AstraZeneca AB v Alphapharm Pty Ltd - [2014] FCA 9

FEDERAL COURT OF AUSTRALIA
AstraZeneca AB v Alphapharm Pty Ltd [2014] FCA 9

Citation: AstraZeneca AB v Alphapharm Pty Ltd [2014] FCA 9

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

File number: VID 1107 of 2013

Judge: BESANKO J

Date of judgment: 23 January 2014

Catchwords:
PRACTICE AND PROCEDURE – discovery – application for pre-action discovery pursuant to r 7.23 of the Federal Court Rules 2011 (Cth) – application for discovery and inspection of documents and delivery samples – potential action for threatened infringement of patent – meaning of “sufficient information to decide whether to start a proceeding in the Court to obtain that relief” – comparison with O 15A, r 6(b) of the Federal Court Rules 1979 (Cth).

Held: The Amended Originating Application be adjourned to a date to be fixed for the making of an order or orders on the application consistent with these reasons.

Legislation: Federal Court of Australia Act 1976 (Cth) s 23
Federal Court Rules 1979 (Cth) O 15A, r 6(b)
Federal Court Rules 2011 (Cth) r 7.23
Patents Act 1990 (Cth)

Cases cited: Optiver Australia Pty Ltd v Tibra Trading Pty Ltd [2007] FCA 1348
Optiver Australia Pty Ltd v Tibra Trading Pty Ltd and Others [2008] FCAFC 133; (2008) 169 FCR 435
Reeve v Aqualast Pty Ltd [2012] FCA 679

Date of hearing: 12 December 2013

Place: Adelaide (heard via video link to Melbourne and Sydney)

Division: GENERAL DIVISION

Category: Catchwords

Number of paragraphs: 41

Counsel for the Prospective Applicants: Mr C Dimitriadis

Solicitor for the Prospective Applicants: Ashurst Australia

Counsel for the Prospective Respondent: Mr Jopling QC with Mr L Merrick

Solicitor for the Prospective Respondent: Corrs Chambers Westgarth

IN THE FEDERAL COURT OF AUSTRALIA

VICTORIA DISTRICT REGISTRY

GENERAL DIVISION

VID 1107 of 2013

BETWEEN:
ASTRAZENECA AB
Prospective First Applicant

ASTRAZENECA PTY LTD (ACN 009 682 311)
Prospective Second Applicant

AND:
ALPHAPHARM PTY LTD
Prospective Respondent

JUDGE:

BESANKO J

DATE OF ORDER:

23 JANUARY 2014

WHERE MADE:

ADELAIDE VIA VIDEO LINK TO MELBOURNE

THE COURT ORDERS THAT:
1.The Amended Originating Application be adjourned to a date to be fixed for the making of an order or orders on the application consistent with these reasons.

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

IN THE FEDERAL COURT OF AUSTRALIA

VICTORIA DISTRICT REGISTRY

GENERAL DIVISION

VID 1107 of 2013

BETWEEN:
ASTRAZENECA AB
Prospective First Applicant

ASTRAZENECA PTY LTD ACN 009 682 311
Prospective Second Applicant

AND:
ALPHAPHARM PTY LTD
Prospective Respondent

JUDGE:

BESANKO J

DATE:

23 JANUARY 2014

PLACE:

ADELAIDE VIA VIDEO LINK TO MELBOURNE

REASONS FOR JUDGMENT

On 18 October 2013, AstraZeneca AB and AstraZeneca Pty Ltd (together “AstraZeneca”) as prospective applicants issued an originating application under r 7.23 of the Federal Court Rules 2011 (Cth) against Alphapharm Pty Ltd (“Alphapharm”) as prospective respondent seeking the discovery and inspection of documents and the delivery of samples relating to products defined in the application as “Alphapharm Products”.

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 9
Case: [2014] FCA 9
Decision Date: 23 January 2014

CaseChat Overview and Summary

AstraZeneca AB brought an application for pre-action discovery against Alphapharm Pty Ltd. AstraZeneca sought the discovery and inspection of documents and delivery samples from Alphapharm, anticipating a potential action for threatened infringement of a patent. The application was made pursuant to rule 7.23 of the Federal Court Rules 2011 (Cth). The primary legal issue was whether AstraZeneca had provided sufficient information to justify the court in deciding whether to grant the requested relief. This requirement is similar to the threshold for granting discovery under Order 15A, rule 6(b) of the Federal Court Rules 1979 (Cth).

The court considered whether AstraZeneca had demonstrated a reasonable cause of action and whether the requested discovery was necessary to enable AstraZeneca to decide whether to proceed with litigation. The court noted that the threshold for pre-action discovery is not identical to that for discovery under litigation but is nonetheless substantial. AstraZeneca had provided detailed information about the patent in question, the potential infringement, and the basis for its belief that a threatened infringement existed. However, the court found that AstraZeneca had not demonstrated a sufficient likelihood of success on the merits to warrant granting the application at that stage. The court also highlighted the importance of the proportionality of the discovery sought in relation to the potential action.

The court adjourned the application to a later date to allow AstraZeneca to provide additional information and to enable the court to make a more informed decision. The adjournment was intended to allow AstraZeneca to further substantiate its case and to demonstrate a stronger likelihood of success if the action were to proceed. The court's decision underscored the need for a clear and compelling showing before granting pre-action discovery, particularly in cases involving complex issues such as patent infringement. The orders made by the court reflected this cautious approach, with the application being adjourned to allow for further information to be presented.

Orders

Orders of the court

1. The Amended Originating Application be adjourned to a date to be fixed for the making of an order or orders on the application consistent with these reasons.

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

Background

Background to the litigation

Full text does not contain this section.

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 9
Parties:		ASTRAZENECA AB and ASTRAZENECA PTY LTD (ACN 009 682 311) v ALPHAPHARM PTY LTD
File number:		VID 1107 of 2013
Judge:		BESANKO J
Date of judgment:		23 January 2014
Catchwords:		PRACTICE AND PROCEDURE – discovery – application for pre-action discovery pursuant to r 7.23 of the Federal Court Rules 2011 (Cth) – application for discovery and inspection of documents and delivery samples – potential action for threatened infringement of patent – meaning of “sufficient information to decide whether to start a proceeding in the Court to obtain that relief” – comparison with O 15A, r 6(b) of the Federal Court Rules 1979 (Cth). Held: The Amended Originating Application be adjourned to a date to be fixed for the making of an order or orders on the application consistent with these reasons.
Legislation:		Federal Court of Australia Act 1976 (Cth) s 23 Federal Court Rules 1979 (Cth) O 15A, r 6(b) Federal Court Rules 2011 (Cth) r 7.23 Patents Act 1990 (Cth)
Cases cited:		Optiver Australia Pty Ltd v Tibra Trading Pty Ltd [2007] FCA 1348 Optiver Australia Pty Ltd v Tibra Trading Pty Ltd and Others [2008] FCAFC 133; (2008) 169 FCR 435 Reeve v Aqualast Pty Ltd [2012] FCA 679
Date of hearing:	12 December 2013
Place:	Adelaide (heard via video link to Melbourne and Sydney)
Division:	GENERAL DIVISION
Category:	Catchwords
Number of paragraphs:	41
Counsel for the Prospective Applicants:	Mr C Dimitriadis
Solicitor for the Prospective Applicants:	Ashurst Australia
Counsel for the Prospective Respondent:	Mr Jopling QC with Mr L Merrick
Solicitor for the Prospective Respondent:	Corrs Chambers Westgarth

IN THE FEDERAL COURT OF AUSTRALIA
VICTORIA DISTRICT REGISTRY
GENERAL DIVISION	VID 1107 of 2013

JUDGE:	BESANKO J
DATE OF ORDER:	23 JANUARY 2014
WHERE MADE:	ADELAIDE VIA VIDEO LINK TO MELBOURNE

JUDGE:	BESANKO J
DATE:	23 JANUARY 2014
PLACE:	ADELAIDE VIA VIDEO LINK TO MELBOURNE