Merck Sharp & Dohme Corp. v. Wyeth LLC

Merck Sharp & Dohme Corp. v. Wyeth LLC

Leave to file the Reply Reports and the Rebuttal Opinion was granted because the proposed reports were responsive to issues first raised by the defendant's expert reports, could not reasonably have been anticipated and therefore did not constitute impermissible splitting, were necessary to assist the Court on complex scientific matters (including interpretation of patent prosecution communications under s.53.1), and their admission would not cause substantial prejudice to the defendant; accordingly the motion was granted and costs awarded to Merck.

Citation
2020 FC 1087
Parties
Plaintiff: Merck Sharp & Dohme Corp.; Plaintiff: Merck Canada Inc.; Defendant: Wyeth LLC
Court
Federal Court
Jurisdiction
Canada
Judgment Date
24 November 2020
Procedural Posture
Patent Invalidity (impeachment) Action / Pre Trial Motion for Leave to File Reply Expert Reports
Outcome
Motion granted
Legal Topics
Reply Expert Evidence, Admissibility of Expert Evidence, Patent Prosecution Communications (s.53.1 Patents Act), Obviousness, Anticipation, Double Patenting, Costs
Source Language
English
Intellectual Property Patent Law Evidence Civil Procedure Reply Expert Evidence Admissibility of Expert Evidence Patent Prosecution Communications (s.53.1 Patents Act) Obviousness +3 more

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Parties

Merck Sharp & Dohme Corp.

Plaintiff

Merck Canada Inc.

Plaintiff

Wyeth LLC

Defendant

Procedural Posture

Patent Invalidity (impeachment) Action / Pre Trial Motion for Leave to File Reply Expert Reports

Legal Issues

  1. 1 Whether Merck should be granted leave to serve and file reply expert reports and a rebuttal opinion
  2. 2 Whether the proposed reply evidence is responsive rather than splitting the plaintiff's case
  3. 3 Whether the rebuttal opinion on patent office communications is permissible under s.53.1 of the Patent Act

Ratio Decidendi

Leave to file the Reply Reports and the Rebuttal Opinion was granted because the proposed reports were responsive to issues first raised by the defendant's expert reports, could not reasonably have been anticipated and therefore did not constitute impermissible splitting, were necessary to assist the Court on complex scientific matters (including interpretation of patent prosecution communications under s.53.1), and their admission would not cause substantial prejudice to the defendant; accordingly the motion was granted and costs awarded to Merck.

Court Disposition

Motion granted

Orders

  • The Plaintiffs' Reply Motion is granted
  • The Plaintiffs are granted leave to file the Reply Reports of Drs. Paton, Kasper and Petrovsky and the Rebuttal Opinion of Dr. Paton