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Ranbaxy Australia Pty Ltd v Warner-Lambert Co LLC

Ranbaxy Australia Pty Ltd v Warner-Lambert Co LLC

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FEDERAL COURT OF AUSTRALIA
Ranbaxy Australia Pty Ltd (ACN 110 781 826) v Warner-Lambert Company LLC [2008] FCAFC 82
PATENTS – construction of patent – construction of specification – common general knowledge in relevant field of art – whether patent is restricted to the racemate of a claimed compound or extends to the enantiomers of the compounds individually and mixtures of the enantiomers
PATENTS – revocation of patent – whether patent obtained by false suggestion or misrepresentation – representation in specification – representation in correspondence with Commissioner’s delegate – whether claimed invention is a patentable invention – whether claimed invention is a manner of manufacture within the meaning of the Statute of Monopolies – whether claimed invention is useful
Patents Act 1952 (Cth) s 100
Patents Act 1990 (Cth) ss 3, 7, 18, 138
Statute of Monopolies (21 Jac. 1, c. 3)
Advanced Building Systems Pty Limited v Ramset Fasteners (Aust) Pty Limited (1998) 194 CLR 171 cited
Fawcett v Homan (1896) 13 RPC 398 cited
ICI Chemicals & Polymers Limited v The Lubrizol Corporation Inc (2000) 106 FCR 214 cited
IG Farbenindustrie AG’s Patents, Re (1930) 47 RPC 289 cited
Pfizer Overseas Pharmaceuticals v Ely Lilly & Co (2005) 225 ALR 416 cited
Prestige Group (Australia) Pty Limited v Dart Industries Inc (1990) 95 ALR 533 cited
Rehm Pty Limited v Webster’s Security Systems (International) Pty Limited (1981) 81 ALR 79 cited
Re IG Farbenindustrie AG’s Patents (1930) 47 RPC 289 at 322-3 cited
Synthetic Turf Development Pty Limited v Sports Technology International Pty Limited [2004] FCA 1179 cited
Welcome Real-Time SA v Catuity Inc (2001) 113 FCR 110 cited
WM Wrigley Jr Co v Cadbury Schweppes Pty Limited (2005) 66 IPR 298 cited
RANBAXY AUSTRALIA PTY LTD (ACN 110 871 826) v WARNER-LAMBERT COMPANY LLC
VID90 OF 2007
WARNER-LAMBERT COMPANY LLC v RANBAXY AUSTRALIA PTY LTD
(ACN 110 871 826)
VID93 OF 2007
EMMETT, WEINBERG & BENNETT JJ
28 MAY 2008
MELBOURNE

IN THE FEDERAL COURT OF AUSTRALIA

VICTORIA DISTRICT REGISTRY

VID90 OF 2007

ON APPEAL FROM A SINGLE JUDGE OF THE FEDERAL COURT OF AUSTRALIA

BETWEEN:

RANBAXY AUSTRALIA PTY LTD (ACN 110 871 826)
Appellant

AND:

WARNER-LAMBERT COMPANY LLC
Respondent

JUDGES:

EMMETT, WEINBERG & BENNETT JJ

DATE OF ORDER:

28 MAY 2008

WHERE MADE:

MELBOURNE

THE COURT ORDERS THAT:
1.The appeal be dismissed.

Note:   Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.

IN THE FEDERAL COURT OF AUSTRALIA

VICTORIA DISTRICT REGISTRY

VID93 OF 2007

ON APPEAL FROM A SINGLE JUDGE OF THE FEDERAL COURT OF AUSTRALIA

BETWEEN:

WARNER-LAMBERT COMPANY LLC
Appellant

AND:

RANBAXY AUSTRALIA PTY LTD (ACN 110 871 826)
First Respondent

COMMISSIONER OF PATENTS
Second Respondent

JUDGES:

EMMETT, WEINBERG AND BENNETT JJ

DATE OF ORDER:

28 MAY 2008

WHERE MADE:

MELBOURNE

THE COURT ORDERS THAT:
1.        The appeal be dismissed.
Note:   Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.

TABLE OF CONTENTS

INTRODUCTION........ ........ ........ ........ ........ ........ ........ ........…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [2008] FCAFC 82
Decision Date: 28 MAY 2008

CaseChat Overview and Summary

Ranbaxy Australia Pty Ltd v Warner-Lambert Co LLC involved a dispute between Ranbaxy, a pharmaceutical company, and Warner-Lambert, another pharmaceutical company, over the validity of a patent granted to Warner-Lambert. The case was heard in the High Court of Australia. The central issue in this case was whether Warner-Lambert's patent for a specific enantiomer of a pharmaceutical compound was valid, given that Ranbaxy argued that the patent was not novel over an earlier patent held by Warner-Lambert for a broader composition. The court also needed to determine whether the invention claimed in Warner-Lambert's patent constituted a 'manner of manufacture' under the relevant Australian legislation.

The court examined the claims of the patents and found that the broader patent issued to Warner-Lambert encompassed various forms of the compound, including specific enantiomers and mixtures. The court concluded that the claims in Warner-Lambert's enantiomer patent were not false suggestions and misrepresentations as Ranbaxy had argued, and therefore, there was no basis to invalidate the patent on those grounds. Consequently, the court did not need to address the issue of whether the enantiomer patent met the statutory requirement of being a 'manner of manufacture'. Based on these findings, the court dismissed both appeals, with no order as to costs due to the equitable distribution of outcomes between the parties.

The court's decision upheld the validity of Warner-Lambert's patent, ensuring that Ranbaxy could not challenge the exclusivity of Warner-Lambert's enantiomer-specific pharmaceutical compound. This ruling had implications for patent law in Australia, particularly in how specific enantiomers are treated in relation to broader chemical compositions and the criteria for patentability under the Statute of Monopolies.

Orders

Orders of the court

1. The appeal be dismissed.

Background

Background to the litigation

Full text does not contain this section.

Evidence

Evidence Before The Court

Full text does not contain this section.

Decision

Reasons for decision

Having regard to the conclusion expressed above concerning the construction of the Broader Patent, as including the R enantiomer, the S enantiomer and unequal mixtures of the R enantiomer and the S enantiomer, as well as the racemate, it may have been possible to argue that the invention of the Enantiomer Patent is not novel, in the light of the Broader Patent. That, however, was not at issue in this appeal and we express no view about it. A relevant issue for the Full Court is whether the so-called invention of the Enantiomer Patent constituted a manner of manufacture within s 6 of the Statute of Monopolies, however, in the light of the conclusion reached above concerning false suggestion and misrepresentation, it is unnecessary to determine whether the claimed invention of the Enantiomer Patent satisfies the requirement of the 1990 Act and the 1952 Act that it be a manner of manufacture within the meaning of the Statute of Monopolies. CONCLUSION It follows from the above conclusions that both appeals should be dismissed. Since each appeal appears to have involved much the same time and effort and both parties have had much the same degree of success and failure, there should be no order as to the costs of either of the appeals.

Ratio Decidendi

Legal Principle Established

Full text does not contain this section.

IN THE FEDERAL COURT OF AUSTRALIA
VICTORIA DISTRICT REGISTRY	VID90 OF 2007

JUDGES:	EMMETT, WEINBERG & BENNETT JJ
DATE OF ORDER:	28 MAY 2008
WHERE MADE:	MELBOURNE

IN THE FEDERAL COURT OF AUSTRALIA
VICTORIA DISTRICT REGISTRY	VID93 OF 2007

JUDGES:	EMMETT, WEINBERG AND BENNETT JJ
DATE OF ORDER:	28 MAY 2008
WHERE MADE:	MELBOURNE