Merck & Co., Inc. v. Apotex Inc.
T-2408-91
MacKay J.
23/1/98
29 pp.
Application by defendant for order to vary or stay operation of permanent injunction rendered in December 1994 as part of judgment following trial of action where Merck's patent 1,275,349 ('349) for Apo-enalapril found infringed ((1994), 88 F.T.R. 260 (F.C.T.D.), var. by [1995] 2 F.C. 723 (C.A.))-If motion allowed, Apotex would contest validity of patent claims and would use compounds, other than enalapril maleate, believed to be included in claim 1, without violating terms of injunction-Apotex arguing validity of claim 1 not determined after argument by Court in action leading to judgment-In action leading to judgment, Merck did not seek declaration of validity of patent or claims contained in it, but sought declaration of infringement, in regard to claims of '349 patent-Judgment made finding of infringement and granted injunction-Appeal decision reversed judgment in part, but maintained finding of infringement and relief awarded in relation to Apotex's use of enalapril maleate from sources identified at trial which were not protected by Act, s. 56 or by licence-Since then, Apotex has become aware of availability for purchase of compounds other than enalapril or enalapril maleate which fall within scope of claim 1 of '349 patent, hence present proceeding-Application requiring review of issues tried in action, consideration of Court's jurisdiction to grant relief sought and recognition doctrine of res judicata not applicable in circumstances of case-Application dismissed-By its terms, Merck's statement of claim sought relief broader in its application than concern exclusively with Apotex's enalapril maleate tablets; it sought protection of full scope of patent, as defined by claims specified in statement-No evidence of any agreement or understanding between parties validity of claim 1 or other claims not questioned at trial reserved, or even that it was believed then by Apotex to be reserved, for consideration at later time-Decision not to question validity of claim 1 or other compound claims at trial decision by Apotex-By express terms of amended defence, Apotex conceded, "for purpose of within action", claim 1 valid-Apotex has thus excluded possibility of this action of contesting validity of claim 1-Court cannot reopen trial of issues disposed of expressly or implicitly in reaching judgment now sought to be varied-There would be no end of litigation if party were free to reopen trial of issues once disposed of because circumstance not contemplated at time of trial has now come to its attention-General law precluding Court from varying terms of judgment except within particular exceptions-New circumstance simply new reason for raising defence that might have been, but was not, raised at trial, in relation to claim 1-Neither exceptional circumstance within meaning of R. 1733, nor new development beyond being advanced at trial on same basis here sought to be established by expert affidavits containing theoretical analysis concerning scope of claim 1-Neither exceptional circumstance that would warrant amendment of injunction, assuming Court may vary permanent injunction apart from R. 1733-Relief sought by Apotex may be within Court's jurisdiction pursuant to R. 1733 , but Apotex did not rely thereon and has not established exceptional circumstances that would warrant variation of Court's order under that Rule-Irreparable harm not established-Res judicata not applicable herein-In sum, Court functus officio in relation to those matters within issues raised by pleadings of both parties-No basis to award costs against Apotex on solicitor-and-client basis-Fact application unsuccessful does not mean it is frivolous or vexatious-However, since Apotex has presented less than full view of history of dealings between parties, costs awarded on party-and-party basis, including provision for senior and junior counsel for Merck under R. 344(4.1)-Federal Court Rules, C.R.C., c. 663, RR. 344(4.1) (as enacted by SOR/95-282, s. 1), 1733-Patent Act, R.S.C., 1985, c. P-4, s. 56 (as am. by S.C. 1993, c. 44, s. 194).