PRACTICE |
Judgments and Orders |
Reversal or Variation |
Apotex Inc. v. Merck & Co. Inc.
A-36-98
Stone J.A.
14/12/99
10 pp.
Appeal from dismissal of motion for relief against operation of paragraph of judgment granting permanent injunction to respondents from infringing patent (1998), 78 C.P.R. (3d) 376--Judgment varied on appeal, but paragraph in question intact--Paragraph restraining defendant from infringing claims 1 to 5, 8 to 15 of patent, and in particular from manufacturing, using, offering for sale, selling tablets containing enalapril maleate--If motion successful, appellant could contest validity of claims 1, 8, 11 by limiting scope, operation of paragraph to tablets containing enalapril maleate and no other compound--Appellant arguing broad scope of claim 1 preventing it from using, selling compounds developed subsequent to trial judgment--Therefore unless paragraph 3 varied, appellant prevented from litigating validity of claim 1, other claims now seeking to impeach--In dismissing motion, MacKay J. noting validity of claim underlying finding of infringement, injunction--Holding Court lacking jurisdiction to vary terms of injunction, direct trial of issues--Appeal dismissed--In view of manner in which cause of action framed, issue of infringement not fundamentally confined to that involving only use, sale of enalapril maleate--Statement of claim seeking relief in respect of all acts of infringement by defendant, not only those acts involving use, sale of enalapril maleate--That plea not attacked as improper before action tried--Having regard to admission in amended statement of defence plaintiff entitled to exclusivity granted under Patent Act in respect of claims, issue with respect to validity of claim 1 cannot now be raised as action finally disposed of at trial and on appeal--Trial judgment based to extent on concession of exclusivity in determining claim infringed--Invalidity of claims 8, 11 as defence dismissed at trial--Alternatively issue of validity should have been raised at trial--While Patent Act, s. 56 sufficient defence to claimed infringement by use, sale of enalapril maleate prior to issuance of patent, not extending to use, sale of other compounds covered by claim 1 encompassed in plea in statement of claim--Policy of law strongly favouring finality of court orders, not only so as to ensure certainty of transactions but also integrity of judicial process--Policy consistently upheld in England, Canada for century and half--Patent Act, R.S.C., 1985, c. P-4, s. 56 (as am. by S.C. 1993, c. 44, s. 199).