Apotex Inc. v. Merck & Co. Inc.

Apotex Inc. v. Merck & Co. Inc.

The court found the present dispute identical in parties, issues and essential facts to prior proceedings in which the validity of the Merck patent and infringement by Apotex had been finally decided; issue estoppel/res judicata therefore barred relitigation and summary judgment for the defendants was appropriate,...

Source-derived case information.

Citation
2001 FCT 11
Parties
Plaintiff (defendant by Counterclaim): APOTEX INC.; Defendant (plaintiff by Counterclaim): MERCK & CO. INC.; Defendant (plaintiff by Counterclaim): MERCK FROSST CANADA INC.
Court
Federal Court
Jurisdiction
Canada
Judgment Date
2 February 2001
Procedural Posture
Patent Infringement / Declaratory Relief / Hearing of Cross Motions for Summary Judgment (rule 216)
Outcome
Summary judgment granted for Defendants Merck & Co. Inc. and Merck Frosst Canada Inc.; Apotex's cross-motion dismissed; Apotex's action dismissed; costs to Defendants; remedy to be determined at a subsequent hearing.
Legal Topics
Res Judicata, Issue Estoppel, Compulsory Licence, Summary Judgment, Extinguishment of Statutory Rights, Purchaser's Rights in Rem
Source Language
english
Intellectual Property Patent Law Civil Procedure Res Judicata Issue Estoppel Compulsory Licence Summary Judgment Extinguishment of Statutory Rights +1 more

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Parties

APOTEX INC.

Plaintiff (defendant by Counterclaim)

MERCK & CO. INC.

Defendant (plaintiff by Counterclaim)

MERCK FROSST CANADA INC.

Defendant (plaintiff by Counterclaim)

Procedural Posture

Patent Infringement / Declaratory Relief / Hearing of Cross Motions for Summary Judgment (rule 216)

Legal Issues

  1. 1 Whether the doctrine of res judicata/issue estoppel bars Apotex from relitigating patent validity and infringement
  2. 2 Whether Apotex's use of enalapril maleate infringes Canadian Patent No. 1,275,349
  3. 3 Whether the extinguishment by statute of Delmar's compulsory licence affected downstream purchasers' rights

Ratio Decidendi

The court found the present dispute identical in parties, issues and essential facts to prior proceedings in which the validity of the Merck patent and infringement by Apotex had been finally decided; issue estoppel/res judicata therefore barred relitigation and summary judgment for the defendants was appropriate, with Novopharm distinguished on its facts.

Court Disposition

Summary judgment granted for Defendants Merck & Co. Inc. and Merck Frosst Canada Inc.; Apotex's cross-motion dismissed; Apotex's action dismissed; costs to Defendants; remedy to be determined at a subsequent hearing.

Orders

  • Summary judgment in favour of Merck & Co. Inc. and Merck Frosst Canada Inc.
  • Cross-motion for summary judgment by Apotex Inc. dismissed