Merck & Co. Inc. v. Apotex Inc.

Merck & Co. Inc. v. Apotex Inc.

The court limited discovery to information relevant to whether Apotex was in an infringing position at the time of acquisition; post-purchase conduct is irrelevant to infringement (may be relevant to damages reference). Specific questions and document requests were ordered answered where they directly bore on invalidity or pleaded defences (including parts of relied-upon documents, stability studies, use of excipients, and sales figures linked to commercial success), while questions that were post-purchase, speculative, privileged, or for expert opinion were dismissed. Undertakings were ordered to be updated on a set schedule. Requests to replace the corporate representative and to...

Citation
2002 FCT 505
Parties
Plaintiff (cross Defendant): MERCK & CO., INC.; Plaintiff (cross Defendant): MERCK FROSST CANADA & CO.; Plaintiff (cross Defendant): ZENECA LIMITED; Plaintiff (cross Defendant): ASTRAZENECA UK LIMITED; Plaintiff (cross Defendant): ASTRAZENECA CANADA INC.; Defendant (cross Plaintiff): APOTEX INC.
Court
Federal Court
Jurisdiction
Canada
Judgment Date
1 May 2002
Procedural Posture
Patent Infringement and Invalidity (lisinopril) / Pre Trial Discovery Motions/examinations for Discovery (motions to Resolve Discovery Objections)
Outcome
Motions partly granted and partly dismissed in accordance with specificity below; costs awarded on plaintiffs' motion to Apotex and on Apotex's motion to the plaintiffs generally.
Legal Topics
Infringement, Invalidity, Obviousness, Commercial Success, Examination for Discovery, Undertakings, Privilege, Pre Trial Reference on Damages
Source Language
English
Patent Law Civil Procedure Intellectual Property Discovery Practice Infringement Invalidity Obviousness Commercial Success +4 more

Case Brief

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Parties

MERCK & CO., INC.

Plaintiff (cross Defendant)

MERCK FROSST CANADA & CO.

Plaintiff (cross Defendant)

ZENECA LIMITED

Plaintiff (cross Defendant)

ASTRAZENECA UK LIMITED

Plaintiff (cross Defendant)

ASTRAZENECA CANADA INC.

Plaintiff (cross Defendant)

APOTEX INC.

Defendant (cross Plaintiff)

Procedural Posture

Patent Infringement and Invalidity (lisinopril) / Pre Trial Discovery Motions/examinations for Discovery (motions to Resolve Discovery Objections)

Legal Issues

  1. 1 Scope of permissible discovery at infringement stage versus matters reserved for a Rule 107 reference on damages
  2. 2 Relevance of post-purchase conduct to infringement determination
  3. 3 Applicability of Patent Act ss.55 and 56 (prior manufacture/sale and licences) to Apotex's defence

Ratio Decidendi

The court limited discovery to information relevant to whether Apotex was in an infringing position at the time of acquisition; post-purchase conduct is irrelevant to infringement (may be relevant to damages reference). Specific questions and document requests were ordered answered where they directly bore on invalidity or pleaded defences (including parts of relied-upon documents, stability studies, use of excipients, and sales figures linked to commercial success), while questions that were post-purchase, speculative, privileged, or for expert opinion were dismissed. Undertakings were ordered to be updated on a set schedule. Requests to replace the corporate representative and to...

Court Disposition

Motions partly granted and partly dismissed in accordance with specificity below; costs awarded on plaintiffs' motion to Apotex and on Apotex's motion to the plaintiffs generally.

Orders

  • Apotex must answer questions 7, 33, 34, 35, 36 and 38 and any further questions resulting therefrom as specified in the order
  • Apotex must provide updates to undertakings 1, 2, 11, 12, 13, 15 and 16 every three months