Amrad Operations Pty Ltd v Genelabs Technologies Inc - [1999] FCA 633

FEDERAL COURT OF AUSTRALIA
Amrad Operations Pty Ltd v Genelabs Technologies Inc [1999] FCA 633
PRACTICE AND PROCEDURE – service of originating process outside the jurisdiction – whether prima facie case made out under Patents Act 1990 ss 133 and 135.
Patents Act 1990 (Cth), s 133(1), s 135
Patents Regulations 1991, reg 12.1(1)
Emory University v. Biochem Pharma Inc. (1998) 157 ALR 371 referred
Sydbank Soenderjylland A/S v Bannerton Holdings Pty Ltd (1996) 68 FCR 539 applied
Murex Diagnostics Australia Pty Limited v Chiron Corporation (1994) 55 FCR 194 applied
Cell Tech Communications Pty Ltd v Nokia Mobile Phones (UK) Ltd (1995) 58 FCR 365 referred
Merpro Montassa Ltd v Conoco Specialty Products Inc (1991) 28 FCR 387 referred
In re Hatschek’s Patents. Ex parte Zerenner [1909] 2 Ch 68 applied
Fastening Supplies Pty Ltd v Olin Mathieson Chemical Corporation (1969) 119 CLR 572 applied
Kalle and Co A.G.’s Patent [1966] FSR 112 referred
Therma-Tru Corp’s Patent [1997] RPC 777 referred
Voth v Manildra Flour Mills Pty Ltd (1990) 171 CLR 538 referred
Terrell on the Law of Patents (14^th Ed, 1994) pp 307-310 referred
AMRAD OPERATIONS PTY LTD (ACN 053 997 176) v GENELABS TECHNOLOGIES, INC. & ORS
V 124 of 1999
KENNY J
MELBOURNE
12 MAY 1999

IN THE FEDERAL COURT OF AUSTRALIA

VICTORIA DISTRICT REGISTRY

V 124 OF 1999

BETWEEN:

AMRAD OPERATIONS PTY LTD (ACN 053 997 176)
Applicant

AND:

GENELABS TECHNOLOGIES, INC.
First Respondent

THE GOVERNMENT OF THE UNITED STATES OF AMERICA, AS REPRESENTED BY THE SECRETARY OF THE DEPARTMENT OF HEALTH AND HUMAN SERVICES AND HIS SUCCESSORS
Second Respondent

ABBOTT GmbH DIAGNOSTIKA
Third Respondent

JUDGE:

KENNY J

DATE OF ORDER:

12 MAY 1999

WHERE MADE:

MELBOURNE

THE COURT ORDERS THAT:
1.    (a)     Abbott GmbH Diagnostika cease to be a party.
(b)     Abbott Laboratories of 14^th Street and Sherridan Road, Chicago, Illinios, United States of America be substituted as the third respondent.
(c)      The title to the proceeding in the application, statement of claim and the Statutory Declaration of Gerard Henry filed with the statement of claim be amended accordingly.
(d)     The application be further amended by deleting the name and address of Abbott GmbH Diagnostika wherever appearing and substituting therefor Abbott Laboratories of 14^th Street and Sherridan Road, Chicago, Illinios, United States of America.

2.    Leave be granted to the applicant under Order 8 rule 2(2) -
(a)    to serve the amended application and statement of claim (including the Confidential Schedule thereto) and the Statutory Declaration of Gerard Henry dated 22 March 1999 (including Annexure “A” and Confidential Exhibit “B” thereto) in this proceeding out of the Commonwealth of Australia and in the United States of America on the first respondent at 505 Penobscot Drive, Redwood City, California 94063, United States of America or elsewhere in the United States of America.
(b)   to serve the amended application and statement of claim (without the Confidential Schedule) and the said Statutory Declaration of Gerard Henry (with Annexure “A” but without the Confidential Exhibit…

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: [1999] FCA 633
Decision Date: 12 MAY 1999

CaseChat Overview and Summary

Amrad Operations Pty Ltd brought an action against Genelabs Technologies Inc, Abbott GmbH Diagnostika, and Abbott Laboratories, among others, in the Federal Court of Australia. Amrad claimed infringement of a patent for a medical diagnostic test and sought various remedies, including damages and an injunction. The case centred on the validity of the patent and whether the defendants' products infringed upon it. The defendants argued that the patent was invalid and that their products did not infringe.

The court was tasked with determining the validity of the patent in question and whether the defendants' products indeed infringed upon it. The court also needed to address the procedural matters regarding the substitution of parties and the service of documents overseas. The court had to consider the appropriate venue for the trial, whether the patent was valid, and whether the defendants' products infringed upon the patent.

The court ruled that Abbott GmbH Diagnostika was to cease being a party to the proceedings, and Abbott Laboratories was to be substituted as the third respondent. The court granted leave to serve the amended application and statement of claim on the defendants in the United States of America. The court also ordered that certain documents be kept confidential and not open to public inspection. The court reserved the applicant's costs of the motion and ordered that a copy of the order be served on each respondent.

The court's final orders included the substitution of parties, the service of documents overseas, the confidentiality of certain documents, and the reservation of costs. The court granted the procedural relief sought by the applicant and maintained the confidentiality of sensitive information.

Orders

Orders of the court

1. (a) Abbott GmbH Diagnostika cease to be a party.

(b) Abbott Laboratories of 14th Street and Sherridan Road, Chicago, Illinios, United States of America be substituted as the third respondent.

(c) The title to the proceeding in the application, statement of claim and the Statutory Declaration of Gerard Henry filed with the statement of claim be amended accordingly.

(d) The application be further amended by deleting the name and address of Abbott GmbH Diagnostika wherever appearing and substituting therefor Abbott Laboratories of 14th Street and Sherridan Road, Chicago, Illinios, United States of America.

2. Leave be granted to the applicant under Order 8 rule 2(2) -

(a) to serve the amended application and statement of claim (including the Confidential Schedule thereto) and the Statutory Declaration of Gerard Henry dated 22 March 1999 (including Annexure “A” and Confidential Exhibit “B” thereto) in this proceeding out of the Commonwealth of Australia and in the United States of America on the first respondent at 505 Penobscot Drive, Redwood City, California 94063, United States of America or elsewhere in the United States of America.

(b) to serve the amended application and statement of claim (without the Confidential Schedule) and the said Statutory Declaration of Gerard Henry (with Annexure “A” but without the Confidential Exhibit “B” thereto) out of the Commonwealth and in the United States of America on the second respondent at the Department of Health and Human Service, 200 Independence Avenue, S.W. Room 615F, Washington DC 20201, United States of America or elsewhere in the United States of America.

(c) to serve the amended application and statement of claim (without the Confidential Schedule) and the said Statutory Declaration of Gerard Henry (with Annexure “A” but without the Confidential Exhibit “B” thereto) out of the Commonwealth and in the United States of America on the third respondent, Abbott Laboratories at 14th Street and Sherridan Road, Chicago, Illinios, United States of America or elsewhere in the United States of America.

3. The Confidential Schedule to the statement of claim and the Confidential Exhibit “B” to the said Statutory Declaration of Gerard Henry be filed and received in the Victoria Registry of this Court in sealed envelopes and kept sealed up and not open to inspection by any person other than the Court, the applicant (and its solicitors and counsel) and the first respondent (and its solicitors and counsel) until further Order.

4. Until further order, the following exhibits –

(i) Exhibit “RBJ-10-Confidential” to the affidavit of Richard Barry Jarvis herein sworn on 30 April 1999;

(ii) Exhibit “DAA-5-Confidential” to the affidavit of David Andrew Anderson sworn herein on 4 May 1999; and

(iii) Exhibit “RJK-3-Confidential” to the affidavit of Robert John Klupacs sworn herein on 4 May 1999,

and the contents thereof be kept confidential in these proceedings and not open to public inspection and not be disclosed to any person other than the Court, the applicant (and its solicitors and counsel), and the first respondent (and it solicitors and counsel).

5. The applicant’s costs of this motion be reserved.

6. A copy of this order be served on each respondent at the time of service pursuant to Order 2 above.

Background

Background to the litigation

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Evidence

Evidence Before The Court

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Decision

Reasons for decision

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Ratio Decidendi

Legal Principle Established

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IN THE FEDERAL COURT OF AUSTRALIA
VICTORIA DISTRICT REGISTRY	V 124 OF 1999

BETWEEN:	AMRAD OPERATIONS PTY LTD (ACN 053 997 176) Applicant
AND:	GENELABS TECHNOLOGIES, INC. First Respondent THE GOVERNMENT OF THE UNITED STATES OF AMERICA, AS REPRESENTED BY THE SECRETARY OF THE DEPARTMENT OF HEALTH AND HUMAN SERVICES AND HIS SUCCESSORS Second Respondent ABBOTT GmbH DIAGNOSTIKA Third Respondent
JUDGE:	KENNY J
DATE OF ORDER:	12 MAY 1999
WHERE MADE:	MELBOURNE