Digests

Apotex Inc. v. Merck & Co. Inc.

T-294-96

2001 FCT 11, McKeown J.

2/2/01

12 pp.

Motions for summary judgment--Action for declaration use of enalapril maleate not infringing defendants' patent--Counterclaim for declaration use infringing patent--Federal Court Rules, r. 216 stating motion for summary judgment granted where no genuine issue for trial--Summary judgment should only be granted when case so doubtful not deserving consideration by trial judge: Granville Shipping Co. v. Pegasus Lines Ltd., [1996] 2 F.C. 853 (T.D.)--Matter disposed of by operation of doctrine of res judicata or issue estoppel which applies to every point in issue which parties, exercising reasonable diligence might have brought forward at time--Doctrine operating to reinforce principle of finality in litigation process--Rocois Construction Inc. v. Québec Ready Mix Inc., [1990] 2 S.C.R. 440 stating res judicata implying identity of parties, object, cause, but not necessary for two actions to have exactly same conclusion--Case involved identical parties, issues, almost identical facts to Merck & Co. v. Apotex Inc. (1994), 59 C.P.R. (3d) 133 (F.C.T.D.); (1995), 60 C.P.R. (3d) 356 (F.C.A.)--Both cases involving enalapril maleate acquired by Delmar under compulsory licence issued on April 24, 1992--As in present case, Merck case involved bulk enalapril maleate acquired by Delmar, sold to foreign third party in January, February 1993--Both cases requiring determination as to effect of statutory extinguishment of Delmar licence on February 14, 1993 on rights of subsequent purchasers of enalapril maleate sold by Delmar while still under licence--MacKay J. and C.A. finding Merck patent infringed by Apotex in relation to enalapril maleate purchased by Apotex from undisclosed foreign customer of Delmar after compulsory licence held by Delmar extinguished by statute--Only difference between Merck v. Apotex, this case that enalapril maleate involved in previous case acquired in March 1993 and in present case acquired by Apotex in May, October 1994--Nothing turning on this factual difference as in both cases enalapril maleate acquired after Delmar compulsory licence extinguished by statute on February 14, 1993--Plaintiff arguing Eli Lilly & Co. v. Novopharm Ltd., [1998] 2 S.C.R. 129 illustrated purchaser's rights existing in rem and that because enalapril maleate sold to foreign third party from which Apotex purchased it prior to extinguishment of Delmar compulsory licence, such extinguishment therefore having no effect on Apotex's rights to use subject enalapril maleate--Novopharm distinguished as involving different facts: question of termination of licence by patentee rather than extinguishment of compulsory licence by statute--No special circumstances warranting Court's exercise of discretion to circumvent normal workings of doctrine of res judicata--As result of Merck v. Apotex, no genuine issue to be tried in respect of claim for declaratory relief in Apotex's statement of claim and no defence to claim of patent infringement--Summary judgment ordered in favour of defendants--Federal Court Rules, 1998, SOR/98-106, r. 216.