Otsuka Pharmaceutical Co., Ltd v Generic Health Pty Ltd (No 3)
[2013] FCA 689
•12 July 2013
FEDERAL COURT OF AUSTRALIA
Otsuka Pharmaceutical Co., Ltd v Generic Health Pty Ltd (No 3) [2013] FCA 689
Citation: Otsuka Pharmaceutical Co., Ltd v Generic Health Pty Ltd (No 3) [2013] FCA 689 Parties: OTSUKA PHARMACEUTICAL CO., LTD and BRISTOL-MYERS SQUIBB COMPANY v GENERIC HEALTH PTY LTD File number: NSD 121 of 2012 Judge: YATES J Date of judgment: 12 July 2013 Date of hearing: 12 July 2013 Place: Sydney Division: GENERAL DIVISION Category: No catchwords Number of paragraphs: 8 Counsel for the Applicants: Mr P Kerr of Allens Counsel for the Respondent: Mr A Ryan SC with Mr A Fox Solicitor for the Respondent: K&L Gates
IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY
GENERAL DIVISION
NSD 121 of 2012
BETWEEN: OTSUKA PHARMACEUTICAL CO., LTD
First ApplicantBRISTOL-MYERS SQUIBB COMPANY
Second ApplicantAND: GENERIC HEALTH PTY LTD
Respondent
JUDGE:
YATES J
DATE OF ORDER:
12 JULY 2013
WHERE MADE:
SYDNEY
THE COURT ORDERS THAT:
1.The period of time within which the respondent can file affidavit evidence in answer to the affidavit of Jonathon Phillips filed on 13 June 2013 be extended to 11 September 2013.
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 121 of 2012
BETWEEN: OTSUKA PHARMACEUTICAL CO., LTD
First ApplicantBRISTOL-MYERS SQUIBB COMPANY
Second ApplicantAND: GENERIC HEALTH PTY LTD
Respondent
JUDGE:
YATES J
DATE:
12 JULY 2013
PLACE:
SYDNEY
REASONS FOR JUDGMENT
(REVISED FROM TRANSCRIPT)
There is before the Court an interlocutory application filed on 5 July 2013 by the respondent in which it seeks an order that the applicants not be permitted to rely upon the affidavit of Jonathan Phillips, affirmed and filed on 13 June 2013.
The objection by the respondent is that the affidavit is evidence in chief and that the time for filing affidavit evidence in chief has well passed. The applicants, on the other hand, say that the evidence, properly considered, is evidence in reply to an affidavit by Dr O’Dea, which has been filed by the respondent in answer to the applicants’ affidavits filed as evidence in chief.
I do not propose, in these reasons, to go into any detail in relation to the issues raised in the proceeding. Certainly, one factual issue is whether the compound aripiprazole is used in the treatment of cognitive impairment caused by schizophrenia. In putting the issue in that form, I am not seeking to develop the content of claim 7 of the patent known in the proceeding as “the 772 patent”. I merely seek to identify what the factual issue is.
When one reads Dr Phillips’ affidavit in isolation, it looks very much like evidence in chief and not evidence in reply. However, the applicants say that it is truly evidence in reply to Dr O’Dea’s affidavit, taking into account the context provided by an earlier affidavit made by Professor McGorry, which had been filed by the respondent at a much earlier time. One reading of Professor McGorry’s affidavit would indicate agreement with the proposition that aripiprazole is used in the treatment of cognitive impairment caused by schizophrenia. The matter is not entirely clear on the face of the affidavit, but I can see how that part of Professor McGorry’s affidavit could be so read. If it is so read, then it does provide some context in which the present application falls to be considered. The applicants say that, until the receipt of Dr O’Dea’s affidavit, they had proceeded on the basis that there was no factual dispute that aripiprazole is used in the treatment of cognitive impairment caused by schizophrenia. They say that they received some assurance of that position from Professor McGorry’s earlier affidavit.
The applicants say that, if Dr Phillips’ affidavit is not evidence in reply, they would seek leave to rely upon the affidavit as part of their affidavit evidence in chief.
At the present time, I am unable to come to a concluded view as to whether Dr Phillips’ affidavit would stand as evidence in chief or truly evidence in reply. I doubt that I could come to a proper conclusion on that matter without considering all the evidence as it might unfold at trial. I do not think that the matter should be left in any unsatisfactory state. For that reason, I think that the appropriate course must be that I should grant leave to the applicants to rely upon Dr Phillips’ affidavit as part of its affidavit evidence in chief.
In doing so, I am mindful of the respondent’s submission that, in fact, the time for addressing these matters has passed, having regard to the timetable for the filing of affidavit evidence that has been set down by the Court. I am also mindful of the fact that to grant leave now would require an opportunity to be afforded to the respondent to reply, should it so choose, to Dr Phillips’ affidavit. The applicants do not oppose that course. The respondent rightly points out that that will cause a degree of inconvenience of a kind referred to in Ms Owen’s affidavit, which has been read in support of the interlocutory application. That said, I think that, unless I do grant that leave, the parties will be in a state of uncertainty which is undesirable. It seems to me that, notwithstanding the inconvenience that granting leave might occasion, there is no prejudice to the respondent which is countervailing and should deny the granting of leave.
I should point out that, although the preparation of the case for hearing is substantially advanced, the giving of discovery is outstanding. I have been informed today that it is unlikely that the parties would be ready for a hearing this year. I understand that the parties are, in fact, planning for a hearing at the beginning of next year, as soon as that can reasonably be appointed. Therefore, there will be sufficient time for any answering material to be provided by the respondent. It seems that a position has been taken in the respondent’s evidence already, particularly in relation to Dr O’Dea’s affidavit, and it seems that the respondent has a particular reading of Professor McGorry’s affidavit. In the circumstances, it may be that no affidavit evidence in answer to Dr Phillips is necessary. That, however, will be a matter for the respondent to consider.
I certify that the preceding eight (8) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Yates. Associate:
Dated: 17 July 2013
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