Novartis AG v Pharmacor Pty Limited

The matter in question was between Novartis AG and Pharmacor Pty Limited, proceeding in the Federal Court of Australia. The dispute concerned an alleged infringement of a patent held by Novartis, which relates to a pharmaceutical composition comprising valsartan, a neutral endopeptidase inhibitor, and a pharmaceutically acceptable carrier. The core legal issues revolved around whether the patent disclosed the best method of performing the invention, and the scope of the patent as it pertains to the specific pharmaceutical composition in question.

The court was tasked with resolving the scope of discovery in the case, specifically focusing on documents that recorded or evidenced the description and evaluation of the pharmaceutical composition in question. The court found that the discovery sought by Pharmacor was within the scope of the patent dispute and was relevant to the issues at hand. The court determined that Novartis was required to conduct a reasonable search and produce documents within the specified category, excluding any duplicates and allowing for the exclusion or redaction of privileged documents. The court reserved the issue of costs incidental to the interlocutory application for later determination.

The court issued detailed orders for the discovery process, including deadlines for the production of a verified list of documents and electronic copies, as well as timelines for the exchange of affidavit evidence and submissions on the separate question application. The court also set deadlines for the filing of affidavit evidence in chief and in reply, and established a schedule for a joint expert conclave to prepare a joint expert report on the issue of inventive step. The orders aimed to ensure that the proceedings were managed efficiently and that all relevant evidence was properly disclosed and evaluated.