Abbott GMBH & Co. KG v Apotex Pty Ltd (No 2)

Abbott GMBH & Co. KG, the patent holder, brought an action against Apotex Pty Ltd for infringement of the patent on a specific pharmaceutical compound. The dispute centred around the validity and infringement of the patent. The Federal Court of Australia was the judicial forum for this case.

The court had to determine several legal issues, including whether the invention was anticipated by prior art, whether it involved an inventive step, whether it was a manner of manufacture, and whether the patent was obtained by false suggestion. Additionally, the court needed to decide if the compound was consistent with the patentee’s claims and if any observed deviations in water content measurements took the compound outside the patent claims.

In its reasoning, the court found that the invention was not anticipated by prior art, as the compound would not inevitably have been derived by following the instructions in the prior art. The court also found that the invention involved an inventive step as the skilled worker would not have considered the formation of the patented compound to be an obvious solution to the problem presented by the prior art. Regarding whether the invention was a manner of manufacture, the court held that the compound would not come into existence in the natural course. The court further found that the patent was not obtained by false suggestion as the amendments made to satisfy the examiner did not alter the meaning of the claims and specification. In relation to infringement, the court held that consistency of the compound with the patentee’s claims was determined by measuring the water content, and deviations did not take the compound outside the patent claims.

The court ordered that within seven days, Abbott GMBH & Co. KG file and serve a minute of the orders proposed by them to reflect the court's reasons, together with a memorandum as to costs. Apotex Pty Ltd was ordered to file and serve a memorandum in response to the applicants' minute and memorandum within a further seven days. Abbott GMBH & Co. KG was granted leave to file and serve a reply within a further seven days. The proceeding was listed for the making of final orders at 9:30 am on 14 October 2010.