Date: 20030905
Docket: T-2792-96
Citation: 2003 FC 1033
MONTREAL, QUEBEC, SEPTEMBER 5, 2003
Present: RICHARD MORNEAU, ESQ., PROTHONOTARY
BETWEEN:
MERCK & CO., INC.
MERCK FROSST CANADA & CO.
SYNGENTA LIMITED
ASTRAZENECA UK LIMITED and
ASTRAZENECA CANADA INC.
Plaintiffs
(Defendants by Counterclaim)
and
APOTEX INC.
Defendant
(Plaintiff by Counterclaim)
REASONS FOR ORDER AND ORDER
[1] UPON a motion by the Merck plaintiffs, supported by the Astrazeneca plaintiffs, for an order for the production of documents in the possession of a third party (Delmar) and for the examination of Delmar pursuant to rules 233 and 238 of the Federal Court Rules, 1998;
[2] UPON considering the motion records of the Merck plaintiffs and the defendant Apotex, and upon hearing counsel for said parties;
[3] CONSIDERING that this Court has repeatedly emphasized that the discovery phase of this action is at an end;
[4] CONSIDERING that Apotex has advised that it does not object to Delmar's production of those documents in its possession which indicate when the lots of lisinopril acquired by Apotex after the patent issued were made by Delmar, and those documents establishing when the lots of licensed lisinopril subsequently acquired by Apotex were sold by Delmar to Apothecary International;
[5] IN LIGHT OF THE FOREGOING, the Court is satisfied that it is appropriate to order as follows, first as to the production of documents, then with respect to oral discovery of Delmar.
ORDER
I. Production of Documents
Within twenty (20) days of the instant order, Delmar shall produce to counsel to the parties certified copies of the following documents in the possession, power or control of Delmar that would establish:
(a) the date of manufacture of lots of lisinopril acquired by Apotex after the subject Patent issued which it alleges were manufactured by Delmar prior to the issuance of the "350 Patent; and
(b) the date when the lots of licensed lisinopril that were subsequently acquired by Apotex were allegedly sold by Delmar to Apothecary International prior to February 14, 1993.
II. Oral Discovery of Delmar
This part of the motion is premature and is adjourned sine die to be brought back on, if necessary, once the documents referred to above have been produced by Delmar. In coming to this conclusion the Court gives weight to the fact that neither the Merck plaintiffs nor Apotex have seen the documents. In addition, given the late stage of the action, strict compliance with rule 238 is even more required. In that regard, I am not satisfied that the Merck plaintiffs have provided under the motion at bar the requisite evidentiary basis to meet the criteria found under rule 238(3) and specially rule 238(3)(a) and (c).
Costs of this motion shall be in the cause.
A copy of this order shall be transmitted by the Registry to counsel to Delmar.
Richard Morneau
Prothonotary
FEDERAL COURT
Date : 20030905
Docket : T-2792-96
BETWEEN:
MERCK & CO., INC.
MERCK FROSST CANADA & CO.
SYNGENTA LIMITED
ASTRAZENECA UK LIMITED and
ASTRAZENECA CANADA INC.
Plaintiffs
(Defendants by Counterclaim)
and
APOTEX INC.
Defendant
(Plaintiff by Counterclaim)
REASONS FOR ORDER AND ORDER
FEDERAL COURT
COUNSEL AND SOLICITORS OF RECORD
DOCKET:
STYLE OF CAUSE:
T-2792-96
MERCK & CO., INC.
MERCK FROSST CANADA & CO.
SYNGENTA 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:September 3, 2003
REASONS FOR ORDER OF RICHARD MORNEAU, ESQ., PROTHONOTARY
DATED:September 5, 2003
APPEARANCES:
| Ms. Judith Robinson Ms. Frédérique Amrouni |
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for the Merck Plaintiffs (Defendants by Counterclaim) |
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| Ms. Nancy P. Pei |
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for the Astrazeneca Plaintiffs (Defendants by Counterclaim) |
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| Mr. David Scrimger |
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for the Defendant (Plaintiff by Counterclaim) |
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SOLICITORS OF RECORD:
| Ogilvy Renault Montreal, Quebec |
|
for the Merck Plaintiffs (Defendants by Counterclaim) |
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| Smart & Biggar Toronto, Ontario |
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| for the Astrazeneca Plaintiffs (Defendants by Counterclaim)
|
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| Goodmans L.L.P. Toronto, Ontario |
|
for the Defendant (Plaintiff by Counterclaim)
|