AstraZeneca AB v Alphapharm Pty Ltd - [2014] FCA 419

FEDERAL COURT OF AUSTRALIA
AstraZeneca AB v Alphapharm Pty Ltd [2014] FCA 419

Citation: AstraZeneca AB v Alphapharm Pty Ltd [2014] FCA 419

Parties: ASTRAZENECA AB and ASTRAZENECA PTY LTD (ACN 009 682 311) v ALPHAPHARM PTY LTD

File number: VID 876 of 2013

Judge: JESSUP J

Date of judgment: 30 April 2014

Catchwords: INTELLECTUAL PROPERTY – whether applicant entitled to solicitor/client costs under s 19(2) of the Patents Act 1990 (Cth) – s 19(2) creates a presumption that the holder of a certificate issued under s 19(1) is entitled costs on a solicitor/client basis in subsequent proceedings – s 19(3) gives the court a discretion to depart from the s 19(2) position if the circumstances warrant it – whether the s 19(3) discretion should be exercised – respondent failed to present applicants with a complete offer to settle the case – applicants did not engage in unduly aggressive litigation – s 19(3) discretion ought not to be exercised – costs payable in accordance with s 19(2)

Legislation: Patents Act 1990 (Cth) ss 19(2), 19(3)
Federal Court of Australia Act 1976 (Cth) s 43(1)
Federal Court Rules 2011 (Cth)

Cases cited: British Vacuum Company Ltd v Exton Hotels Company Ltd (1908) 25 RPC 617
Edison-Bell Phonograph Company v Waterfield, Clifford & Co (1902) 19 RPC 329
Hoffman-La Roche AG v New England Biolabs Inc (2000) 99 FCR 56
Molnlycke AB v Proctor & Gamble Ltd (No 5) [1994] RPC 49
Ranbaxy Laboratories Ltd v AstraZeneca AB (2013) 101 IPR 11
The Welsbach Incandescent Gas Light Company, Ltd v The Daylight Incandescent Mantle Company, Ltd (1899) 16 RPC 344
Saccharin Corp Ltd v Dawson (1902) 19 RPC 169

Date of hearing: 25 February 2014

Place: Melbourne

Division: GENERAL DIVISION

Category: Catchwords

Number of paragraphs: 33

Counsel for the Applicants: Mr C Dimitriadis

Solicitor for the Applicants: Ashurst

Counsel for the Respondent: Mr L Merrick

Solicitor for the Respondent: Corrs Chambers Westgarth

IN THE FEDERAL COURT OF AUSTRALIA

VICTORIA DISTRICT REGISTRY

GENERAL DIVISION

VID 876 of 2013

BETWEEN:
ASTRAZENECA AB
First Applicant

ASTRAZENECA PTY LTD (ACN 009 682 311)
Second Applicant

AND:
ALPHAPHARM PTY LTD
Respondent

JUDGE:

JESSUP J

DATE OF ORDER:

30 APRIL 2014

WHERE MADE:

MELBOURNE

THE COURT ORDERS THAT:
1.During the term of Australian Patent No. 676337 (AU 337), the Respondent, by itself, its directors, officers, servants, agents or otherwise, be permanently restrained from infringing claims 1 to 3 and 18 to 27 of AU 337 and, in particular, from engaging in the following acts within the patent area (as that term is defined in the Patents Act 1990 (Cth)) without the licence or authority of the Applicants:
(a)making, selling or otherwise disposing of its esomeprazole products intended for supply in Australia, or any other product or product produced by a method or process, within claims 1 to 3 and 18 to 27 of AU 337 (Alphapharm Products (337));
(b)offering to make, sell or otherwise dispose of the Alphapharm Products (337);
(c)using or importing the…

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.

Continue reading AstraZeneca AB v Alphapharm Pty Ltd

Details

AGLC: AstraZeneca AB v Alphapharm Pty Ltd [2014] FCA 419
Case: [2014] FCA 419
Decision Date: 30 April 2014

CaseChat Overview and Summary

In the case of AstraZeneca AB v Alphapharm Pty Ltd, the applicant, AstraZeneca AB, sought an injunction against the respondent, Alphapharm Pty Ltd, for alleged patent infringement relating to pharmaceutical products. The Federal Court of Australia was tasked with determining the scope and validity of the patents in question and the appropriate remedies and costs to be awarded. The court was also required to decide whether the applicant was entitled to solicitor/client costs under section 19(2) of the Patents Act 1990 (Cth), and if the court had discretion to depart from this presumption under section 19(3) of the same Act.

The court found that the applicant was entitled to the relief sought, including permanent injunctions against the respondent's infringement of the patents and restrictions on the respondent's ability to assign the Australian Register of Therapeutic Goods registrations of the products in question. The court held that the respondent had failed to present a complete offer to settle the case, and that the applicant had not engaged in unduly aggressive litigation. Consequently, the court determined that the discretion provided by section 19(3) of the Patents Act should not be exercised, and the applicant was entitled to costs on a solicitor/client basis as per section 19(2).

The final orders included comprehensive injunctions against the respondent's infringement activities, a release of the applicant from a prior undertaking to compensate any adversely affected parties, and a direction that the respondent pay the applicant's costs of the proceeding in accordance with section 19(2) of the Patents Act. The costs were to be taxed, if necessary, in conformity with the statutory provisions.

Orders

Orders of the court

1. During the term of Australian Patent No. 676337 (AU 337), the Respondent, by itself, its directors, officers, servants, agents or otherwise, be permanently restrained from infringing claims 1 to 3 and 18 to 27 of AU 337 and, in particular, from engaging in the following acts within the patent area (as that term is defined in the Patents Act 1990 (Cth)) without the licence or authority of the Applicants:

(a) making, selling or otherwise disposing of its esomeprazole products intended for supply in Australia, or any other product or product produced by a method or process, within claims 1 to 3 and 18 to 27 of AU 337 (Alphapharm Products (337));

(b) offering to make, sell or otherwise dispose of the Alphapharm Products (337);

(d) keeping the Alphapharm Products (337) for the purpose of doing any of the acts referred to in sub-paragraphs (a) to (c) above;

(e) using any method or process within claims 21 to 27 of AU 337;

(f) authorising, inducing, procuring or joining in a common design with any other person to do any of the acts referred to in sub paragraphs (a) to (e) above.

2. During the term of AU 337, the Respondent, by itself, its directors , officers, servants, agents or otherwise, be permanently restrained from, without the licence or authority of the Applicants, taking any steps to obtain listing of any of the Alphapharm Products (337) under the PBS with an effective listing date prior to expiry of AU 337, and be required to withdraw any such application that has been made.

3. During the term of AU 337, the Respondent be restrained from assigning the ARTG registrations of the Alphapharm Products (337) to any third party.

4. During the term of Australian Patent No. 695966 (AU 966), the Respondent, by itself, its directors, officers, servants, agents or otherwise, be permanently restrained from infringing claims 1 to 4, 6, 12, 14 to 20 and 22 to 28 of AU 966 and, in particular, from engaging in the following acts within the patent area (as that term is defined in the Patents Act) without the licence or authority of the Applicants:

(a) making, selling or otherwise disposing of its tablet esomeprazole products intended for supply in Australia, or any other product or product produced by a method or process, within 1 to 4, 6, 12, 14 to 20 and 22 to 28 of AU 966 (Alphapharm Products (966));

(b) offering to make, sell or otherwise dispose of the Alphapharm Products (966);

(d) keeping the Alphapharm Products (966) for the purpose of doing any of the acts referred to in sub-paragraphs (a) to (c) above;

(e) using any method or process within claims 17 to 20 and 27 to 28 of AU 966;

(f) authorising, inducing, procuring or joining in a common design with any other person to do any of the acts referred to in sub paragraphs (a) to (e) above.

5. During the term of AU 966, the Respondent, by itself, its directors , officers, servants, agents or otherwise , be permanently restrained from, without the licence or authority of the Applicants, taking any steps to obtain listing of any of the Alphapharm Products (966) under the PBS with an effective listing date prior to expiry of AU 966, and be required to withdraw any such application that has been made.

6. During the term of AU 966, the Respondent be restrained from assigning the ARTG registrations of the Alphapharm Products (966) to any third party.

7. The Applicants be released, with effect on and from the date of this order, from the undertaking given by them to the Court in the Order of Justice Gordon dated 29 August 2013, being an undertaking to:

(a) submit to such order (if any) as the Court may consider to be just for the payment of compensation , to be assessed by the Court or as it may direct, to any person, whether or not a party, adversely affected by the operation of the interlocutory order or undertaking or any continuation (with or without variation) thereof; and

(b) pay the compensation referred to in (a) to the person referred to.

8. The respondent pay the applicants’ costs of the proceeding, such costs to be taxed (if not agreed) conformably with s 19(2) of the Patents Act 1990 (Cth).

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

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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Citation:	AstraZeneca AB v Alphapharm Pty Ltd [2014] FCA 419
Parties:	ASTRAZENECA AB and ASTRAZENECA PTY LTD (ACN 009 682 311) v ALPHAPHARM PTY LTD
File number:	VID 876 of 2013
Judge:	JESSUP J
Date of judgment:	30 April 2014
Catchwords:	INTELLECTUAL PROPERTY – whether applicant entitled to solicitor/client costs under s 19(2) of the Patents Act 1990 (Cth) – s 19(2) creates a presumption that the holder of a certificate issued under s 19(1) is entitled costs on a solicitor/client basis in subsequent proceedings – s 19(3) gives the court a discretion to depart from the s 19(2) position if the circumstances warrant it – whether the s 19(3) discretion should be exercised – respondent failed to present applicants with a complete offer to settle the case – applicants did not engage in unduly aggressive litigation – s 19(3) discretion ought not to be exercised – costs payable in accordance with s 19(2)
Legislation:	Patents Act 1990 (Cth) ss 19(2), 19(3) Federal Court of Australia Act 1976 (Cth) s 43(1) Federal Court Rules 2011 (Cth)
Cases cited:	British Vacuum Company Ltd v Exton Hotels Company Ltd (1908) 25 RPC 617 Edison-Bell Phonograph Company v Waterfield, Clifford & Co (1902) 19 RPC 329 Hoffman-La Roche AG v New England Biolabs Inc (2000) 99 FCR 56 Molnlycke AB v Proctor & Gamble Ltd (No 5) [1994] RPC 49 Ranbaxy Laboratories Ltd v AstraZeneca AB (2013) 101 IPR 11 The Welsbach Incandescent Gas Light Company, Ltd v The Daylight Incandescent Mantle Company, Ltd (1899) 16 RPC 344 Saccharin Corp Ltd v Dawson (1902) 19 RPC 169
Date of hearing:	25 February 2014
Place:	Melbourne
Division:	GENERAL DIVISION
Category:	Catchwords
Number of paragraphs:	33
Counsel for the Applicants:	Mr C Dimitriadis
Solicitor for the Applicants:	Ashurst
Counsel for the Respondent:	Mr L Merrick
Solicitor for the Respondent:	Corrs Chambers Westgarth

IN THE FEDERAL COURT OF AUSTRALIA
VICTORIA DISTRICT REGISTRY
GENERAL DIVISION	VID 876 of 2013

JUDGE:	JESSUP J
DATE OF ORDER:	30 APRIL 2014
WHERE MADE:	MELBOURNE