Astellas Pharma Inc v Kissei Pharmaceutical Co Ltd

[2010] FCA 335

FEDERAL COURT OF AUSTRALIA

Astellas Pharma Inc v Kissei Pharmaceutical Co Ltd [2010] FCA 335

Citation:		Astellas Pharma Inc v Kissei Pharmaceutical Co Ltd [2010] FCA 335
Parties:		ASTELLAS PHARMA INC v KISSEI PHARMACEUTICAL CO LTD
File number:		NSD 196 of 2010
Judge:		BENNETT J
Date of judgment:		1 April 2010
Legislation:		Federal Court Rules O 7 r 10
Date of hearing:	1 April 2010
Place:	Sydney
Division:	GENERAL DIVISION
Category:	No catchwords
Number of paragraphs:	6
Counsel for the Applicant:	Ms K Howard SC
Solicitor for the Applicant:	Davies Collison Cave Law Pty Ltd
Counsel for the Respondent:	The Respondent did not appear.

IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY
GENERAL DIVISION	NSD 196 of 2010

BETWEEN:	ASTELLAS PHARMA INC Applicant
AND:	KISSEI PHARMACEUTICAL CO LTD Respondent

JUDGE:	BENNETT J
DATE OF ORDER:	1 APRIL 2010
WHERE MADE:	SYDNEY

THE COURT ORDERS THAT:

1.Pursuant to Order 7 Rule 10 of the Federal Court Rules, the application, statement of claim and particulars of invalidity each dated 2 March 2010 are taken to have been served on the respondent by the delivery of those documents by courier to Griffith Hack (Patent Attorneys) at Level 3, 509 St Kilda Road, Melbourne on 2 March 2010.

2.The applicant serve by email or facsimile transmission to the respondent, a copy of these orders, the applicant's notice of motion dated 1 April 2010, and a copy of the application, statement of claim and particulars of invalidity, each dated 2 March 2010, on or before 9 April 2010.

3.There be no order as to costs.

Note:Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.
The text of entered orders can be located using Federal Law Search on the Court’s website.

IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY
GENERAL DIVISION	NSD 196 of 2010

BETWEEN:	ASTELLAS PHARMA INC Applicant
AND:	KISSEI PHARMACEUTICAL CO LTD Respondent

JUDGE:	BENNETT J
DATE:	1 APRIL 2010
PLACE:	SYDNEY

REASONS FOR JUDGMENT

1. The patent the subject of these proceedings is held in the name of the respondent (Kissei), a company incorporated in Japan.  On the IP Australia database, Griffith Hack is listed as the agent for Kissei and the postal address for Griffith Hack is listed as the address for legal service.  

2. The applicant (Astellas) caused the application, the statement of claim and the particulars of invalidity to be delivered by courier to Griffith Hack Patent Attorneys on 2 March 2010.  On 9 March 2010, Griffith Hack sent an email to the lawyers of Astellas confirming that Griffith Hack Lawyers act on behalf of Kissei in relation to the present proceedings.  However, in subsequent correspondence, Griffith Hack indicated that it did not have instructions to accept service of the proceedings on behalf of Kissei.

3. I am informed by Astellas that Kissei has made an application in the Patent Office for amendment of the patent in suit and is being represented by Griffith Hack for the amendment application.

4. The affidavit of Miriam Zanker, filed by Astellas, sets out the process for effecting personal service of documents in Japan in the ordinary way.  Documents must be served via diplomatic channels and there may be delays of at least three months.

5. In circumstances where Griffith Hack have been acting for Kissei in an application to amend the patent in suit, and where they originally said that they were acting on behalf of Kissei, I am satisfied that Kissei is likely aware of the fact of these proceedings.  I note the matters set out in the affidavit of Ms Zanker as to the steps that would need to be taken to serve these documents in Japan.

6. In the circumstances, I am satisfied that it is appropriate to make an order under Order 7, rule 10 of the Federal Court Rules.  Accordingly, I make order 2 of the Astellas’ notice of motion.  I do not propose to make any order for costs at this stage.  However, in addition, I direct Astellas to serve by email or facsimile, sent directly to Kissei in Japan, a copy of its motion, together with the present orders, and all the documents initiating the proceedings that were served on Griffith Hack.  I direct that that be done by Friday, 9 April 2010, bearing in mind Easter.

I certify that the preceding six (6) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Bennett.

Associate:

Dated:        13 April 2010