FEDERAL COURT OF AUSTRALIA
Gilead Sciences Pty Ltd v Idenix Pharmaceuticals LLC (No 2) [2016] FCA 406
File number(s): NSD 48 of 2013 Judge(s): JAGOT J Date of judgment: 14 April 2016 Catchwords: COSTS – discrete issues of invalidity of patent – applicant successful in certain issues – proportional costs order Legislation: Patents Act 1990 (Cth) Cases cited: Firebird Global Master Fund II Ltd v Republic of Nauru (No 2) (2015) ALR 192; [2015] HCA 53
Gilead Sciences Pty Ltd v Idenix Pharmaceuticals LLC [2016] FCA 169
Date of hearing: 14 April 2016 Registry: New South Wales Division: General Division National Practice Area: Intellectual Property Sub-area: Patents and associated Statutes Category: Catchwords Number of paragraphs: 18 Counsel for the Applicant: Mr DK Catterns QC and Mr NR Murray Solicitor for the Applicant: Herbert Smith Freehills Counsel for the Respondents: Mr AJL Bannon SC and Mr PW Flynn Solicitor for the Respondents: Jones Day ORDERS
NSD 48 of 2013 BETWEEN: GILEAD SCIENCES PTY LTD (ACN 072 611 708)
Applicant
AND: IDENIX PHARMACEUTICALS LLC
First Respondent
UNIVERSITA DEGLI STUDI DI GAGLIARI
Second Respondent
CENTRE NATIONAL DE LA RECHERCHE SCIENTIFIQUE (and another named in the Schedule)
Third Respondent
AND BETWEEN: IDENIX (CAYMAN) LIMITED (and others named in the Schedule)
First Cross-Claimant
AND: GILEAD SCIENCES PTY LTD (ACN 072 611 708) (and another named in the Schedule)
First Cross-Respondent
JUDGE:
JAGOT J
DATE OF ORDER:
14 APRIL 2016
THE COURT DECLARES THAT:
1.Claims 7 to 41 (inclusive) of Australian Patent No. 2003247084 (the Patent) are and at all material times have been invalid.
THE COURT ORDERS THAT:
2.Subject to Order 3 below, claims 7 to 41 (inclusive) of the Patent be revoked.
3.Upon the undertakings referred to in paragraph 9 below, Order 2 above be stayed:
(a)initially for a period of 21 days from the date on which these Orders are pronounced; and
(b)if an appeal is lodged within that period, until the final determination of that appeal or further order.
4.Paragraphs 1 and 2 of the Amended Notice of Cross-Claim dated 26 June 2013 be dismissed.
5.Subject to any costs orders previously made by the Court in this proceeding and order 6 and 8 below, the respondents/cross-claimants pay 80% of the applicant’s costs of the Application as agreed or taxed.
6.The costs of the application referred to in order 5 above shall not include the applicant’s costs in relation to:
(a)the applicant’s abandoned claims for lack of entitlement set out in particulars b and c to paragraph 1 of the Amended Particulars of Invalidity dated 9 August 2013;
(b)the affidavit of Janet Lucille Werner affirmed 4 June 2014;
(c)the affidavit of Shaun Daniel McVicar sworn 4 June 2014; and
(d)the applicant’s interlocutory application dated 21 July 2014.
7.Subject to order 8 below, the applicant pay the respondents/cross-claimants’ costs:
(a)thrown away as a result of the applicant’s abandoned claims for lack of entitlement set out in particulars b and c to paragraph…
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- Case
- [2016] FCA 406
- Decision Date
CaseChat Overview and Summary
The Court examined the claims in question and found that certain claims were invalid due to issues of entitlement, leading to the revocation of claims 7 to 41. The Court also dismissed the cross-claims brought forth by Idenix. In terms of costs, the Court considered the proportional costs order, which took into account the applicant's success in some issues but not others. The Court ordered that Idenix pay 80% of Gilead's costs, excluding specific costs related to abandoned claims and certain affidavits. Conversely, Gilead was ordered to pay Idenix for costs incurred due to abandoned claims and an interlocutory application.
The Court’s reasoning was grounded in the principle of proportionality, ensuring that costs reflected the actual outcomes of the litigation. The orders were made subject to undertakings by Idenix to expedite any appeals and to comply with certain conditions during the stay period, including not threatening infringement proceedings during the stay and refraining from amending patent claims outside the proceedings. The final orders included specific provisions for the stay of revocation and costs orders pending the outcome of any appeal.
Orders
Orders of the court
2. Subject to Order 3 below, claims 7 to 41 (inclusive) of the Patent be revoked.
3. Upon the undertakings referred to in paragraph 9 below, Order 2 above be stayed:
(a) initially for a period of 21 days from the date on which these Orders are pronounced; and
(b) if an appeal is lodged within that period, until the final determination of that appeal or further order.
4. Paragraphs 1 and 2 of the Amended Notice of Cross-Claim dated 26 June 2013 be dismissed.
5. Subject to any costs orders previously made by the Court in this proceeding and order 6 and 8 below, the respondents/cross-claimants pay 80% of the applicant’s costs of the Application as agreed or taxed.
6. The costs of the application referred to in order 5 above shall not include the applicant’s costs in relation to:
(a) the applicant’s abandoned claims for lack of entitlement set out in particulars b and c to paragraph 1 of the Amended Particulars of Invalidity dated 9 August 2013;
(b) the affidavit of Janet Lucille Werner affirmed 4 June 2014;
(c) the affidavit of Shaun Daniel McVicar sworn 4 June 2014; and
(d) the applicant’s interlocutory application dated 21 July 2014.
7. Subject to order 8 below, the applicant pay the respondents/cross-claimants’ costs:
(a) thrown away as a result of the applicant’s abandoned claims for lack of entitlement set out in particulars b and c to paragraph 1 of the Amended Particulars of Invalidity dated 9 August 2013; and
(b) in relation to the applicant’s interlocutory application dated 21 July 2014.
8. Upon the undertakings referred to in paragraph 9 below, all costs orders made by the Court in this proceeding (including order 5 and 7 above) be stayed:
(a) initially for a period of 21 days from the date on which these orders are pronounced; and
(b) if an appeal is lodged within that period, until the final determination of that appeal or further order.
THE COURT NOTES THAT:
9. The respondent/cross-claimants undertake to the Court:
(a) to prosecute any appeal expeditiously; and
(b) unless an appeal is filed by the respondents/cross-claimants against these orders, forthwith upon the expiry of 21 days after the date of these orders, to serve on the Commissioner of Patents a copy of these orders pursuant to s 140 of the Patents Act 1990 (Cth) with a request that particulars of orders 1 and 2 be registered in accordance with s 187 of that Act;
(c) during the period of the stay not to threaten any person with proceedings for infringement of claims 7 to 41 of the Patent (for the avoidance of doubt, the respondents/cross-claimants do not undertake not to seek relief in respect of infringements occurring during that period of the stay should these claims ultimately be held to be valid); and
(d) during the period of the stay not to seek to amend any claims of the Patent otherwise than in the course of or in connection with these proceedings,
however for the avoidance of doubt, these undertakings shall not prevent the respondents/cross-claimants from:
(e) giving notice of any person of these orders; or
(f) giving notice to any person of the filing of any appeal against these orders, the time for hearing of that appeal and the outcome on appeal.
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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