Digests

G.D. Searle & Co. v. Merck & Co. Inc.

T-277-00

2002 FCT 385, Hargrave P.

9/5/02

35 pp.

Motion for summary judgment, declaration Merck infringed claim 42 of patent, order pursuant to Federal Court Rules, 1998, rr. 106, 107 for segregated trial to allow determination of validity of claim 42 before proceeding to trial on remaining claim--Merck also seeking summary judgment dismissing action alleging infringement of four claims of Searle's patent, declaration permitted to manufacture, use, sell to others subject-matter of specified list of claims--Merck offering for sale, selling, distributing drug Rofecoxib under name "Vioxx" since November 1999--Rofecoxib is furanone--Searle marketing drug Celecoxib under name "Celebrex"--Both target COX 2 enzyme, which mainly acts in modulating compounds causing pain, inflammation--Both associated with less risk of gastrointestinal side effects than predecessor nonsteroidal, anti-inflammatory drugs--Searle arguing Rofecoxib, Celecoxib only COX 2 selective inhibitors on Canadian market, thus competitive products--Searle patent application filed on January 14, 1994--Neither disclosed nor claimed furanones including Rofecoxib--Merck patent application filed June 9, 1994--Disclosed, claimed furanones including Rofecoxib--In 1998 Searle amended application to introduce claims to furanones--Examiner rejected proposed furanone claims in Searle's application on basis Merck patent application had earlier claim for furanones--Allowed Merck's patent application--Merck patent issued in 1999--Searle patent issued with 200 claims, including those in issue, in 2000--Statement of claim alleging Merck's Vioxx infringing asserted claims--By defence and counterclaim, Merck alleging 140 claims of Searle patent, including asserted claims, invalid--Searle subsequently executed formal dedication to public of 136 of 200 claims of its patent, representing all but asserted claims of 140 claims of Searle patent which Merck alleging invalid--Although four claims asserted, Searle amended order sought on motion to include only claim 42 (group of compounds defined by successively narrowing dependencies of earlier claims)--Merck arguing that because claim 42 related to dedicated claims, dedication covering non-dedicated claim 42--(1) On basis of authorities, test for summary judgment whether "genuine issue for trial" which depends on nature, content of evidence presented in support of motion--Judicial reluctance to determine patent issue in motion for summary judgment due to difficulty in establishing facts without trial--In present case parties filed affidavits, transcripts of cross-examinations conducted on those affidavits--Contradictory evidence in relation to claims 37, 53, 198 but plaintiffs relying on fact Merck not denying Vioxx infringing claim 42 to support argument uncontested summary judgment should be issued for claim 42--Merck taking position declaration of infringement unwarranted-- Merck erroneously ignored legal proposition that each claim in patent separate, distinct (Patent Act, s. 58)--Since each claim separate, act affecting certain distinct claims not necessarily affecting remaining claims--Searle's dedication to public referring to specific claims, excluding others-- Excluded claims not "somehow" encompassed by dedicated claims, but effect of dedication still in question--In Parke-Davis Division v. Canada (Minister of Health), [2002] 1 F.C. 517 (T.D.) Court considered legal nature of patent dedication, but no clear statement as to legal consequences of dedication or how dedication of certain claims might affect non-dedicated claims--Unlike in Parke-Davis, no question herein about intention of dedicating party--Searle maintaining intention demonstrated by dedication to surrender or dispose of certain identified claims in patent--Applying reasoning in Parke-Davis, and considering, s. 58, dedication of certain claims to public terminating patentee's rights to monopoly on subject-matter described in claims--Such dedication not affecting rights conferred by remaining claims in patent--Upon dedication of claims, patent to be read as if those claims had never issued, subject to any claim for past infringement--Accordingly, public entitled to use or manufacture subject-matter in dedicated claims--Public's entitlement to use, manufacture subject-matter in dedicated claims limited by protection conferred by existing patents, including Searle patent, that now consists only of asserted claims--Validity of those claims remaining to be determined in appropriate proceedings--Dedication necessarily "without prejudice" to asserted claims or any other patent--In Searle patent, claim 42 for compound Rofecoxib--Claim undisturbed by dedication to public--Plaintiffs establishing entitled to summary judgment for infringement of claim 42--In light of evidence, submissions, claim 42 infringed--Merck's motion for summary judgment dismissed--Plaintiffs not estopped from pursuing asserted claims--(2) Rr. 106, 107 setting out test for segregating claims--Searle not producing evidence segregation of Merck's counterclaim would reduce discovery or evidence at trial, or otherwise expedite proceedings-- Segregation instead would likely duplicate such evidence because evidence with respect to other claims on Searle patent necessarily touches on claim 42--Merck's counterclaim alleging invalidity of 140 claims should not be segregated-- (3) Federal Court Act, s. 50(1)(b) granting Court discretion to stay proceedings "in the interest of justice"--Determination of issues raised in counterclaim of necessity involving determinations of issues raised in statement of claim--Will be overlap in evidence--No overriding justification for granting order staying trial of counterclaim--Order issued declaring Merck infringed claim 42, and summary judgment granted in respect of claim 42 only; trial of action with respect to validity of claim 42 not segregated; stay of trial of balance of action denied--Patent Act, R.S.C., 1985, c. P-4, s. 58--Federal Court Act, R.S.C., 1985, c. F-7, s. 50(1)(b)--Federal Court Rules, 1998, SOR/98-106, rr. 106, 107.