PATENTS |
Infringement |
Merck & Co., Inc. v. Nu-Pharm Inc.
T-753-99
Muldoon J.
21/1/00
22 pp.
Motion by plaintiffs seeking order for interlocutory injunction restraining defendant Nu-Pharm Inc. from infringing Canadian Letters Patent 1,275,349--Applicants also seeking to restrain Nu-Pharm Inc. from manufacturing, acquiring, importing, exporting, distributing, selling, offering for sale, taking orders for, advertising, marketing enalapril maleate in bulk, tablet form--Respondent wholesaler, distributor of generic drugs--Applicants alleging all claims of patent valid--Respondent offering opinions of six experts in variety of pertinent fields as evidence claim 1 not valid--Vasotec, Nu-Enalapril both angiotensin-converting enzyme inhibitors, used in treatment of hypertension, heart failure--Patent Act, s. 57, Federal Court Rules, 1998, r. 373 give Court jurisdiction to hear request for interlocutory relief--Test for determining whether interlocutory injunction should be granted three-part test found in RJR--MacDonald Inc. v. Canada (Attorney General), [1994] 1 S.C.R. 311--Court must determine first whether serious issue to be tried--Preliminary assessment making clear claims in question stand chance of being both valid, infringed--Claim of infringement made against respondent not frivolous--Serious issue to be tried--Applicants submitting first in regard to irreparable harm respondent will breach permanent injunction entered against Apotex through manufacturing, selling of Nu-Enalapril--Applicants also submitting may not be able to collect damages awarded as Nu-Pharm mere wholesaler, distributor with 17 employees, having only $16 million in annual sales and too few assets to help pay any award of damages, profits ordered against it--There are occasions when damage to one's goodwill can ground finding of irreparable harm--Dearth of evidence pointing to potential for loss of governmental goodwill herein--Court satisfied no irreparable harm will come to applicants despite making out strong case for patent infringement issue--Doubtful whether respondent can afford whatever relief may eventually issue against it--Disruption from which respondent will suffer if forced to stop manufacture, sale of Nu-Enalapril tablets far outweighing inconvenience applicants will experience if impugned drug allowed to stay on market until final disposition of main action--No injunction forthcoming despite applicants' adduced evidence of not only serious issue but of strong case for infringement--Motion dismissed--Patent Act, R.S.C., 1985, c. P-4, s. 57--Federal Court Rules, 1998, SOR/98-106, r. 373.