Interpharma (NZ) Limited v Commissioner of Patents HC Auckland CIV-2010-485-000506

[2011] NZHC 1541

IN THE HIGH COURT OF NEW ZEALAND AUCKLAND REGISTRY

CIV-2010-485-000506

BETWEEN  INTERPHARMA (NZ) LIMITED Plaintiff

ANDCOMMISSIONER OF PATENTS First Defendant

ANDAVENTIS PHARMA SA Second Defendant

ANDSANOFI-AVENTIS NEW ZEALAND LIMITED

Third Defendant

Hearing:         On the papers

Judgment:      11 November 2011 at 4:15 PM

JUDGMENT OF COURTNEY J

This judgment was delivered by Justice Courtney on 11 November 2011 at 4:15 pm

pursuant to R 11.5 of the High Court Rules.

Registrar / Deputy Registrar

Date………………………..

Solicitors:           Kensington Swan, Private Bag 92101 Victoria Street West, Auckland 1142

Fax: [phone] – S Wheeldon

Crown Law, P O Box 2858, Wellington 6140
Fax: [phone] – U Jagose / A Williams
A J Park Law, P O Box 949, Wellington 6140

Fax: [phone] – G Arthur

Counsel:             A H Brown QC, P O Box 2815 Shortland Street, Auckland 1140

Fax: [phone]

B W F Brown QC, P O Box 5161 Lambton Quay, Wellington 6015

Fax: [phone]

INTERPHARMA (NZ) LTD V COMMISSIONER OF PATENTS HC AK CIV-2010-485-000506 11 November

2011

[1]      In my decision of 7 October 2011 I granted InterPharma’s application for an order   quashing   the   Commissioner’s   decision   to   allow   amendments   to   the specification of the patent held by Aventis.   InterPharma now seeks costs against Aventis.

[2]      The major issue between the parties is whether the proceeding ought to be classified as Category 3. InterPharma accepts Aventis’ point that some interlocutory steps were determined on a 2B basis and does not seek to re-visit those matters but otherwise seeks costs on a 3C basis.

[3]      InterPharma   points   to   several   factors   as   supporting   a   Category   3 classification.  First, it says that the issues in the proceeding were significant to both parties, with the dollar amount at issue in the associated infringement proceeding being very substantial. Aventis did not accept this; allowing for the fact that all such matters were of some significance to the parties, it claimed that this proceeding was essentially commercial litigation of no particular significance. It was, however, evident that the parties did regard this proceeding as significant.  It clearly affected both their rights in the market in terms of their respective products and their dealings with Pharmac in relation to those products and would have a significant impact on the associated infringement proceedings.

[4]     The second factor identified by InterPharma is the complexity of the proceedings, with its counsel describing the proceedings as involving “the unusual combination of the application of judicial review principles to the operation of the Patents Act”. Aventis rejected this characterisation, viewing it as “a standard judicial review proceeding involving issues of statutory interpretation, consideration of whether the Commissioner of Patents had properly exercised his statutory powers and patent claim interpretation”.  I accept that because of the interface between the judicial review application and the application of the Patents Act 1953 there was a complexity inherent in this proceeding that is absent in many typical judicial review applications.   There was, in particular, the question whether judicial review was available in this context.  The fact that this point had not previously been considered in New Zealand and was the subject of uncertain and conflicting authority overseas did lend a complexity to the proceeding not commonly found.  This was indicated by

the fact that both InterPharma and Aventis were represented by senior counsel and the rather longer than usual analysis of the legal position that was required.

[5]      InterPharma also submitted that the judicial review proceeding involved a degree of public interest in the sense that it was significant for the development of New Zealand law relating to patent amendments and the justiciability of decisions of the Commissioner of Patents. This, too, I accept.

[6]      I consider that the proceedings in the form they fell to be considered are properly classified as Category 3.   For the same reasons, I accept that Band C is appropriate in terms of the time spent and that second counsel (on both sides) was appropriate.

[7]      I accept the costs calculation set out in InterPharma’s schedule attached to its

memorandum for November 2011 which produces a final costs figure of $62,345.50.

[8]      I also accept InterPharma’s claim for disbursements of $8,319.69.   These include 50% of the cost of expert witnesses Professor Tucker and Dr Parker, and these are resisted by Aventis on the basis that parties had agreed that some of their evidence going to construction of the patent claims would not be relied on. As a result, redacted copies of the witnesses’ affidavits were filed.  InterPharma, however, responds that, given the redacted version of their evidence was before the Court in the judicial review proceedings it is appropriate for the claim of 50% of their fees to be advanced and I accept that.

[9]      There will be an order for costs against the second and third defendants for

$62,345.50 and disbursements of $8,319.69.

[10]     InterPharma does not claim costs against the Commissioner and I make no order in that regard.

P Courtney J