Apotex Pty Ltd v ICOS Corporation (No 3)

The case of Apotex Pty Ltd v ICOS Corporation (No 3) involves a dispute between the applicant, Apotex Pty Ltd, and the respondent, ICOS Corporation. Apotex sought relief by way of declarations of invalidity and orders for revocation of claims in two patents held by ICOS, the 946 Patent and the 666 Patent. ICOS, the registered owner of the patents, denied that the claims were invalid. The court had to decide whether there was a lack of inventive step, lack of novelty, or whether the patent was obtained by false suggestion or was not useful in respect of the 946 Patent, and whether there was a lack of inventive step and a lack of novelty in respect of the 666 Patent. Additionally, ICOS brought a cross-claim against Apotex, seeking declarations that Apotex had threatened to infringe claims in the two patents. The court had to determine whether Apotex had threatened to infringe the claims, and if so, what relief ICOS was entitled to.

The court found that Apotex had threatened to infringe all of the claims in suit in both the 946 Patent and the 666 Patent. While Apotex admitted to threatened infringement of certain claims in both patents, subject to its case on invalidity, it denied infringement in respect of other claims. Regarding the 666 Patent, Apotex did not admit threatened infringement of certain claims but accepted that expert evidence established threatened infringement, subject to its case on invalidity. The court rejected Apotex’s challenge to the validity of the patents, finding that ICOS had established that Apotex threatened to infringe the claims in suit in each patent. The issues of quantum arising from ICOS’s cross-claim were to be heard and determined separately from, and after, all other issues in the proceeding.

The court concluded that Apotex’s challenge to the validity of the 946 Patent and the 666 Patent must be rejected. ICOS had established that Apotex threatened to infringe the claims in suit in each patent. The court directed the respondent to bring in draft minutes of order reflecting the conclusions in these reasons. The entry of orders was to be dealt with in Rule 39.32 of the Federal Court Rules 2011.