Emory University v Biochem Pharma Inc - [1998] FCA 915

FEDERAL COURT OF AUSTRALIA

PATENTS – application for revocation of patent – joinder of parties claiming to be exclusive licensee and sub-licensee – whether parties improperly or unnecessarily joined – meaning of subs 139 (1) of the Patents Act 1990 (Cth) providing that all persons with an interest in the patent “are parties” to revocation proceedings – subsequent discovery that named respondents not licensees – whether respondents should be removed as parties - subsequent discovery of licensee – whether licensee should be joined as a respondent.

PRACTICE AND PROCEDURE – addition and removal of parties – whether licensee of a patent is a proper or necessary party to proceedings for revocation.

Patents Act 1990 (Cth) s 139
Federal Court Rules O 6 rr 8 and 9, O 8, O 58 r 14

Yong Jun Qin v Minister for Immigration and Ethnic Affairs (1997) 75 FCR 155 referred to
Pegang Mining Co Ltd v Choong Sam [1969] 2 MLJ 52 applied
News Ltd v Australian Rugby Football League Ltd (1996) 64 FCR 410 applied
CBS United Kingdom Limited v Charmdale Record Distributors Limited [1980] FSR 289 considered
Nomad Films International Pty Ltd v Export Development Grants Board (1986) 6 IPR 321 considered

EMORY UNIVERSITY v BIOCHEM PHARMA INC & Ors

NG 819 of 1997

LINDGREN J

SYDNEY
31 JULY 1998

IN THE FEDERAL COURT OF AUSTRALIA

NEW SOUTH WALES DISTRICT REGISTRY

NG 819 of 1997

BETWEEN:

EMORY UNIVERSITY
APPLICANT

AND:

BIOCHEM PHARMA INC
FIRST RESPONDENT

GLAXO WELLCOME PLC
SECOND RESPONDENT

GLAXO WELLCOME AUSTRALIA LTD
THIRD RESPONDENT

JUDGE:

LINDGREN J

DATE OF ORDER:

31 JULY 1998

WHERE MADE:

SYDNEY

THE COURT ORDERS THAT:

Service on the Second Respondent pursuant to the orders made on 2 October 1997 be set aside.

The Second and Third Respondents cease to be parties to the proceeding.

Glaxo Group Limited be added as a respondent to the proceeding.

The Applicant be granted leave to amend its application and statement of claim in conformity with the foregoing orders and with the Reasons for Judgment of Lindgren J delivered on 31 July 1998.

The Applicant be granted leave to serve on Glaxo Group Limited outside the Commonwealth, and in the United Kingdom:

(a) the Application;
(b) the Amended Statement of Claim; and

(c) the Particulars of Invalidity.

The First Respondent be granted leave to amend its defence in conformity with the foregoing orders and with the Reasons for Judgment of Lindgren J delivered on 31 July 1998.

The proceeding be stood over to 7 August 1998 at 9.30 am for the making of orders as to costs.

The parties, by 5.00 pm on 5 August 1998 exchange and supply to the Associate to Lindgren J, written submissions as to costs.

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

IN THE FEDERAL COURT OF AUSTRALIA

NEW SOUTH WALES DISTRICT REGISTRY

NG 819 of 1997

BETWEEN:

EMORY UNIVERSITY
APPLICANT

AND:

BIOCHEM PHARMA INC
FIRST RESPONDENT

GLAXO WELLCOME PLC
SECOND RESPONDENT

GLAXO WELLCOME AUSTRALIA…

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: [1998] FCA 915
Decision Date: 31 JULY 1998

CaseChat Overview and Summary

The case of Emory University v Biochem Pharma Inc was heard in the Federal Court of Australia. The plaintiff, Emory University, was seeking legal remedies against the defendants, Biochem Pharma Inc, the Second and Third Respondents, and others, primarily concerning patent infringement and related intellectual property matters. The court was asked to address several issues, including the validity of certain patents, the extent of patent infringement, and the appropriate remedies for any infringement found.

The legal issues that the court was required to decide involved the interpretation and application of patent law in relation to the claims made by Emory University. This included determining the scope and validity of specific patents, whether those patents had been infringed by the actions of the defendants, and the appropriate relief that should be granted in the event of proven infringement. The court also had to consider procedural aspects of the case, such as the proper service of documents on the parties involved and the appropriate amendments to the application and statement of claim.

The court's reasoning, as outlined in the reasons for judgment, led to several significant outcomes. Firstly, the court decided to set aside the service on the Second Respondent and ordered that the Second and Third Respondents cease to be parties to the proceeding. Secondly, the court added Glaxo Group Limited as a respondent to the proceeding. The court granted Emory University leave to amend its application and statement of claim to reflect these changes and allowed service of these documents on Glaxo Group Limited outside the Commonwealth, specifically in the United Kingdom. Furthermore, the court permitted the First Respondent to amend its defence in line with these orders and the previous reasons for judgment. The court also stood over the proceeding to allow for further orders regarding costs and requested written submissions from the parties on this matter.

In summary, the court's orders included setting aside the service on one party, removing two parties from the proceeding, adding a new respondent, and granting leave to amend various documents. The case was stood over to allow for further orders on costs, with written submissions to be exchanged by the parties before the next hearing.

Orders

Orders of the court

Service on the Second Respondent pursuant to the orders made on 2 October 1997 be set aside.

The Second and Third Respondents cease to be parties to the proceeding.

Glaxo Group Limited be added as a respondent to the proceeding.

The Applicant be granted leave to amend its application and statement of claim in conformity with the foregoing orders and with the Reasons for Judgment of Lindgren J delivered on 31 July 1998.

The Applicant be granted leave to serve on Glaxo Group Limited outside the Commonwealth, and in the United Kingdom:

(a) the Application;

(b) the Amended Statement of Claim; and

The First Respondent be granted leave to amend its defence in conformity with the foregoing orders and with the Reasons for Judgment of Lindgren J delivered on 31 July 1998.

The proceeding be stood over to 7 August 1998 at 9.30 am for the making of orders as to costs.

The parties, by 5.00 pm on 5 August 1998 exchange and supply to the Associate to Lindgren J, written submissions as to costs.

Note:

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

Full text does not contain this section.

Ratio Decidendi

Legal Principle Established

Full text does not contain this section.

IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY	NG 819 of 1997

BETWEEN:	EMORY UNIVERSITY APPLICANT
AND:	BIOCHEM PHARMA INC FIRST RESPONDENT GLAXO WELLCOME PLC SECOND RESPONDENT GLAXO WELLCOME AUSTRALIA LTD THIRD RESPONDENT
JUDGE:		LINDGREN J
DATE OF ORDER:		31 JULY 1998
WHERE MADE:		SYDNEY

IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY	NG 819 of 1997