InterPharma Pty Ltd v Hospira, Inc (No 3)

In the case of InterPharma Pty Ltd v Hospira, Inc (No 3), the Federal Court was asked to grant an interlocutory injunction against InterPharma to prevent it from infringing a patent held by Pfizer. The patent related to the use of dexmedetomidine for sedation in intensive care unit patients. InterPharma argued that the patent was invalid on several grounds, including that it did not involve an inventive step and that it lacked novelty. The court considered the strength of Pfizer’s prima facie case of patent infringement, the existence of triable issues in InterPharma’s invalidity case, and the balance of convenience in favour of granting the injunction.

The court found that Pfizer had shown a strong prima facie case of threatened patent infringement, but InterPharma had raised a clear triable issue under its manner of manufacture ground and under its novelty ground, with respect to the Precedex® Trials Consent Forms. The court considered that the strength of Pfizer’s prima facie case, the balance of convenience, and the fact that Pfizer, by its predecessors in title, had been the sole and continuous distributor of dexmedetomidine in Australia from around 2003 until the commencement of this proceeding, weighed in favour of the grant of interlocutory injunctive relief. The court rejected InterPharma’s contention that errors in Pfizer’s evidence were sufficiently egregious to warrant the discharge of the interim injunction. The court also found that the relative difficulty in assessing Pfizer’s damages on infringement compared with its damages on Pfizer’s undertaking did not justify a radical shift in the balance of convenience and the justice of the case.

The court granted the relief that Pfizer had sought and made several orders, including restraining InterPharma from engaging in certain acts within the patent area without the licence or authority of the Cross-claimants, dismissing InterPharma’s interlocutory application, and fixing the trial of the matter for 2 May 2018, commencing at 10:15 am, with an estimate of 5 days. The court also ordered that the parties each file and serve submissions on costs (limited to 2 pages) setting out the costs orders for which they contend and why, unless within that time they had filed proposed orders as to costs to which they each consent. Any orders as to costs were to be made on the papers and without another oral hearing.