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Apotex Inc. v. Merck & Co. Inc.
A-407-02
2003 FCA 291, Sharlow J.A.
30/6/03
22 pp.
Appeal challenging infringement remedies awarded against it in action No. T-294-96 ((2002), 19 C.P.R. (4th) 460)--Canadian patent 1275349 relating to enalapril, enalapril maleate, said to be ingredient of drug called Vasotec--Apotex generic drug manufacturer--In 1991, Merck commenced infringement action against Apotex in action No. T-2408-91-- In 1996 action, both parties brought motions for summary judgment on issue of infringement--Motions Judge dismissed summary judgment motion of Apotex, allowed summary judgment motion of Merck on basis of doctrine of res judicata--Summary judgment upheld on appeal--Motions Judge ordered matter of remedy to be dealt with at subsequent hearing--Apotex appealing order made by Motions Judge-- Motions Judge chose summary judgment, supplemented with reference with lengthy terms of reference, as solution-- Nothing wrong in principle with that approach, provided chosen procedure safeguarded rights of both parties-- Appropriate in remedy phase of present case to deal with many of issues by way of summary judgment--Given infringement proven, Apotex also found in contempt of court for breaching permanent injunction, and that Apotex has consistently taken narrowest possible view of disclosure obligations, unfair to Merck to reduce scope of declaration at this stage to deal with mere possibility Apotex may have or may acquire enalapril without infringing 349 patent-- Motions Judge could not determine facts relating to entitlement have not changed, when Apotex has not had opportunity to discover evidence on those facts--Motions Judge erred in permitting Merck to make election after discovering Apotex, without first permitting Apotex to discover Merck on issues of remedy so that it could make appropriate submissions on whether Merck should be entitled to make election--Error could be corrected by appropriate amendment to judgment--Purpose of punitive damages to punish, deter wrongdoer, others, to denounce wrongful behaviour--Punitive damages awarded only where compensatory damages, other normal civil remedies insufficient to accomplish objectives, in amount no greater than necessary to accomplish objective--Motions Judge erred in deciding, before other remedies determined, Apotex liable for punitive damages--Matter of punitive damages inappro-priate subject for reference--Errors could be corrected by appropriate amendment to judgment--Appeal allowed in part, matter remitted to Trial Division for continuance of trial on issues to be determined in light of judgment on appeal.