Apotex Inc. v. Merck & Co. Inc.

Apotex Inc. v. Merck & Co. Inc.

Liability was finally determined by earlier proceedings and summary judgment; under Federal Court Rules the appropriate and efficient procedure is a Rule 153 reference to determine factual matters of remedy rather than a full trial; Merck is entitled to elect damages or an accounting of profits after discovery of Apotex, entitlement to punitive damages is established in principle with quantum to be fixed on reference, and Merck need not be discovered unless it elects damages; costs of this motion awarded to Merck as previously decided.

Citation
2002 FCT 626
Parties
Plaintiff: Apotex Inc.; Defendant (plaintiff by Counterclaim): Merck & Co., Inc.; Defendant (plaintiff by Counterclaim): Merck Frosst Canada & Co.
Court
Federal Court
Jurisdiction
Canada
Judgment Date
31 May 2002
Procedural Posture
Patent Infringement / Post Summary Judgment Remedies Motion; Motion to Settle Formal Judgment and Order Reference
Outcome
Order: declaration of infringement maintained; reference ordered to determine factual issues of remedy; Merck entitled to elect damages or accounting of profits after discovery of Apotex; punitive damages entitlement recognized with quantum to be determined on reference; discovery limited such that Apotex must...
Legal Topics
Infringement, Res Judicata / Issue Estoppel, Reference to Determine Facts, Accounting of Profits, Damages, Punitive/exemplary Damages, Discovery, Costs
Source Language
English
Intellectual Property Patent Law Civil Procedure Infringement Res Judicata / Issue Estoppel Reference to Determine Facts Accounting of Profits Damages +3 more

Case Brief

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Parties

Apotex Inc.

Plaintiff

Merck & Co., Inc.

Defendant (plaintiff by Counterclaim)

Merck Frosst Canada & Co.

Defendant (plaintiff by Counterclaim)

Procedural Posture

Patent Infringement / Post Summary Judgment Remedies Motion; Motion to Settle Formal Judgment and Order Reference

Legal Issues

  1. 1 Whether factual issues on remedy should be determined by reference or full trial
  2. 2 Whether plaintiff may elect between damages and an accounting of profits
  3. 3 Whether punitive/exemplary damages are appropriate

Ratio Decidendi

Liability was finally determined by earlier proceedings and summary judgment; under Federal Court Rules the appropriate and efficient procedure is a Rule 153 reference to determine factual matters of remedy rather than a full trial; Merck is entitled to elect damages or an accounting of profits after discovery of Apotex, entitlement to punitive damages is established in principle with quantum to be fixed on reference, and Merck need not be discovered unless it elects damages; costs of this motion awarded to Merck as previously decided.

Court Disposition

Order: declaration of infringement maintained; reference ordered to determine factual issues of remedy; Merck entitled to elect damages or accounting of profits after discovery of Apotex; punitive damages entitlement recognized with quantum to be determined on reference; discovery limited such that Apotex must...

Orders

  • Declaration that Apotex infringed claims 1-5 and 8-15 of Patent No. 1,275,349 (as previously granted)
  • Reference under Federal Court Rule 153 to determine extent of infringement, quantities, sales, accounting of profits or damages, pre- and post-judgment interest, and quantum of punitive/exemplary damages