Apotex Inc. v. Merck & Co. Inc.

Apotex Inc. v. Merck & Co. Inc.

Merck met the onus for bifurcation: an early judicial determination of entitlement to an accounting of profits will likely narrow and focus discovery, avoid irrelevant and costly discovery into damages if the remedy is not available, and promote a just, expeditious and least expensive resolution; safeguards were ensured by permitting discovery on matters relevant to entitlement prior to the hearing. The motion for bifurcation is therefore granted and Merck awarded costs.

Citation
2004 FC 1133
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
16 August 2004
Procedural Posture
Patent Infringement; Motion for Bifurcation Under Rule 107 / Pre Trial Motion / Case Management (determination of Entitlement to Remedy Prior to Discovery)
Outcome
Motion granted; bifurcation order issued in favour of Merck; Merck awarded costs
Legal Topics
Accounting of Profits, Bifurcation, Discovery, Damages, Case Management
Source Language
English
Intellectual Property Patent Law Civil Procedure Remedies Accounting of Profits Bifurcation Discovery Damages +1 more

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; Motion for Bifurcation Under Rule 107 / Pre Trial Motion / Case Management (determination of Entitlement to Remedy Prior to Discovery)

Legal Issues

  1. 1 Whether Merck is entitled to elect an accounting of Apotex's profits as a remedy for patent infringement
  2. 2 Whether the issue of entitlement should be bifurcated and determined prior to further discovery into damages or profits
  3. 3 Scope and sequencing of discovery and the parties' election between profits and damages

Ratio Decidendi

Merck met the onus for bifurcation: an early judicial determination of entitlement to an accounting of profits will likely narrow and focus discovery, avoid irrelevant and costly discovery into damages if the remedy is not available, and promote a just, expeditious and least expensive resolution; safeguards were ensured by permitting discovery on matters relevant to entitlement prior to the hearing. The motion for bifurcation is therefore granted and Merck awarded costs.

Court Disposition

Motion granted; bifurcation order issued in favour of Merck; Merck awarded costs

Orders

  • The question of Merck's entitlement to elect an accounting of Apotex's profits shall be determined separately and prior to any further discovery into quantification of damages or profits.
  • Scheduling of examinations for discovery and a hearing on entitlement shall be by agreement of counsel or, failing agreement, referred to Prothonotary Lafrenière as Case Management Prothonotary for determination.