GlaxoSmithKline Australia Pty Ltd v Reckitt Benckiser Healthcare (UK) Ltd

GlaxoSmithKline Australia Pty Ltd (GSK) appealed against an interlocutory judgment and orders made by Bromberg J of the Federal Court of Australia (primary judge). Reckitt Benckiser Healthcare (UK) Ltd (Reckitt) had initiated proceedings against GSK, alleging that GSK's supply of Children’s Panadol 1-5 years infringed Reckitt’s patent. Reckitt sought interlocutory injunctive relief, which the primary judge granted. GSK subsequently applied for leave to appeal from the interlocutory judgment and orders, and from the decision of the primary judge to exclude certain evidence. The Full Court of the Federal Court considered the application for leave to appeal.

The legal issues the court had to decide included whether the primary judge correctly precluded GSK from arguing that the patent claims were invalid for lack of fair basis, whether the primary judge properly construed the patent in finding a prima facie case of infringement, and whether leave to appeal should be granted. The court also considered whether the primary judge correctly excluded certain evidence, whether the primary judge was correct to confine the parties to their evidence led at a prior hearing concerning a different apparatus, and the principles relevant to the grant of an interlocutory injunction.

The Full Court found that there were two aspects of the primary judgment which were attended by sufficient doubt to warrant reconsideration by the Full Court. These related to the primary judge’s construction of claim 1 of the Patent and the evidentiary basis upon which his Honour assessed the issue of balance of convenience. The Full Court concluded that there were sufficient grounds to grant leave to appeal, and that substantial injustice would result if leave were refused. The interlocutory injunction granted on 17 July 2013 was discharged, and the appeal was allowed.

The final orders of the court were as follows: 1) GSK has leave to appeal from the interlocutory judgment given on 17 July 2013 and the orders made by the primary judge on 8 and 17 July 2013; 2) the draft notice of appeal filed on 22 July 2013 stands as the appellant’s notice of appeal; 3) the appeal is allowed; 4) the interlocutory injunction granted on 17 July 2013 is immediately discharged; 5) paragraphs 1(b) and (c) of the orders made on 8 July 2013 are set aside; 6) the respondents pay the appellant’s costs of and incidental to the application for leave to appeal and the appeal; and 7) the proceedings are to be listed for directions before the docket judge as soon as practicable.