NEW - Apotex Inc. v. Merck & Co. Inc., 2004 FC 1038 (CanLII).

  • July 27, 2004

Date: 2004-07-27. Docket: T-294-96. Martineau, J. | Link

This is a patent infringement case. Following a summary judgment, McKeown J. granted a declaration that Apotex infringed Merck’s ‘349 patent. Merck was entitled a remedy of either damages or an accounting of profits after a discovery of Apotex. On appeal, the Court of Appeal found, among other things, that if Merck wishes to have the option of pursuing an accounting for profits in lieu of damages, both parties are entitled to discovery. Both parties will then be entitled to make submissions on whether Merck should be allowed to elect for an accounting.  Prothonotary Tabib ordered Merck to deliver a further and better affidavit of documents that includes all documents relevant to their loss of sales and profits due to Apotex’s infringing activities. The Prothonotary discarded Apotex’s request for documents regarding Merck’s delay in prosecuting the ‘349 patent, the mislabeling by Merck of certain tablets, the “tenuous nature” of the ‘349 patent, and Merck’s market interference of Apotex’s attempts to sell its product. Apotex is appealing this order. The federal court found that while the Court of Appeal recognized Apotex’s right to discovery, it did not give Apotex the right to go on a fishing expedition. “Apotex's right to discovery of Merck on matters related to the grant of the equitable remedy of an accounting of profits is clearly subject to the requirements of [reasonableness] and relevance which in turn are subject to the Rules and applicable jurisprudence. It is clear that the burden of showing that Merck's production is inadequate lies on Apotex, who made that allegation. Apotex must show that documents exist, that they are in the possession or control of Merck and that the documents are relevant”. The federal court went on to find that the categories of documents that the Prothonotary discarded are not relevant to the issue of Merck’s entitlement to an accounting of profits. Apotex’s appeal was therefore dismissed.