FEDERAL COURT OF AUSTRALIA
Alphapharm Pty Ltd v Merck & Co Inc [2006] FCA 1227
PATENTS – validity of grant - claim that respondent's patent, granted in 1992, is invalid on grounds including inutility – motion by respondent to strike out applicant's inutility pleadings or in alternative, orders sought for summary dismissal or summary judgment of part of proceedings alleging inutility – whether expert evidence necessary
PRACTICE AND PROCEDURE – discovery – where applicant seeks discovery of all documents relevant to issue of utility – whether documents relating to experiments conducted by respondent post-grant excluded – whether manufacturing documents excluded – discretion to limit discovery
WORDS AND PHRASES – 'is useful'
Patents Act 1990 (Cth) ss 18(1)(c), 138(3)(b)
Federal Court of Australia Act 1976 (Cth) s 31AConor Medsystems, Inc v The University of British Columbia (No 2) (2006) 68 IPR 217 cited
Index Group of Companies Pty Ltd v Nolan [2002] FCA 608 applied
Lane Fox v Kensington and Knightsbridge Electric Lighting Co [1892] 3 Ch 424 compared
Nicaro Holdings Pty Ltd v Martin Engineering Co (1990) 91 ALR 513 followed
Rescare Ltd v Anaesthetic Supplies Pty Ltd (1992) 111 ALR 205 citedALPHAPHARM PTY LTD v MERCK & CO INC
NSD 2364 OF 2005MOORE J
15 SEPTEMBER 2006
SYDNEY
IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY
NSD 2364 OF 2005
BETWEEN:
ALPHAPHARM PTY LTD
ApplicantAND:
MERCK & CO INC
Respondent
JUDGE:
MOORE J
DATE OF ORDER:
15 SEPTEMBER 2006
WHERE MADE:
SYDNEY
THE COURT ORDERS THAT:
1.The parties bring in short minutes of order giving effect to these reasons within 7 days.
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
NSD 2364 OF 2005
BETWEEN:
ALPHAPHARM PTY LTD
ApplicantAND:
MERCK & CO INC
Respondent
JUDGE:
MOORE J
DATE:
15 SEPTEMBER 2006
PLACE:
SYDNEY
REASONS FOR JUDGMENT
Merck & Co Inc was granted a patent in 1992 relating to a chemical compound and the process for producing it. The patent has provided Merck with a monopoly for 20 years. Merck says it has used the process to produce a drug which is used medicinally in the treatment of osteoporosis. The income which has been generated by selling the drug is substantial. Another large pharmaceutical company, Alphapharm Pty Ltd, now seeks revocation of the patent. It is conceivable that Alphapharm is doing so to enable it to use the process to manufacture and sell its own drug, though, for the moment, that is a matter only for speculation. One of the grounds for revocation relied on is inutility. Simply put, that is an allegation that the process, as described in the patent, is not useful. If the speculation just referred to is correct, Alphapharm's allegation of inutility is redolent with irony. Alphapharm seeks discovery of documents from Merck concerning the use of the process unlimited by time. Merck resists this claim for discovery.…
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- Case
- [2006] FCA 1227
- Decision Date
CaseChat Overview and Summary
The court had to decide whether the patent claims related to utility could be summarily dismissed under section 31A of the Patents Act, and whether expert evidence was necessary for the court to assess the validity of these claims. The court also considered whether the discovery of evidence on the issue of utility by Merck was appropriate at that stage of the proceedings. The court determined that without expert evidence, it was not appropriate to construe the patent or dismiss the claims regarding utility. It was noted that while expert evidence might eventually support Merck's position, such evidence was not before the court at the time of the motion.
The court ruled that the contentions of Alphapharm about inutility should not be dismissed without the benefit of expert evidence. Furthermore, the court held that even if such evidence existed, it was more appropriate to leave the determination of these issues to the trial. Therefore, the court declined to summarily dispose of any part of Alphapharm's claims at that stage. Finally, the court ordered that the parties submit minutes of order within seven days to give effect to the court's reasons.
Orders
Orders of the court
1. The parties bring in short minutes of order giving effect to these reasons within 7 days.
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
Full text does not contain this section.
Ratio Decidendi
Legal Principle Established
Established by: MOORE J
Merck submitted that the section provided a lesser test that the test which applies under the other provisions. It referred to observations of Heerey J in Duncan v Lipscombe Child Care Services Inc [2006] FCA 458, in which his Honour said at [6]:"Plainly s 31A was introduced to establish a lower standard for strikeouts (either of claims or defences) than that previously laid down by the High Court´s decisions in Dey v Victorian Railways Commissioners (1948) 78 CLR 62 and General Steel Industries Inc v Commissioner for Railways (NSW) (1964) 112 CLR 125 at 130, namely that the allegations are 'so clearly untenable that [they] cannot possibly succeed'."See also, in relation to s 31A: Vans, Inc v Offprice.Com.Au Pty Ltd [2006] FCA 137, Garrett v Macks [2006] FCA 601, Mobileworld Operating Pty Ltd v Telstra Corporation Limited [2006] FCA 743, Wearne v Southern Cross University [2006] FCA 1033, Unilin Beheer BV v Shun Li De Pty Ltd [2006] FCA 534, Tepperova v Minister for Immigration and Multicultural and Indigenous Affairs [2006] FCA 1147.Consideration of summary disposal It is unnecessary to discuss the scope of s 31A or whether Alphapharm's claims based on inutility should be struck out on the other grounds contained in the notice of motion. Merck invited the Court to construe the patent and conclude that a person deploying the process described in the patent (so construed) would achieve the result it promised and would be able to do so, for example, without the specification of temperatures in claim 1. Alphapharm raised, as a threshold matter, whether it was open to the Court to construe the patent as Merck invited in the absence of expert evidence. In Nicaro Holdings Pty Ltd v Martin Engineering Co (1990) 91 ALR 513 Gummow J (at 524 and 542) cautioned against the Court construing a patent by seeking to place itself in the position of a reader skilled in the art without expert evidence which would permit it to view the patent through the eyes of such a reader. Those observations were made in relation to a claim of lack of novelty. However, it would appear that they are also pertinent to the assessment of utility, at least where the patent concerns matters not demonstrably within the domain of ordinary human experience such as simple mechanical devices. This is the import of observations of Gummow J in Rescare Ltd v Anaesthetic Supplies Pty Ltd (1992) 111 ALR 205 at 232 referring, in turn, to the observations of Menzies J in Welch Perrin & Co Pty Ltd v Worrel (1961) 106 CLR 588 at 601. In my opinion, the contentions of Alphapharm about inutility should not be rejected as unarguable or having no reasonable prospects for success without the benefit of expert evidence explaining that, for example, the steps in claim 1 could readily be undertaken by a chemist without any guidance about what temperature or temperature ranges or to apply when doing so. Ultimately, of course, there may be evidence to that effect. However, it has not been led by Merck in this notice of motion. I do not propose to consider dismissing or striking out any aspect of Alphapharm's claim in the absence of such evidence. I should add that even if evidence of this type had been led, there would have been cogent reasons for not summarily disposing of part of Alphapharm's claims, even assuming I had power do so either under s 31A or the Rules concerning summary disposal. Determination of the issues raised by Merck is probably better left to the trial.Discovery by Merck on issue of utility