Apotex Inc. v. Merck & Co. Inc.

Apotex Inc. v. Merck & Co. Inc.

The prothonotary did not err in refusing to order further production because Apotex failed to show the documents existed or were relevant given prior final determinations by the courts; res judicata and relevance limits precluded the categories sought, so the motion to set aside the prothonotary's order is dismissed and costs awarded to Merck.

Citation
2004 FC 1038
Parties
Plaintiff (defendant by Counterclaim): Apotex Inc.; Defendants (plaintiffs by Counterclaim): Merck & Co. Inc.; Merck Frosst Canada & Co.
Court
Federal Court
Jurisdiction
Canada
Judgment Date
27 July 2004
Procedural Posture
Patent Infringement Equitable Remedies and Discovery / Interlocutory Appeal From Prothonotary Order to Compel Further Affidavit of Documents
Outcome
Motion to set aside Prothonotary Tabib's order dismissed
Legal Topics
Accounting of Profits, Discovery and Production of Documents, Res Judicata/issue Estoppel, Interlocutory Review, Costs
Source Language
English
Patent Law Civil Procedure Equity Accounting of Profits Discovery and Production of Documents Res Judicata/issue Estoppel Interlocutory Review Costs

Case Brief

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Parties

Apotex Inc.

Plaintiff (defendant by Counterclaim)

Merck & Co. Inc.; Merck Frosst Canada & Co.

Defendants (plaintiffs by Counterclaim)

Procedural Posture

Patent Infringement Equitable Remedies and Discovery / Interlocutory Appeal From Prothonotary Order to Compel Further Affidavit of Documents

Legal Issues

  1. 1 Whether prothonotary erred in refusing to order production of documents relevant to Merck's loss of sales/profits and entitlement to an accounting of profits
  2. 2 Whether documents relating to Merck's delay in prosecuting the patent, mislabeling of Vasotec, tenuousness of the patent, or alleged market interference are relevant given prior judgments and issue estoppel
  3. 3 Standard and scope of discovery in the remedy phase and burden on applicant to show existence and relevance of documents

Ratio Decidendi

The prothonotary did not err in refusing to order further production because Apotex failed to show the documents existed or were relevant given prior final determinations by the courts; res judicata and relevance limits precluded the categories sought, so the motion to set aside the prothonotary's order is dismissed and costs awarded to Merck.

Court Disposition

Motion to set aside Prothonotary Tabib's order dismissed

Orders

  • Motion dismissed with costs against Apotex in both instances
  • Merck entitled to costs