Merck & Co. Inc. v. Apotex Inc.

Merck & Co. Inc. v. Apotex Inc.

Where discovery requests are marginally relevant but the probable utility of the answers is minimal and the burden, expense and inconvenience of searching and producing the material is disproportionate, the court will deny those discovery requests; questions seeking opinion or subjective state of mind are not to be compelled; substantive legal issues such as divisional scope and claim interpretation are for trial and expert evidence, not for compelled discovery of additional internal materials.

Citation
2004 FC 1166
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
23 August 2004
Procedural Posture
Patent Infringement (validity Counterclaim) / Redetermination of Objections on Examination for Discovery; Motion to Determine Scope of Discovery
Outcome
Apotex's motion to compel further answers and production largely dismissed; numerous specified questions and categories will not have to be answered; representatives need not reappear; costs awarded to Merck & Co., Inc. under column III of Tariff B.
Legal Topics
Scope of Discovery, Relevance, Divisional Application/one Invention, Obviousness, Sufficiency (specification), Utility, Prosecution History, Opinion Evidence/expert Evidence, Proportionality and Undue Burden
Source Language
English
Intellectual Property Patent Law Civil Procedure Evidence Discovery Scope of Discovery Relevance Divisional Application/one Invention +6 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 (validity Counterclaim) / Redetermination of Objections on Examination for Discovery; Motion to Determine Scope of Discovery

Legal Issues

  1. 1 Whether numerous discovery questions and documentary searches sought by Apotex are relevant and must be answered or produced
  2. 2 Whether divisional application 607,198 is invalid as an improper divisional under the one‑invention rule
  3. 3 Whether inquiries into inventors' state of mind or parties' opinions must be answered on discovery

Ratio Decidendi

Where discovery requests are marginally relevant but the probable utility of the answers is minimal and the burden, expense and inconvenience of searching and producing the material is disproportionate, the court will deny those discovery requests; questions seeking opinion or subjective state of mind are not to be compelled; substantive legal issues such as divisional scope and claim interpretation are for trial and expert evidence, not for compelled discovery of additional internal materials.

Court Disposition

Apotex's motion to compel further answers and production largely dismissed; numerous specified questions and categories will not have to be answered; representatives need not reappear; costs awarded to Merck & Co., Inc. under column III of Tariff B.

Orders

  • Apotex's motion dismissed
  • Questions identified in reasons (including lists in paras [51]‑[55]) shall not be answered or further produced