Merck & Co. Inc. v. Apotex

Merck & Co. Inc. v. Apotex

The court ordered limited production by Delmar of certified documents establishing dates of manufacture and dates of sale because Apotex did not oppose such production, but adjourned oral discovery sine die because the Merck plaintiffs failed to satisfy the evidentiary requirements of r.238(3)(a) and (c) and strict compliance is required at the late stage of the action.

Citation
2003 FC 1033
Parties
Plaintiff (defendant by Counterclaim): MERCK & CO., INC.; Plaintiff (defendant by Counterclaim): MERCK FROSST CANADA & CO.; Plaintiff (defendant by Counterclaim): SYNGENTA LIMITED; Plaintiff (defendant by Counterclaim): ASTRAZENECA UK LIMITED; Plaintiff (defendant by Counterclaim): ASTRAZENECA CANADA INC.; Defendant (plaintiff by Counterclaim): APOTEX INC.
Court
Federal Court
Jurisdiction
Canada
Judgment Date
5 September 2003
Procedural Posture
Patent Infringement Discovery Motion / Discovery Motion for Production; Oral Discovery Adjourned
Outcome
Motion partially granted: limited production ordered; oral discovery adjourned sine die
Legal Topics
Patent, Production of Documents, Oral Discovery, Third‑party Discovery, Federal Court Rules R.233 and R.238
Source Language
English
Intellectual Property Civil Procedure Evidence Discovery Patent Production of Documents Oral Discovery Third‑party Discovery +1 more

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Parties

MERCK & CO., INC.

Plaintiff (defendant by Counterclaim)

MERCK FROSST CANADA & CO.

Plaintiff (defendant by Counterclaim)

SYNGENTA LIMITED

Plaintiff (defendant by Counterclaim)

ASTRAZENECA UK LIMITED

Plaintiff (defendant by Counterclaim)

ASTRAZENECA CANADA INC.

Plaintiff (defendant by Counterclaim)

APOTEX INC.

Defendant (plaintiff by Counterclaim)

Procedural Posture

Patent Infringement Discovery Motion / Discovery Motion for Production; Oral Discovery Adjourned

Legal Issues

  1. 1 Whether a third party (Delmar) must produce documents showing dates of manufacture of lisinopril lots allegedly supplied to Apotex
  2. 2 Whether Delmar should be ordered for oral discovery at the late stage of proceedings
  3. 3 Whether the Merck plaintiffs met the requirements of Federal Court Rules, 1998 r.238(3)(a) and (c) for examination of a non‑party

Ratio Decidendi

The court ordered limited production by Delmar of certified documents establishing dates of manufacture and dates of sale because Apotex did not oppose such production, but adjourned oral discovery sine die because the Merck plaintiffs failed to satisfy the evidentiary requirements of r.238(3)(a) and (c) and strict compliance is required at the late stage of the action.

Court Disposition

Motion partially granted: limited production ordered; oral discovery adjourned sine die

Orders

  • Delmar to produce within 20 days certified copies of documents establishing (a) dates of manufacture of lots of lisinopril acquired by Apotex after the patent issued alleged to have been manufactured by Delmar prior to issuance of the patent, and (b) dates when the lots of licensed lisinopril subsequently acquired...
  • Oral discovery of Delmar adjourned sine die; may be brought back if necessary after production of the specified documents.