Merck & Co., Inc. v. Apotex Inc., 2005 FC 1560

Date: 20051118

Docket: T-2792-96

Citation: 2005 FC 1560

Ottawa, Ontario, November 18, 2005

PRESENT:      THE HONOURABLE MR. JUSTICE VON FINCKENSTEIN

BETWEEN:

MERCK & CO., INC., MERCK FROSST CANADA & CO.,

SYNGENTA LIMITED, ASTRAZENECA UK LIMITED

and ASTRAZENECA CANADA INC.

Plaintiffs

and

APOTEX INC

Defendant

REASONS FOR ORDER AND ORDER

[1]           This is an action between Merck & Co., Inc. and Merck Frosst Canada Inc. (collectively "Merck"), AstraZeneca UK Limited, AstraZeneca Canada Inc. (collectively "AstraZeneca"), and Apotex Inc. ("Apotex") regarding the alleged infringement of the Canadian Patent 1,275,350.

[2]           This matter is scheduled for trial beginning on January 9, 2006.

[3]           On September 13, 2005, Snider, J. varied the protective order such that each party could allow up to 12 experts to access the confidential information.

[4]           Dr. Gavras was one of the experts to whom Apotex granted access.

[5]           On August 25, 2005, Merck brought a motion to strike the affidavit of Dr. Gavras and to have the firms Goodmans LLP and Hughes and Associates disqualified to act for Apotex. This motion has not yet been heard.

[6]           In light the possibility of Dr. Gavras' disqualification, Apotex now brings a motion to:

[7]           AstraZeneca and Merck oppose this motion by arguing that the need for the delay is due to Apotex's own inflexibility, and due to Apotex asserting that all of their affidavit evidence fall under the confidentiality order.

[8]           he Federal Court of Appeal in Apotex Inc. v. AstraZeneca Canada Inc., 2004 FCA 226 at paragraph 2 set out the relevant law for varying a protective order. The trial management judge has to determine "whether the facts establish some change in circumstances or compelling reason to vary."

[9]           A successful motion to disqualify Dr. Gavras would certainly amount to a change in circumstances or a compelling reason to vary the confidentiality order.

[10]         In light of the fact that this case has been ongoing for 16 years, and is scheduled for trial in January 2006, this court is most anxious to avoid last minute procedural actions that would delay the trial. On the other hand, the court cannot prejudge whether the disqualification motion will proceed or what will be its outcome. Furthermore, access to the confidential information by Dr. Brunner should not give Apotex an additional expert with access to confidential information for the trial.

[11]         Accordingly, the court finds that Dr. Brunner should have access to the confidential information but the use of Dr. Brunner's evidence must be conditional upon Dr. Gavras being disqualified.

[12]         Consequently, I am prepared to allow Dr. Brunner to have access to the confidential information and to receive an extra two weeks to prepare and file his affidavit: i.e. by November 28, 2005. However this extension only applies to the filing of Dr. Brunner's affidavits and not to other materials to be filed by Apotex. In the event that Dr. Gavras is not disqualified, Apotex shall be restricted from using Dr Brunner's evidence at trial.

[13]         Given the unpredictable nature if the disqualification motion, costs for this motion shall follow the cause.

ORDER

THIS COURT ORDERS that:

1.                   Paragraph 9(f) of the Protective Order is further varied by adding the following to the end thereof ", notwithstanding the foregoing, Apotex shall additionally be permitted to disclose Confidential Information to Dr. Hans Brunner" so that he may prepare a reply expert affidavit.

2.                   Apotex is granted an extension of time until November 28, 2005 to serve a reply expert affidavit from Dr. Brunner.

3.                   If Merck's motion dated August 26, 2005 to strike the affidavit of Dr. Haralambos Gavras is unsuccessful or is discontinued, then the affidavit of Dr. Brunner may not be relied upon by Apotex at trial.

4.                   The costs of this motion are in the event of the cause.

                                                                                                ______________________________

                                                                                                                        Judge

FEDERAL COURT

SOLICITORS OF RECORD

DOCKET:                              T-2792-96

STYLE OF CAUSE:               MERCK & CO., INC., MERCK FROSST CANADA & CO.,

                                               SYNGENTA LIMITED, ASTRAZENECA UK LIMITED

                                               and ASTRAZENECA CANADA INC.

                                                                                                                                    Plaintiffs

                                               and

                                               APOTEX INC

                                                                                                                                    Defendant

PLACE OF HEARING:           Ottawa Ontario

DATE OF HEARING:             November 15, 2005

REASONS FOR ORDER:      Mr. Justice von Finckenstein

DATED:                                    November 18, 2005

APPEARANCES:

Ms. Judith Robinson Ms. Nancy Pei	FOR THE PLAINTIFF(S) Merck & Co., Inc., and Merck Frosst Canada & Co., FOR THE PLAINTIFFS Syngenta Limited, Astrazeneca UK Limited and Astrazeneca Canada Inc.,
Mr. N. DeLuca	FOR THE DEFENDANT(S)

SOLICITORS OF RECORD:

OGILVY RENAULT LLP SMART & BIGGAR	FOR THE PLAINTIFF(S) Merck & Co., Inc., and Merck Frosst Canada Inc., FOR THE PLAINTIFFS Merck & Co., Inc., and Merck Frosst Canada Inc.,
GOODMANS LLP	FOR THE DEFENDANT(S)