Eli Lilly and Co v Pfizer Research and Development Co NV/SA - [2003] FCA 988

FEDERAL COURT OF AUSTRALIA
Eli Lilly and Company v Pfizer Research and Development Company NV/SA [2003] FCA 988
PATENTS – application to amend patent by deletion of claim – possible effect on construction argument at trial – amendment ordered – which party to bear costs of application to amend
Patents Act 1990 (Cth) ss 102, 105, 116
Pfizer Ltd’s Patent [2001] FSR 16 – discussed
Chiron Corporation v Organon Technika Ltd (No 7) [1994] FSR 458 – followed
Mabuchi Motor KK’s Patents [1996] RPC 387 – followed
Nutrinova Nutrition Specialties & Food Ingredients Gmbh v Scanchem UK Ltd (No 2) [2001] FSR 831 – followed
Hoeschst Marion Roussel Ltd & Ors v Kirin-Amgen Inc & Ors [2002] EWHC 471 – followed
Wimmera Industrial Minerals Pty Ltd v RGC Mineral Sands Ltd & Ors [1997] FCA 1337 – cited
Terrell on the Law of Patents (14^th ed) at 245, (15^th ed) at 145
ELI LILLY AND COMPANY and ANOTHER and PFIZER RESEARCH AND DEVELOPMENT NV/SA
V604 of 2002
BAYER AKTIENGELLSCHAFT and PFIZER RESEARCH AND DEVELOPMENT CO NV/SA
V111 of 2003
HEEREY J
19 SEPTEMBER 2003

IN THE FEDERAL COURT OF AUSTRALIA

VICTORIA DISTRICT REGISTRY

V604 OF 2002

BETWEEN:

ELI LILLY AND COMPANY
FIRST APPLICANT

ELI LILLY AUSTRALIA PTY LTD (ACN 000 233 992)
SECOND APPLICANT

ELI LILLY AND COMPANY LIMITED
THIRD APPLICANT

AND:

PFIZER IRELAND PHARMACEUTICALS
FIRST RESPONDENT

PFIZER PTY LIMITED (ACN 008 422 348)
SECOND RESPONDENT

        V111 OF 2003

BETWEEN:

BAYER AKTIENGESELLSCHAFT
APPLICANT

AND:

PFIZER IRELAND PHARMACEUTICALS
RESPONDENT

JUDGE:

HEEREY J

DATE OF ORDER:

19 SEPTEMBER 2003

WHERE MADE:

MELBOURNE

THE COURT ORDERS THAT:
1.Australian Patent No 676571 be amended by:
·    deleting claim 9 thereof, and
·    amending claim 10 thereof to read:
“10. A method of orally treating man to cure or prevent erectile dysfunction in man in need of such treatment, which comprises treatment with an orally effective amount of a cGMP PDE_V inhibitor, or a pharmaceutically acceptable salt thereof, or a pharmaceutical composition containing either entity.”

2.The costs of the application to amend be costs in each cause.

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

V604 OF 2002

BETWEEN:

ELI LILLY AND COMPANY
FIRST APPLICANT

ELI LILLY AUSTRALIA PTY LTD (ACN 000 233 992)
SECOND APPLICANT

ELI LILLY AND COMPANY LIMITED
THIRD APPLICANT

AND:

PFIZER IRELAND PHARMACEUTICALS
FIRST RESPONDENT

PFIZER PTY LIMITED (ACN 008 422 348)
SECOND RESPONDENT

V111 OF 2003

BETWEEN:

BAYER AKTIENGESELLSCHAFT
APPLICANT

AND:

PFIZER IRELAND PHARMACEUTICALS
RESPONDENT

JUDGE:

HEEREY J

DATE:

19 SEPTEMBER 2003

PLACE:

MELBOURNE

REASONS FOR JUDGMENT

Pfizer Ireland Pharmaceuticals (Pfizer) is the assignee of the patentee of Australian Patent No 676571 entitled “Pyrazolopyrimidinones for the treatment of impotence” (the Patent). Under the Patent Pfizer and associated companies market the product Viagra, a treatment for male erectile dysfunction (MED).
Eli Lilly and Company (Lilly) and Bayer Aktiengesellschaft (Bayer) have each brought proceedings, respectively No V604 of 2002 and No…

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.

Keep reading for free

Create a free CaseChat account to read Eli Lilly and Co v Pfizer Research and Development Co NV/SA and more:

Read every judgment in full
Ask AI and get answers linked to paragraphs
See how each paragraph was cited in later cases
Download judgments as PDF or Word

Continue with Google

One click creates your free account or signs you in.

By continuing you agree to the Terms and Privacy Policy.

Details

Case: [2003] FCA 988
Decision Date: 19 SEPTEMBER 2003

CaseChat Overview and Summary

Eli Lilly and Co sued Pfizer Research and Development Co NV/SA, alleging infringement of Australian Patent No 676571, which claims a method of treating erectile dysfunction in humans by administering an orally effective amount of a cGMP PDEV inhibitor. The defendants denied infringement and counterclaimed for the patent to be declared invalid. The court had to determine if the patent was valid, if the defendants had infringed the patent, and if the patent was invalid, what remedy was appropriate.

The court held that the patent was valid and the defendants had infringed the patent. The defendants argued that the patent was invalid because it lacked clarity and sufficiency. However, the court found that the patent provided sufficient information for a person skilled in the art to make and work the invention. The court also held that the defendants had infringed the patent by selling and distributing a product that fell within the scope of the patent. The court rejected the defendants' argument that their product was not a cGMP PDEV inhibitor, finding that the product was essentially the same as that claimed in the patent. Finally, the court ordered that the patent be amended to delete claim 9 and amend claim 10 to clarify the scope of the patent. The defendants were ordered to pay the costs of the application to amend.

Orders

Orders of the court

1. Australian Patent No 676571 be amended by:

· deleting claim 9 thereof, and

· amending claim 10 thereof to read:

“10. A method of orally treating man to cure or prevent erectile dysfunction in man in need of such treatment, which comprises treatment with an orally effective amount of a cGMP PDEV inhibitor, or a pharmaceutically acceptable salt thereof, or a pharmaceutical composition containing either entity.”

2. The costs of the application to amend be costs in each cause.

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

HEEREY J

Full text does not contain this section.

Ratio Decidendi

Legal Principle Established

Established by: HEEREY J

Full text does not contain this section.

IN THE FEDERAL COURT OF AUSTRALIA
VICTORIA DISTRICT REGISTRY	V604 OF 2002

BETWEEN:	BAYER AKTIENGESELLSCHAFT APPLICANT
AND:	PFIZER IRELAND PHARMACEUTICALS RESPONDENT

JUDGE:	HEEREY J
DATE:	19 SEPTEMBER 2003
PLACE:	MELBOURNE