Apotex Pty Ltd v Cipla Limited (No 2)

FEDERAL COURT OF AUSTRALIA

Apotex Pty Ltd v Cipla Limited (No 2) [2018] FCA 1393

File number:

VID 1229 of 2017

Judge:

BEACH J

Date of judgment:

3 August 2018

Date of publication of reasons:

11 September 2018

Catchwords:

PRACTICE AND PROCEDURE – discovery – patents – pharmaceutical products and formulations for nasal and ocular use – antihistamines, particularly azelastine – corticosteroids, particularly fluticasone – combination of azelastine and steroids – grounds of invalidity – lack of inventive step – related US proceedings – depositions – transcripts of trial evidence – trial exhibits – false suggestion – material of secondary significance – indirect relevance – proportionality

Legislation:

Patents Act 1990 (Cth) ss 18(1)(b)(ii) and 138(3)(d)

Cases cited:

Apotex Pty Ltd v Cipla Limited [2017] FCA 1627

BlueScope Steel Limited v Dongkuk Steel Mill Co., Ltd [2017] FCA 1537

Date of hearing:

3 August 2018

Registry:

Victoria

Division:

General Division

National Practice Area:

Intellectual Property

Sub-area:

Patents and associated Statutes

Category:

Catchwords

Number of paragraphs:

45

Counsel for the Applicant / First Cross-Respondent:

Mr N Murray and Mr M Fleming

Solicitor for the Applicant / First Cross-Respondent:

Ashurst

Counsel for the Respondent / Cross-Claimants:

Mr B Caine QC and Mr J Cooke

Solicitor for the Respondent / Cross-Claimants:

MinterEllison

ORDERS

VID 1229 of 2017

BETWEEN:

APOTEX PTY LTD (ACN 096 916 148)

Applicant

AND:

CIPLA LIMITED

Respondent

AND BETWEEN:

CIPLA LIMITED (and another named in the Schedule)

First Cross-Claimant

AND:

APOTEX PTY LTD (ACN 096 916 148) (and another named in the Schedule)

First Cross-Respondent

JUDGE:	BEACH J
DATE OF ORDER:	3 AUGUST 2018

THE COURT ORDERS THAT:

1.By 4.00 pm on 19 October 2018, the Respondent/Cross-Claimants conduct an electronic search of the US Discovered Documents (as described in paragraph 18(b)(ii) of the affidavit of Shyama Jayaswal affirmed on 1 August 2018), using key words as agreed by the parties or otherwise ordered by the Court, for documents that:

(a)record or describe the research, development, testing or experimental work undertaken in the course of developing the invention claimed in the Australian patent number 2003244799 titled “Combination of azelastine and steroids” during the period 14 June 2000 to 14 June 2002; and

(b)were created during the period 14 June 2000 to 14 June 2003.

2.By 4.00 pm on 9 November 2018, the Respondent/Cross-Claimants:

(a)give discovery to the Applicant/First Cross-Respondent (Apotex) of the documents identified pursuant to Order 1 above; and

(b)produce for inspection, an electronic copy of each of the documents discovered pursuant to paragraph (a), subject to any claim for privilege.

3.Apotex’s interlocutory application dated 5 March 2018 otherwise be dismissed.

4.The Respondent’s/Cross-Claimants’ costs of and incidental to Apotex’s interlocutory application be their costs in the cause and there be no other orders as to costs in relation to the Interlocutory Application.

Note:    Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.

REASONS FOR JUDGMENT

BEACH J:

1. The applicant (Apotex) has sought orders requiring the respondent/cross-claimants to discover various categories of documents…