Ranbaxy Australia Pty Ltd v Warner-Lambert Co LLC (No 2)

Ranbaxy Australia Pty Ltd brought an action against Warner-Lambert Co LLC alleging invalidity and unenforceability of Australian Letters Patent No 601981 (the "601 Patent") and Australian Letters Patent No 628198 (the "628 Patent"). Warner-Lambert counterclaimed alleging that Ranbaxy’s intended importation and sale of the Ranbaxy Product would infringe claim 6 of the 628 Patent. The court was required to determine the validity of the 601 Patent and the 628 Patent, as well as whether Ranbaxy’s product would infringe the 628 Patent. The court held that the 628 Patent was valid and that Ranbaxy’s product would infringe claim 6 of the 628 Patent. The court also held that the 601 Patent was invalid and revoked it. The court further restrained Ranbaxy from infringing claims 1 to 4 (inclusive), 8 and 9 of the 601 Patent. The court's reasoning was based on the evidence of the expert witnesses and the Agreed Technical Primer prepared by the parties. The court found that the 628 Patent was valid as it related to a new and useful invention, and that Ranbaxy’s product would infringe claim 6 of the 628 Patent as it contained atorvastatin calcium as its active ingredient. The court also found that the 601 Patent was invalid as it lacked novelty and was obvious in view of the prior art. The court revoked the 601 Patent and restrained Ranbaxy from infringing claims 1 to 4 (inclusive), 8 and 9 of that patent.