Merck & Co. Inc. v. Apotex Inc.

Merck & Co. Inc. v. Apotex Inc.

The Prothonotary did not err in law or misapprehend facts in refusing to compel answers because the disputed questions sought post-purchase information or matters properly reserved for the bifurcated reference on damages/profits; plaintiffs had been provided receiving logs and invoices evidencing acquisition dates; supplier/process documents were speculative and not shown to be in Apotex's possession or control; therefore the refusal was a proper exercise of discretion and the appeal is dismissed.

Citation
2003 FCT 158
Parties
Plaintiff (cross Defendant): Merck & Co., Inc.; Merck Frosst Canada & Co.; Zeneca Limited; AstraZeneca UK Limited; AstraZeneca Canada Inc.; Defendant (cross Plaintiff): Apotex Inc.
Court
Federal Court
Jurisdiction
Canada
Judgment Date
13 February 2003
Procedural Posture
Patent Infringement Discovery Dispute / Appeal From Prothonotary Order (motion to Compel Discovery)
Outcome
Appeal dismissed; motion dismissed
Legal Topics
Infringement, Validity, Examination for Discovery, Bifurcation, Reference on Damages, S.56 Patent Act, Licence Defence
Source Language
English
Intellectual Property Patent Law Civil Procedure Discovery Infringement Validity Examination for Discovery Bifurcation +3 more

Case Brief

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Parties

Merck & Co., Inc.; Merck Frosst Canada & Co.; Zeneca Limited; AstraZeneca UK Limited; AstraZeneca Canada Inc.

Plaintiff (cross Defendant)

Apotex Inc.

Defendant (cross Plaintiff)

Procedural Posture

Patent Infringement Discovery Dispute / Appeal From Prothonotary Order (motion to Compel Discovery)

Legal Issues

  1. 1 Whether the Prothonotary erred in refusing to order answers to specified discovery questions
  2. 2 Whether requested documents and information relate to liability or to the separate reference on damages/profits
  3. 3 Whether shipping, inventory and supplier documents are within possession, power or control and relevant at this stage

Ratio Decidendi

The Prothonotary did not err in law or misapprehend facts in refusing to compel answers because the disputed questions sought post-purchase information or matters properly reserved for the bifurcated reference on damages/profits; plaintiffs had been provided receiving logs and invoices evidencing acquisition dates; supplier/process documents were speculative and not shown to be in Apotex's possession or control; therefore the refusal was a proper exercise of discretion and the appeal is dismissed.

Court Disposition

Appeal dismissed; motion dismissed

Orders

  • This motion is dismissed
  • Costs to follow the cause