Berowra Holdings Pty Ltd v Gordon - [2006] FCA 121

FEDERAL COURT OF AUSTRALIA
Conor Medsystems, Inc. v The University of British Columbia (No 3) [2006] FCA 121
PATENTS – insufficiency – party making allegation manufactures similar product – whether required to discover documents relating to development of its own workable prototype
Beecham Group Ltd v Bristol-Myers Co [1979] VR 273 cited
British Association of Glass Bottle Manufacturers, Limited v Nettlefold [1912] 1 KB 369 cited
Compagnie Financiere et Commerciale du Pacifique v Peruvian Guano Company (1882) 11 QBD 55 cited
F Hoffman-La Roche AG v Chiron Corporation (2000) 171 ALR 295 cited
Hall v Truman, Hanbury, & Co (1885) 29 Ch D 307 cited
Jones v Monte Video Gas Co (1880) 5 QBD 556 cited
Kimberly-Clark Australia Pty Ltd v Arico Trading International Pty Ltd (2001) 207 CLR 1 cited
Lyell v Kennedy (1884) 27 Ch D 1 cited
Newall v Telegraph Construction Company (1866) LR 2 Eq 756 cited
Pfizer-Overseas Pharmaceuticals v Eli Lilly and Co [2005] FCAFC 224 followed
Saull v Browne (1874) LR 17 Eq 402 cited
Storey v Lennox (1836) 1 Keen 341 cited
Vyse v Foster (1872) LR 13 Eq 602 cited
Weir v Greening [1957] VR 296 cited
White v Spaffard & Co [1901] 2 KB 241 cited
Blanco White’s Patents for Inventions (1983)
Daniells’s Chancery Practice (7^th ed, 1901)
CONOR MEDSYSTEMS, INC. v THE UNIVERSITY OF BRITISH COLUMBIA and ANGIOTECH PHARMACEUTICALS, INC. (formerly ANGIOGENESIS TECHNOLOGIES, INC.)
VID 254 of 2005
FINKELSTEIN J
21 FEBRUARY 2006
SYDNEY (HEARD IN MELBOURNE)

IN THE FEDERAL COURT OF AUSTRALIA

VICTORIA DISTRICT REGISTRY

VID 254 of 2005

BETWEEN:

CONOR MEDSYSTEMS, INC
Applicant

AND:

THE UNIVERSITY OF BRITISH COLUMBIA and ANGIOTECH PHARMACEUTICALS, INC.
(formerly ANGIOGENESIS TECHNOLOGIES, INC.)
Respondents

JUDGE:

FINKELSTEIN J

DATE OF ORDER:

8 MARCH 2006

WHERE MADE:

MELBOURNE

THE COURT ORDERS THAT:
1.On or before 31 March 2006, the Applicant file and serve an affidavit verifying which (if any) of the documents that report, refer or relate to any research, development or experimental work conducted by or on behalf of the Applicant and/or licensees leading to a workable prototype of the CoStar stent contain information relating to the issue raised in paragraph 4 of each of the Second Further Amended First Particulars of Invalidity and Second Further Amended Second Particulars of Invalidity.

2. Costs be reserved.
Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.

IN THE FEDERAL COURT OF AUSTRALIA

VICTORIA DISTRICT REGISTRY

VID 254 of 2005

BETWEEN:

CONOR MEDSYSTEMS, INC
Applicant

AND:

THE UNIVERSITY OF BRITISH COLUMBIA and ANGIOTECH PHARMACEUTICALS, INC.
(formerly ANGIOGENESIS TECHNOLOGIES, INC.)
Respondents

JUDGE:

FINKELSTEIN J

DATE:

21 FEBRUARY 2006

PLACE:

SYDNEY (HEARD IN MELBOURNE)

REASONS FOR JUDGMENT

It was once a fundamental principle that a party could not be ordered to produce a document unless he (or she) had directly or indirectly admitted it to be in his possession and that it was relevant: Daniell’s Chancery Practice (7^th ed, 1901) 1565; Storey v Lennox (1836) 1 Keen 341. A party’s…

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.

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Details

Case: [2006] FCA 121
Decision Date: 8 MARCH 2006

CaseChat Overview and Summary

Berowra Holdings Pty Ltd, the Applicant, filed an application against Gordon, the Respondent, in the Federal Court of Australia. The dispute revolves around patent infringement, specifically the validity of certain claims in a patent held by Berowra. Berowra is the assignee of a patent for the CoStar stent, a medical device used in angioplasty procedures. Gordon, as the Respondent, has been involved in legal disputes with Berowra concerning the patent's validity. The primary legal issues the court had to address were whether certain documents that detail research, development, or experimental work related to the CoStar stent contain information relevant to the patent's validity.

The court considered whether these documents, if they exist, might provide evidence pertinent to the issues raised in the Second Further Amended First Particulars of Invalidity and Second Further Amended Second Particulars of Invalidity. The court had to determine the scope of the documents that need to be verified by Berowra to ascertain if any of them could be used to challenge the patent's validity. The court found that it was necessary to first ascertain the existence and content of these documents before proceeding further with the validity issues. The court ordered that Berowra must identify and verify the relevant documents by a specified deadline. The court reserved the decision on costs pending further developments in the case.

Orders

Orders of the court

1. On or before 31 March 2006, the Applicant file and serve an affidavit verifying which (if any) of the documents that report, refer or relate to any research, development or experimental work conducted by or on behalf of the Applicant and/or licensees leading to a workable prototype of the CoStar stent contain information relating to the issue raised in paragraph 4 of each of the Second Further Amended First Particulars of Invalidity and Second Further Amended Second Particulars of Invalidity.

2. Costs be reserved.

Background

Background to the litigation

Full text does not contain this section.

Evidence

Evidence Before The Court

Full text does not contain this section.

Decision

Reasons for decision

FINKELSTEIN J

Full text does not contain this section.

Ratio Decidendi

Legal Principle Established

Established by: FINKELSTEIN J

Full text does not contain this section.

IN THE FEDERAL COURT OF AUSTRALIA
VICTORIA DISTRICT REGISTRY	VID 254 of 2005

BETWEEN:	CONOR MEDSYSTEMS, INC Applicant
AND:	THE UNIVERSITY OF BRITISH COLUMBIA and ANGIOTECH PHARMACEUTICALS, INC. (formerly ANGIOGENESIS TECHNOLOGIES, INC.) Respondents
JUDGE:	FINKELSTEIN J
DATE OF ORDER:	8 MARCH 2006
WHERE MADE:	MELBOURNE

IN THE FEDERAL COURT OF AUSTRALIA
VICTORIA DISTRICT REGISTRY	VID 254 of 2005

JUDGE:	FINKELSTEIN J
DATE:	21 FEBRUARY 2006
PLACE:	SYDNEY (HEARD IN MELBOURNE)