Abbott Laboratories v Corbridge Group Pty Ltd

Case [2002] FCAFC 1283

FEDERAL COURT OF AUSTRALIA

Abbott Laboratories v Corbridge Group Pty Ltd [2002] FCAFC 314

PATENTS – validity of claimed invention for measuring glucose levels in blood – novelty – sufficiency of specification – ambiguity of – meaning of the word “comprising” and the word “or” – manner of manufacture – obviousness – prior art relating to the subject – whether claims fairly based on the complete specification - whether prior claiming is available as a ground of revocation under the Patents Act 1990 (Cth)

WORDS & PHRASES – “comprising” – “or”

Patents Act 1952 (Cth) s 100(1)(f)

Patents Act 1990 (Cth) ss 18(1)(a), 18(1)(b), 18(1)(c), 40(2)(a), 40(3), 138(3), 233(4)

Statute of Monopolies 1623 (UK) s.6

Kimberly-Clark Australia Pty Ltd v Arico Trading InternationalPty Ltd (2001) ALR 460, followed.

General Clutch Corporation v Sbriggs Pty Ltd (1997) 38 IPR 359, followed.

Minister for Immigration & Ethnic Affairs v Baker (1997) 73 FCR 187, cited

Advanced Building Systems Pty Ltd v Ramset Fasteners (Aust) Pty Ltd (1998) 194 CLR 171, cited

NV Philips Gloeilampenfabrieken v Mirabella International Pty Limited (1993) 44 FCR 239, followed.

British Thomson-Houston Company Ltd v Corona Lamp Works Ltd (1922) 39 RPC 49 (HL), cited.

Blanco White, Patents for Inventions 5th ed. 1983.

Terrell on the Law of Patents 15th ed. 2001.

CIPA Guide to the Patents Acts 5th ed. 2001.

ABBOTT LABORATORIES v CORBRIDGE GROUP PTY LTD

N 1166 OF 2001

LEE, EMMETT & HELY JJ

18 OCTOBER 2002

SYDNEY

IN THE FEDERAL COURT OF AUSTRALIA

NEW SOUTH WALES DISTRICT REGISTRY

N 1166 OF 2001

ON APPEAL FROM A SINGLE JUDGE OF THE FEDERAL COURT OF AUSTRALIA

BETWEEN:

ABBOTT LABORATORIES
FIRST APPELLANT

ABBOTT AUSTRALASIA PTY LTD
(ACN 000 180 389)
SECOND APPELLANT

AND:

CORBRIDGE GROUP PTY LTD (ACN 050 105 256)
FIRST RESPONDENT

INVERNESS MEDICAL ASIA PACIFIC PTY LTD (
(ACN 076 031 331)
SECOND RESPONDENT

JUDGES:

LEE, EMMETT & HELY JJ

DATE OF ORDER:

18 OCTOBER 2002

WHERE MADE:

SYDNEY

THE COURT ORDERS THAT:

1.         The appeal be upheld.

2.The orders of Gyles J made on 24 November 2000 be set aside and in lieu thereof the following orders be made:-

a.    the respondents be restrained from infringing Australian Patent Number 572138 by importing into Australia, or by sponsoring such importation, and supplying to wholesalers and retailers, a product known as the Excel ET Blood Glucose Test Strip; and

b.   the respondents pay the applicants’ costs.

3.         The respondents pay the appellants’ costs.

Note:    Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.

IN THE FEDERAL COURT OF AUSTRALIA

NEW SOUTH WALES DISTRICT REGISTRY

N 1207 OF 2001

BETWEEN:

CORBRIDGE GROUP PTY LTD (ACN 050 105 256)
FIRST APPELLANT

INVERNESS MEDICAL ASIA PACIFIC PTY LTD
(ACN 076 031 331)
SECOND APPELLANT

AND:

ABBOTT LABORATORIES
FIRST RESPONDENT

ABBOTT AUSTRALASIA PTY LTD
(ACN 000 180 389)
SECOND RESPONDENT

JUDGES:

LEE, EMMETT & HELY JJ

DATE OF ORDER:

18 OCTOBER 2002

WHERE MADE:

Continue reading Abbott Laboratories v Corbridge Group Pty Ltd

Sign in free to access the full text

Details
AGLC
Abbott Laboratories v Corbridge Group Pty Ltd [2002] FCAFC 314
Case
[2002] FCAFC 1283
Decision Date

CaseChat Overview and Summary

Abbott Laboratories, along with Abbott Australasia, initiated proceedings against Corbridge Group and Inverness Medical Innovations, alleging infringement of their patent rights by the Excel Product. Corbridge and Inverness responded by filing a cross-claim for the revocation of Abbott’s patent, which was numbered 572138. The case was initially heard by Gyles J, who dismissed the application for orders restraining infringement and also dismissed the cross-claim for revocation of the patent. Both sets of appellants then sought to appeal the decisions of Gyles J.

The appeal raised several key legal issues, primarily concerning the validity of certain claims of the Sensor Patent and the question of patent infringement. Specifically, the court had to determine whether the Excel Product infringed on the patent claims and whether those claims were valid. The validity of particular claims of the patent was also a matter of contention, with Corbridge and Inverness arguing that certain claims were invalid.

In considering these issues, the court found that the Excel Product did indeed infringe on Claim 1 of the Sensor Patent, as the product did not fall within the limitation of an invasive sensor. Regarding the validity of the patent claims, the court upheld the appeal as to the invalidity of certain claims of the patent, specifically Claims 17, 18, and 19. The court found these claims to be invalid and ordered their revocation. However, the court dismissed the cross-claim for revocation of the patent as it pertained to other claims. Additionally, the court upheld the appeal against the orders dismissing the application for restraining infringement and ordered that Corbridge and Inverness be restrained from infringing the patent.

The final orders of the court provided that the appeal was to be upheld, and the orders of Gyles J were to be set aside. The court ordered that Corbridge and Inverness be restrained from infringing the patent by importing, sponsoring the importation, and supplying the Excel ET Blood Glucose Test Strip. Furthermore, the respondents were ordered to pay the applicants’ costs. The court also partially upheld the appeal, varying certain orders to declare and revoke specific claims of the patent, and dismissed the cross-claim for revocation of the patent. The matter was remitted to the primary judge for the final determination of the cross-claim.

Orders

Orders of the court

1. The appeal be upheld.

2. The orders of Gyles J made on 24 November 2000 be set aside and in lieu thereof the following orders be made:-

a. the respondents be restrained from infringing Australian Patent Number 572138 by importing into Australia, or by sponsoring such importation, and supplying to wholesalers and retailers, a product known as the Excel ET Blood Glucose Test Strip; and

b. the respondents pay the applicants’ costs.

1. The appeal be upheld in part.

2. Orders 1 and 3 made by Gyles J on 18 July 2001 be varied to provide as follows:

1. DECLARE that claims 4, 5, 6, 17, 18 and 19 of Australian Letters Patent Number 572138 are, and at all material times have been, invalid.

3. ORDER that claims 4, 5, 6, 17, 18 and 19 of Australian Letters Patent Number 572138 be revoked.

3. The cross-claim in so far as it claims revocation of Australian Letters Patent Number 572138 be otherwise dismissed.

4. The matter be remitted to the primary judge for final determination of the cross-claim, pursuant to Order 13 made on 18 July 2001.

Background

Background to the litigation

Full text does not contain this section.

Evidence

Evidence Before The Court

Full text does not contain this section.

Decision

Reasons for decision

Since the only basis for contending that the Excel Product does not infringe Claim 1 of the Sensor Patent is that Claim 1 is limited to an invasive sensor and does not extend to an external sensor, it follows that the Excel Product infringes Claim 1.CONCLUSION It follows from the above that the appeal by Corbridge and Inverness against the orders dismissing the cross-claim as to validity should be upheld insofar as it relates to the validity of Claims 17, 18 and 19 of the Sensor Patent. In lieu thereof, there should be an order that Claims 17, 18 and 19 of the Sensor Patent be revoked and that the cross-claim as to validity be otherwise dismissed. The appeal by Corbridge and Inverness should be otherwise dismissed with costs. It also follows that the appeal by Abbott and Abbott Australasia from the orders made by the primary judge dismissing the application for orders restraining infringement of the Sensor Patent should be upheld. In lieu of the order dismissing the application and the orders for costs, there should be an order restraining Corbridge and Inverness from infringing the Sensor Patent. They are entitled to their costs before the primary judge and on the appeal.

Ratio Decidendi

Legal Principle Established

Full text does not contain this section.