renault, Montreal, Quebec, for the appellants;
Goodman, Phillips & Vineberg, Toronto, Ontario, for the respondent, Apotex Inc.;
Morris Rosenberg, Deputy Attorney General of Canada, Ottawa, Ontario, for the respondent, Minister of National Health and Welfare.
This appeal was heard on April 21, 1999, at Montreal, Quebec, by Décary, Létourneau and Noël, JJ.A., of the Federal Court of Appeal. Décary, J.A., delivered the following judgment from the Bench on the same date.
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