Merck & Co. Inc. v. Apotex Inc.

Merck & Co. Inc. v. Apotex Inc.

The motion is granted because the proposed amendments arise from recent documentary productions and discoveries, disclose arguable defences (including that the marketed product is lisinopril dihydrate distinct from the patent claim), are not unduly late, and will not cause irreparable prejudice that cannot be compensated by costs; limited deletions for redundancy and ordering of particulars and deadlines make allowance just and proportionate.

Citation
2002 FCT 509
Parties
Plaintiff (defendant by Counterclaim): MERCK & CO., INC.; Plaintiff (defendant by Counterclaim): MERCK FROSST CANADA & CO.; Plaintiff (defendant by Counterclaim): ZENECA 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
2 May 2002
Procedural Posture
Patent Infringement; Counterclaim for Declaratory Relief / Motion Under Federal Court Rules, 1998, Rule 75 to Serve and File a Fresh as Amended Statement of Defence and Counterclaim (pre Trial Amendment Motion)
Outcome
Motion granted in part. Apotex permitted to serve and file Fresh as Amended Statement of Defence and Counterclaim with specified redundant paragraphs struck; particulars ordered; no further discovery on amendments; plaintiffs permitted to file a Further Amended Reply and Defence to Counterclaim; costs in the cause.
Legal Topics
Patent Infringement, Amendment of Pleadings, Divisional Patent Applications, Patent Disclosure and Sufficiency (s.34), Discovery
Source Language
English
Intellectual Property Patent Law Civil Procedure Patent Infringement Amendment of Pleadings Divisional Patent Applications Patent Disclosure and Sufficiency (s.34) Discovery

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Parties

MERCK & CO., INC.

Plaintiff (defendant by Counterclaim)

MERCK FROSST CANADA & CO.

Plaintiff (defendant by Counterclaim)

ZENECA 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; Counterclaim for Declaratory Relief / Motion Under Federal Court Rules, 1998, Rule 75 to Serve and File a Fresh as Amended Statement of Defence and Counterclaim (pre Trial Amendment Motion)

Legal Issues

  1. 1 Whether Apotex should be permitted to amend its Statement of Defence and Counterclaim under Rule 75
  2. 2 Whether lisinopril dihydrate falls outside the scope of the '350 patent and constitutes a non-infringing product
  3. 3 Whether Canadian Application No. 607,198 is an improper divisional application under s.36(2) of the Patent Act

Ratio Decidendi

The motion is granted because the proposed amendments arise from recent documentary productions and discoveries, disclose arguable defences (including that the marketed product is lisinopril dihydrate distinct from the patent claim), are not unduly late, and will not cause irreparable prejudice that cannot be compensated by costs; limited deletions for redundancy and ordering of particulars and deadlines make allowance just and proportionate.

Court Disposition

Motion granted in part. Apotex permitted to serve and file Fresh as Amended Statement of Defence and Counterclaim with specified redundant paragraphs struck; particulars ordered; no further discovery on amendments; plaintiffs permitted to file a Further Amended Reply and Defence to Counterclaim; costs in the cause.

Orders

  • Apotex shall serve and file within ten (10) days its Fresh as Amended Statement of Defence and Counterclaim in the form in Schedule A to its notice of motion, subject to striking the first and second paragraphs on page 8 and the second and third paragraphs on page 9 for redundancy.
  • Paragraph 19(m)(v) is permitted but Apotex shall serve the particulars requested by the Plaintiffs in paragraphs 46 to 48 of their written representations within fifteen (15) days of the date of the order.