Merck won a summary judgment motion in the Federal Court, Trial Division, against Apotex Inc. The case concerned Apotex’s purchase of enalapril maleate from an undisclosed third party which, in turn, had purchased it from the Canadian manufacturer, Delmar, which had produced the material under a compulsory licence from Merck. The sale to the third party by Delmar took place prior to extinguishment of Delmar’s licence by the Patent Act Amendment Act. The purchase by Apotex from the third party took place after extinguishment. Apotex sued for a declaration of non-infringement and Merck claimed for infringement. Merck brought a motion for summary judgment and Apotex brought a cross-motion. In a decision delivered on February 2, 2001, Mr. Justice McKeown granted Merck’s motion and dismissed Apotex’s motion. The decision is now under appeal by Apotex.
The matter turned, in part, on a previous decision of the Federal Court, Trial Division, involving, among other things, enalapril maleate which had been sold by Delmar to a third party and subsequently acquired by Apotex after extinguishment of Delmar’s licence. In respect of this enalapril maleate, Apotex was held liable for infringing Merck’s patent rights, which was affirmed by the Federal Court of Appeal. In disposing of the present matter on the basis of res judicata, Mr. Justice McKeown was of the view that the only difference between the two cases was that in the second case the material was acquired after the trial but before reasons were delivered in the first case. Apotex argued that the decision of the Federal Court of Appeal in the previous case had effectively been overruled by a subsequent decision of the Supreme Court of Canada in Eli Lilly v. Novopharm et al., also involving a compulsory licence and the rights of purchasers of licensed material. The latter decision was distinguished by Mr. Justice McKeown.
Gowling Lafleur Henderson LLP’s Ottawa office acted as counsel to Merck, with a team consisting of Alexander Macklin, Q.C., Hélène D’Iorio, and Jane Clark. Lead counsel for Apotex was Goodmans LLP, with a team consisting of Harry Radomski and Daniela Bassan.