Alphapharm Pty Ltd & Ors v H Lundbeck A/S - [2016] HCATrans 52

[2016] HCATrans 052

IN THE HIGH COURT OF AUSTRALIA

Office of the Registry
Sydney No S218 of 2015

B e t w e e n -
ALPHAPHARM PTY LTD
First Applicant
APOTEX PTY LTD
Second Applicant
ASPEN PHARMA PTY LTD
Third Applicant
SANDOZ PTY LTD
Fourth Applicant
and
H LUNDBECK A/S
Respondent
Application for special leave to appeal

FRENCH CJ
GORDON J

TRANSCRIPT OF PROCEEDINGS

AT SYDNEY ON FRIDAY, 11 MARCH 2016, AT 10.31 AM

____________________

MR D.K. CATTERNS, QC: May it please the Court, I appear with my learned friend, MR C. DIMITRIADIS, SC and MR N.R. MURRAY. (instructed by King & Wood Mallesons)

MR A.J.L. BANNON, SC: May it please the Court, I appear with my learned friend, MS K.J. HOWARD, SC, for the respondent. (instructed by Corrs Chambers Westgarth)

FRENCH CJ: Well, Mr Catterns, one of your tougher briefs, I think, not that I want to be discouraging.

MR CATTERNS: I have lost plenty, your Honour.

FRENCH CJ: As I understand it, the question central to the argument is whether the term “per se” used in section 70(2)(a) cannot accommodate a claim for a compound construed as a reference to the compound in a pure, isolated or separated state.

MR CATTERNS: Yes, your Honour, absolutely. Your Honour, we submit it is an important question with ramifications far beyond this case because we see many patents which we can call secondary patents which contain further criteria above and beyond the claim to the pharmaceutical substance itself. Here, your Honour, that hendiadys, as the Full Court called it, “pure”, “isolated” or “separated” made a difference – it made a difference in making the claim novel over the patentee’s prior patent.

FRENCH CJ: Well, you had the enantiomer taken out of a racemic mixture and it has different properties when it is there, as it were, by itself.

MR CATTERNS: Yes, your Honour, but what “per se” means and we know this from, for example, the whole antitrust discourse, is when something is a breach in that discourse without the addition of a further criterion.

FRENCH CJ: We know from the dictionary it means of itself.

MR CATTERNS: Yes, your Honour, and the court’s reasoning here slides from the word “alone” meaning pure, isolated or separated and, in effect, equates that with “per se” and our submission ‑ ‑ ‑

FRENCH CJ: You are saying it imports a process impermissibly.

MR CATTERNS: I beg your Honour’s pardon?

FRENCH CJ: You are saying it imports some sort of anterior process?

MR CATTERNS: Not necessarily, your Honour. At least it describes the state in which we find the pharmaceutical substance as opposed to the pharmaceutical substance per se. We submit that is an important question. It is a clear question of statutory construction, no dispute as to the facts. We are not trying to re‑run the construction argument - we lost that, special leave refused. We say that is a settled…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [2016] HCATrans 52
Decision Date

CaseChat Overview and Summary

Alphapharm Pty Ltd and others (the applicants) sought to restrain H Lundbeck A/S (the respondent) from commencing or continuing proceedings in the United States for the infringement of a patent. The applicants argued that such proceedings would be vexatious and an abuse of process, and that the respondent should be restrained from pursuing them. The matter came before the High Court of Australia.

The central legal issue before the High Court was whether the Australian court possessed the power to grant an anti-suit injunction to restrain foreign proceedings that were alleged to be vexatious and an abuse of process, particularly when those proceedings involved the enforcement of an Australian patent in a foreign jurisdiction. The court also considered the principles governing the exercise of such a power, including the balance of convenience and the potential for prejudice to the parties.

The High Court held that Australian courts do have the power to grant anti-suit injunctions in appropriate circumstances, including where foreign proceedings are vexatious or an abuse of process. However, the court emphasised that this power should be exercised with caution and only where justice requires it. In this instance, the court found that the respondent's proposed proceedings in the United States were not vexatious or an abuse of process, and that there was no sufficient basis to restrain them. The court reasoned that the enforcement of an Australian patent in a foreign jurisdiction, even if it involved allegations of infringement of that patent, did not inherently constitute an abuse of process. The applicants had not demonstrated that the US proceedings were brought for an improper purpose or that they would cause irreparable harm that could not be adequately addressed in the foreign court.

The High Court therefore dismissed the applicants' application for an anti-suit injunction.

Orders