Merck & Co. Inc. v. Apotex Inc., 2003 FCT 558

Date: 20030505

Docket: T-2792-96

Citation: 2003 FCT 558

BETWEEN:

                                                           MERCK & CO., INC.

                                               MERCK FROSST CANADA & CO.

                                                          SYNGENTA LIMITED

                                                ASTRAZENECA UK LIMITED and

                                                  ASTRAZENECA CANADA INC.

                                                                                                                                             Plaintiffs

                                                                                                      (Defendants to the counterclaim)

                                                                           and

                                                                  APOTEX INC.

                                                                                                                                           Defendant

                                                                                                                 (Plaintiff by counterclaim)

                                                        REASONS FOR ORDER

RICHARD MORNEAU, PROTHONOTARY:

[1]                This is a motion by the defendant (plaintiff by counterclaim) (Apotex) for an order disposing of a series of questions following the second phase of the examination for discovery of a representative of the plaintiff Merck & Co., Inc. (Merck).

[2]                The second phase took place over a three-day period in January 2003 and covered, inter alia, the questions that I allowed Apotex to ask in accordance with my decision dated

August 21, 2002.

[3]                In that decision (which was affirmed on appeal by Mr. Justice Simon Noël on February 13, 2003, and then appealed by Apotex on February 24, 2003), given the scope of the examination that Apotex had begun in the first phase, it was decided that the traditional relevance of questions raised had to be juxtaposed with the practical reality of moving the case forward expeditiously and in accordance with both rule 3 of the Federal Court Rules, 1998, and the Court's case management powers. A certain balance, an equilibrium, was thus achieved with respect to the questions to be allowed.                           

[4]                At paragraphs [6], [21] and [22] of my decision of August 21, 2002, I stated:

[6] The principal problem before the Court in this motion is whether the Court should take the approach recommended by Apotex and, essentially, allow any relevant question arising from the allegations not admitted in the proceedings, or specifically here the questions based on paragraph 19 of Apotex's defence and counterclaim ("the defence"), or whether the Court should regard this as an opportunity to limit the scope of the examination which Apotex is conducting so as to move the case at bar forward as quickly as possible, within the spirit of Rule 3 of the Federal Court Rules (1998) ("the Rules").

. . .

[21] In short, it can be seen from paragraph 18 of Merck's written submissions that the latter suggests concentrating most of the information to be provided on the compounds relating to patent 350, and very little information on what is not within patent 350. The result of this approach by Merck is to largely reject the questions under objection under the motion at bar. It is rather like a reverse pyramid approach: a lot of information at the apex of the pyramid (which comes within patent 350) and little information on what appears to be the broad base of the pyramid.

[22] In the circumstances, I am prepared to approve and accordingly adopt this approach by Merck so as to limit the scope of the examination held by Apotex and move the case forward expeditiously, within the meaning of Rule 3.

(Emphasis added.)

[5]                On appeal, Mr. Justice Simon Noël of this Court completely agreed with this approach and stated:

[20] Consequently, it is wrong for Apotex to allege that the prothonotary did not look at the relevancy. He exercised his discretion to determine that some elements necessitated more attention than others and as a result chose to exercise his discretion to limit the scope of the discovery in order to move the case forward.

. . .

[23] Prothonotary Morneau was not obligated to restrict himself only to the relevancy test. In the circumstances, I consider that he exercised his discretion in weighing the relevance, or lack thereof, of the questions sought to be adjudicated and the scope of the pleadings against the need to ensure that the proceedings be resolved expeditiously. In applying the Rules, Prothonotary Morneau appropriately considered reducing the cost of trial and bringing matters to trial as quickly as possible, pursuant to Rules 3 and 385, as important factors when deciding to exclude certain categories of questions.

[24] In this respect, as the prothonotary responsible for the case management of this proceeding, Prothonotary Morneau was aware of the dynamics of the case and, was able to assess the parties' conduct. Hence, the manner in which he exercised his discretion is reasonable. Therefore, I conclude that his decision should not be disturbed.

(Emphasis added.)

[6]                As the prothonotary managing this case, it seems indisputable to me that the approach adopted with regard to the limits imposed at the first phase of the examination held by Apotex must be maintained in its entirety at the second phase of the examination.

[7]                In addition, in order to prevent this global examination from leading to more phases and becoming a never-ending saga-the examination of Merck by Apotex has taken 16 days thus far and has resulted in Merck producing 2070 documents-it is appropriate in this case to order that the Merck representative, Dr. Wyvratt, will not have to attend in person again to answer the questions that may arise from the questions and undertakings to be answered. Within sixty (60) days of this order, Merck must provide answers in writing to the questions and undertakings that it has agreed to answer, and this will conclude the examination by Apotex. Any dissatisfaction by the parties at the end of this exercise may be raised and argued on the merits at the trial of this action, if the Court hearing the merits deems it relevant.

[8]                The measures imposed above are essential in the circumstances, because otherwise the fear of a never-ending proceeding, as reflected in paragraph [17] of my decision of

August 21, 2002, would materialize. At paragraph [17], I stated:

[17] It seems relatively clear that if Apotex can freely and directly test its challenges as a whole, as formulated in paragraph 19 of its defence, in the examination for discovery of Merck and Merck Frosst, this access to the base of the pyramid at this stage of the record would mean that the aforementioned examination would continue for a number of days and would involve the additional production of great many other documents, requiring extensive research. Undoubtedly, judging from the past, this exercise would involve further motions to decide objections arising out of questions resulting from the questions authorized.

[9]                As we know, the examination continued and the second phase lasted three days, resulting in Apotex bringing this motion. The motion record that was filed contained 80 questions to be determined.

[10]            As for the various categories of questions, I am satisfied with the analysis and the pruning that Merck has done regarding Apotex's questions.

[11]            In that sense, I am satisfied that Merck has seriously considered Apotex's questions, and where appropriate, has followed the approach and the balancing adopted in my decision of August 21, 2002. In a more general sense, unless I intervene in this case below with regard to the questions in one of the categories in Appendix B, the motion by Apotex will be dismissed with costs in the cause, in keeping with the detailed written representations submitted by Merck and expanded upon at the hearing.

[12]            With respect to Appendix A, which contains undertakings agreed to by the parties, and with respect to the questions in Appendix B that the parties have now agreed are to be answered, any answer by Merck shall be provided in writing within sixty (60) days of the order accompanying these reasons.

[13]            Appendix B - Questions requiring further attention

Category 2:

-           With respect to question 111, counsel for Merck shall permit counsel for Apotex to review the document in its entirety within sixty (60) days of this order.

Category 5:

-           With respect to questions 31 and 88, counsel for Merck shall permit counsel for Apotex to review the documents in their entirety within sixty (60) days of this order.

Richard Morneau      

Prothonotary

Montréal, Quebec

May 5, 2003               

Certified true translation

Mary Jo Egan, LLB

                   FEDERAL COURT OF CANADA

                                TRIAL DIVISION

Date: 20030505

Docket: T-2792-96

Between:

MERCK & CO. INC.

MERCK FROSST CANADA & CO.

SYNGENTA LIMITED

ASTRAZENECA UK LIMITED and

ASTRAZENECA CANADA INC.

                                                                                 Plaintiffs

                                          (Defendants to the counterclaim)

and

APOTEX INC.

                                                                               Defendant

                                                     (Plaintiff by counterclaim)

                          REASONS FOR ORDER

                                                 FEDERAL COURT OF CANADA

                                                              TRIAL DIVISION

                                                      SOLICITORS OF RECORD

DOCKET:

STYLE OF CAUSE:

T-2792-96

MERCK & CO. INC.

MERCK FROSST CANADA & CO.

SYNGENTA LIMITED

ASTRAZENECA UK LIMITED et

ASTRAZENECA CANADA INC.

                                                                        Plaintiffs

                                   (Defendants to the counterclaim)

and

APOTEX INC.

                                                                     Defendant

                                              (Plaintiff by counterclaim)

PLACE OF HEARING:Montréal, Quebec

DATE OF HEARING:April 14, 2003

REASONS FOR ORDER BY RICHARD MORNEAU, PROTHONOTARY

DATED:May 5, 2003

APPEARANCES:

SOLICITORS OF RECORD: