CSL Limited v Novo Nordisk Pharmaceuticals Pty Ltd (No 2) [2010] FCA 1251

CSL Limited v Novo Nordisk Pharmaceuticals Pty Ltd (No 2) [2010] FCA 1251

The applicants were on notice from foreign prosecution and opposition history, especially the European opposition and Canadian amendment, that D1 and D2 raised serious and apparently legitimate validity issues concerning claims comparable to the Australian claims. They did not obtain professional advice about amending the Australian patent, delayed until November 2009, and in March 2009 commenced infringement proceedings on the unamended patent. That delay and the decision to sue on the unamended claims constituted sufficient discretionary reasons to refuse the substantive amendments to claims 1 and 7, despite the absence of demonstrated prejudice to the respondents. The uncontested...

Jurisdiction
Australia
Judgment Date
18 November 2010
Procedural Posture
Patent Infringement Proceeding With a Respondents' Cross Claim for Invalidity and Revocation, and a Patentees' Notice of Motion to Amend Under S 105 of the Patents Act 1990 (cth). / Separate Hearing of the Applicants' S 105 Amendment Application Before All Other Issues in the Proceeding.
Outcome
The motion was granted only to correct the typographical error in claim 3; the proposed substantive amendments to claims 1 and 7 were refused.
Legal Topics
['amendment of Patent in Infringement Proceedings' 'discretion Under S 105 of the Patents Act 1990 (cth)' 'delay in Seeking Amendment' 'foreign Patent Prosecution and Opposition History' 'novelty and Inventive Step Objections' 'public Interest in Timely Patent Amendment']
['intellectual Property' 'patents'] ['amendment of Patent in Infringement Proceedings' 'discretion Under S 105 of the Patents Act 1990 (cth)' 'delay in Seeking Amendment' 'foreign Patent Prosecution and Opposition History' 'novelty and Inventive Step Objections' 'public Interest in Timely Patent Amendment']

Case Brief

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Procedural Posture

Patent Infringement Proceeding With a Respondents' Cross Claim for Invalidity and Revocation, and a Patentees' Notice of Motion to Amend Under S 105 of the Patents Act 1990 (cth). / Separate Hearing of the Applicants' S 105 Amendment Application Before All Other Issues in the Proceeding.

Legal Issues

  1. 1 ['Whether the proposed amendments to claims 1 and 7 of Australian Patent No 716,747 should be allowed under s 105 of the Patents Act 1990 (Cth).' 'Whether the applicants delayed unreasonably in seeking amendment after prior art objections and amendments in foreign jurisdictions.' 'Whether the applicants took unfair advantage of the unamended patent by commencing infringement proceedings before seeking amendment.' 'Whether the uncontested amendment to correct a typographical error in claim 3 should be allowed.']

Ratio Decidendi

The applicants were on notice from foreign prosecution and opposition history, especially the European opposition and Canadian amendment, that D1 and D2 raised serious and apparently legitimate validity issues concerning claims comparable to the Australian claims. They did not obtain professional advice about amending the Australian patent, delayed until November 2009, and in March 2009 commenced infringement proceedings on the unamended patent. That delay and the decision to sue on the unamended claims constituted sufficient discretionary reasons to refuse the substantive amendments to claims 1 and 7, despite the absence of demonstrated prejudice to the respondents. The uncontested...

Court Disposition

The motion was granted only to correct the typographical error in claim 3; the proposed substantive amendments to claims 1 and 7 were refused.

Orders

  • ['Pursuant to s 105(1) of the Patents Act 1990 (Cth), claim 3 of the complete specification of Australian Patent No 716,747 entitled "Stabilised growth hormone formulation and method of preparation thereof" be amended by substituting "0.01" for "0.1" immediately following the word "comprises" in that claim.' "Save...