Orion Corporation v Actavis Pty Ltd (No 2)

[2015] FCA 1026

FEDERAL COURT OF AUSTRALIA

Orion Corporation v Actavis Pty Ltd (No 2)

[2015] FCA 1026

Citation:	Orion Corporation v Actavis Pty Ltd (No 2) [2015] FCA 1026
Parties:	ORION CORPORATION AND OTHERS AS NAMED IN THE SCHEDULE v ACTAVIS PTY LTD ACN 003 854 626 AND ANOTHER AS NAMED IN THE SCHEDULE;  ACTAVIS PTY LTD ACN 003 854 626 AND ANOTHER AS NAMED IN THE SCHEDULE; ORION CORPORATION AND OTHERS AS NAMED IN THE SCHEDULE
File number:	NSD 2456 of 2013
Judge:	RARES J
Date of judgment:	16 September 2015
Cases cited:	Minnesota Mining and Manufacturing Co v Beiersdorf (Australia) Ltd (1980) 144 CLR 253 Olin Corporation v Super Cartridge Co Pty Ltd (1977) 180 CLR 236 Orion Corporation v Actavis Pty Ltd [2015] FCA 909
Date of hearing:	7 April 2015-17 April 2015
Date of last submissions:	24 August 2015
Place:	Sydney (via video link to Perth)
Division:	GENERAL DIVISION
Category:	No catchwords
Number of paragraphs:	3
Counsel for the Applicants/Cross-Respondents:	Mr C Dimitriadis SC with Mr C Burgess
Solicitor for the Applicants/Cross-Respondents:	Clayton Utz
Counsel for the Respondents/Cross-Claimants:	Mr SCG Burley SC with Mr JS Cooke and Mr D Larish
Solicitor for the Respondents/Cross Claimants:	Ashurst

IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY
GENERAL DIVISION	NSD 2456 of 2013

BETWEEN:

ORION CORPORATION AND OTHERS AS NAMED IN THE SCHEDULE
Applicant

ACTAVIS PTY LTD ACN 003 854 626 AND ANOTHER AS NAMED IN THE SCHEDULE
Cross-Claimants

AND:

ACTAVIS PTY LTD ACN 003 854 626 AND ANOTHER AS NAMED IN THE SCHEDULE
Respondent

ORION CORPORATION AND OTHERS AS NAMED IN THE SCHEDULE
Cross-Respondents

JUDGE:	RARES J
DATE OF ORDER:	16 SEPTEMBER 2015
WHERE MADE:	SYDNEY (VIA VIDEO LINK TO PERTH)

THE COURT ORDERS THAT:

1.Until further order and except as provided in order 2, publication or other disclosure of the confidential annexure to the reasons for judgment of Justice Rares delivered on 16 September 2015 (the confidential annexure) and any information contained within the confidential annexure is prohibited.

2.Publication or other disclosure of the confidential annexure and information contained in it may be made to:

(a)persons authorised by the respondents/cross claimants;

(b)the external legal representatives, internal legal representatives, external patent attorneys and internal patent attorneys of the applicants/cross respondents who have signed a confidentiality undertaking in respect of documents designated by the respondents as confidential which were provided to Clayton Utz on 6 November 2013.

THE COURT NOTES THAT:

3.The ground for orders 1 and 2 is that they are necessary to prevent prejudice to the proper administration of justice.

Note:    Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.

IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY
GENERAL DIVISION	NSD 2456 of 2013

BETWEEN:

ORION CORPORATION AND OTHERS AS NAMED IN THE SCHEDULE
Applicant

ACTAVIS PTY LTD ACN 003 854 626 AND ANOTHER AS NAMED IN THE SCHEDULE
Cross-Claimants

AND:

ACTAVIS PTY LTD ACN 003 854 626 AND ANOTHER AS NAMED IN THE SCHEDULE
Respondent

ORION CORPORATION AND OTHERS AS NAMED IN THE SCHEDULE
Cross-Respondents

JUDGE:	RARES J
DATE:	16 SEPTEMBER 2015
PLACE:	SYDNEY (VIA VIDEO LINK TO PERTH)

REASONS FOR JUDGMENT

1. Following the publication of my reasons on the substantive issues on 21 August 2015 (Orion Corporation v Actavis Pty Ltd [2015] FCA 909), Actavis requested that I provide detailed confidential reasons for my conclusion that it had infringed claim 17 of the patent. I had invited any party to make such a request in my reasons at [136].

2. I found that the method the subject of claim 17 does not involve an integer requiring the absence of the distinguishing aspect on which Actavis had relied to negate a finding of infringement.  I concluded that the additional integers in Actavis’ method do not make a new working of the combination of integers in claim 17 so as to make it non-infringing (see [136], [146]-[147]).

3. I will annex to these reasons a confidential set of reasons for these conclusions, so as to continue the protection of the trade secret the subject of Actavis’ method.

I certify that the preceding three (3) numbered paragraph is a true copy of the Reasons for Judgment herein of the Honourable Justice Rares.

Associate:

Dated:       16 September 2015

SCHEDULE

NSD 2456 of 2013

BETWEEN: 

ORION CORPORATION
First Applicant

NOVARTIS PHARMA AG
Second Applicant

NOVARTIS PHARMACEUTICALS (AUSTRALIA) PTY LTD ACN 004 244 160
Third Applicant

ACTAVIS PTY LTD ACN 003 854 626
First Cross-Claimant

MEDIS PHARMA PTY LTD ACN 109 225 747
Second Cross-Claimant

AND:

ACTAVIS PTY LTD ACN 003 854 626
First Respondent

MEDIS PHARMA PTY LTD ACN 109 225 747
Second Respondent

ORION CORPORATION
First Cross-Respondent

NOVARTIS PHARMA AG
Second Cross-Respondent

NOVARTIS PHARMACEUTICALS (AUSTRALIA) PTY LTD ACN 004 244 160
Third Cross-Respondent