Merck & Co. Inc. v. Apotex Inc., 2001 FCT 175

Date : 20010312

Docket: T-2792-96

Neutral Citation: 2001 FCT 175

Between:

                                                     MERCK & CO., INC.

                                         MERCK FROSST CANADA & CO.

                                                       ZENECA LIMITED

                                          ASTRAZENECA UK LIMITED and

                                            ASTRAZENECA CANADA INC.

                                                                                                                                 Plaintiffs

                                                                                              (Defendants by Counterclaim)

                                                                    AND

                                                            APOTEX INC.

                                                                                                                               Defendant

                                                                                                    (Plaintiff by Counterclaim)

                                                  REASONS FOR ORDER

RICHARD MORNEAU, PROTHONOTARY

[1]                This is a motion by the plaintiffs Merck & Co., Inc. and Merck Frosst Canada & Co. under rule 221 of the Federal Court Rules (the rules) to strike a paragraph from the defendant's re-amended statement of defence dated November 17, 2000 (the defence), and, under rule 181, for particulars regarding various paragraphs of the defence including the paragraph sought to be struck out, if the motion to strike is not granted.

[2]                The motion to strike should be considered first.

[3]                That motion refers to paragraph 19(o) of the defence. By order of this Court dated November 10, 2000, the defendant was given leave to file a defence containing that paragraph, among other things. Therefore, it cannot now be ordered struck out.

[4]                It now remains to consider the various motions for particulars.

[5]                Without having to go into a detailed analysis of the very technical evidence that the parties submitted to the Court, both in writing and in oral argument, and after considering the matter, I find that the defendant is right about paragraphs 19(f)(i), 19(f)(iii), 19(g)(ix), 19(g)(xii) and 19(l), and that with the assistance of an expert in the specific scientific area touched on by any one of those paragraphs, a party, here, the plaintiffs, could prepare an intelligent reply to the defence even now, without needing additional particulars. Therefore, further particulars covering those paragraphs need not be provided.

[6]                However, even though the defendant has offered technical evidence to the contrary, I ultimately find that the particulars sought by the plaintiffs in paragraphs 19(m)(i) and (ii) regarding the use of "excipients" other than "lactose," as well as any material facts other than "degradation by excipients" in paragraph 19(m)(ii), must be provided to enable the plaintiffs to reply intelligently.

[7]                In the same way - and notwithstanding the fact that the plaintiffs have not produced an affidavit supporting their claims - I feel that the actual wording of paragraph 19(o) - and although this paragraph need not be struck - requires clarification regarding some of the points raised by the plaintiffs. Therefore, the "excipients" that the defendant referred to must be identified. Pursuant to rule 181(a), the defending party must also provide particulars supporting its allegations of "wilful misrepresentation."

[8]                The rest of the plaintiffs' motion is dismissed. As the success of the motion was divided, there will be no adjudication on costs.

[9]                A schedule for the future steps in this case will be included with the Order attached to the present reasons.

Richard Morneau      

                      PROTHONOTARY

MONTRÉAL, QUEBEC

March 12, 2001

Certified true translation

John Arrayet

                                               FEDERAL COURT OF CANADA

          NAMES OF COUNSEL AND SOLICITORS OF RECORD

COURT NO:                                          T-2792-96

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

MERCK FROSST CANADA & CO.

ZENECA LIMITED

ASTRAZENECA UK LIMITED and

ASTRAZENECA CANADA INC

Plaintiffs

(Defendants by Counterclaim)

AND

APOTEX INC.

Defendant

(Plaintiff by Counterclaim)

PLACE OF HEARING:                          Montreal, Quebec

DATE OF HEARING:                            January 22, 2001

REASONS FOR ORDER BY: RICHARD MORNEAU, PROTHONOTARY

DATE OF REASONS FOR ORDER:                   March 12 , 2001

APPEARANCES:

Judith Robinson                                      For the plaintiffs (defendants by counterclaim) Merck & Co. and Merck Frosst Canada

Nancy P. Pei                                                       For the plaintiffs (defendants by counterclaim) Zeneca Limited and AstraZeneca

Daniela Bassan                                                    For the defendant (plaintiff by counterclaim)

SOLICITORS OF RECORD:

Ogilvy Renault                                                    For the plaintiffs (defendants by counterclaim)

Montréal, Quebec                                                Merck & Co. and Merck Frosst Canada

Smart and Biggar                                                 For the plaintiffs (defendants by counterclaim)

Toronto, Ontario                                                 Zeneca Limited and AstraZeneca

Goodman, Phillips and Vineberg                For the defendant (plaintiff by counterclaim)

Toronto, Ontario