Merck & Co. Inc. v. Apotex Inc.
T-2408-91
MacKay J.
15/3/95
6 pp.
Order concerning plaintiff's entitlement to elect damages or accounting of profits arising from infringement by defendant of plaintiff's patent (Merck & Co. v. Apotex Inc. (1994), 59 C.P.R. (3d) 133 (F.C.T.D.)) -- Action for infringement not establishing facts warranting refusal of plaintiff's opportunity to elect relief -- Defendant submitting accounting for profits not automatically available in cases of patent infringement -- Although appropriateness of accounting of profits matter of judge's discretion such remedy ordinarily awarded in absence of unusual circumstances -- Defendant referring to Consolboard Inc. v. MacMillan Bloedel (Saskatchewan) Ltd., [1978] 1 F.C. 820 (T.D.), where Collin J. declined to award accounting of profits due to long delay between discovery of infringing activities and commencement of action to protect interests; and J.M. Voith GmbH v. Beloit Corp., [1993] 2 F.C. 515 (T.D.), where Rouleau J. declined like relief for same reason in addition to other factors such as complexity of actions and inordinate length of time for which they continued -- Adverse finding of inordinate delay in case at bar -- Defendant also contending higher return from accounting of profits as opposed to damage award resulting from defendant's superior business, scientific and production decisions made prior to grant of patent, and thus constituting required "unusual circumstances" -- Although such decisions contributing to defendant's successful market penetration, defendant's actions not undertaken in defiance of any of plaintiff's rights clearly settled by law -- Such situation not unique or unusual but rather norm in cases of infringement -- Only in unusual cases will Court find deliberate intent to flaunt or trade upon interests of others clearly recognized by law -- Higher yield due to superior decisions not constituting basis upon which Court should refuse to permit election for accounting of profits -- Plaintiff entitled to elect damages or accounting of profits.