Apotex Pty Ltd v Les Laboratoires Servier (No 2)

Apotex Pty Ltd v Les Laboratoires Servier (No 2) involved a dispute between Servier and Apotex regarding the validity and infringement of a patent. The case was heard in the Federal Court of Australia. The central issue was whether Servier could obtain a quia timet injunction against overseas entities, which were part of the Apotex group, based on a prima facie case of authorisation of infringement or a common design to infringe the patent.

The court examined whether there was sufficient evidence to support a prima facie case of infringement by the overseas entities. Servier argued that each of the overseas entities manufactured and supplied pharmaceutical products for sale in Australia, and that Apotex Inc also imported such products. The court considered the corporate structure of the Apotex group and whether the overseas entities were sufficiently connected to Apotex Pty Ltd to be considered part of a common design or authorisation to infringe the patent. The court found that there was insufficient evidence to support the inference that the overseas entities were involved in a common design or authorisation to infringe the patent.

The court concluded that there was no present infringement of the patent and no present threat of an infringement. The court held that there was no basis for a quia timet injunction because there was no actual or apprehended infringement and no other party to the joint tortfeasance by common design or an infringement, actual or apprehended to be authorised. The court further held that an injunction must be of some practical utility and the court should not enjoin conduct that in all probability will not occur.

The court's decision was based on the specific circumstances of the case, including the fact that Apotex Pty Ltd had proffered consent to an injunction and had admitted that the product in question was within the scope of the patent claims. The court held that if the patent was determined to be invalid, there could be no infringement, and if the patent was valid, Apotex Pty Ltd would be subject to a permanent injunction restraining exploitation of the product. The court also noted that there was no evidence that Apotex Pty Ltd would sell or attempt to sell the product if the patent were held to be valid or pending the determination of the validity of the patent.

The court's decision highlights the importance of establishing a prima facie case of infringement and the need for sufficient evidence to support a claim of joint tortfeasance by common design or authorisation. The decision also emphasises the need for an injunction to be of some practical utility and not to enjoin conduct that in all probability will not occur. The case serves as a reminder that the grant of an injunction is not automatic and requires careful consideration of the specific circumstances of each case.