Actavis Pty Ltd v Orion Corporation (No 2) [2016] FCAFC 159

Actavis Pty Ltd v Orion Corporation (No 2) [2016] FCAFC 159

The respondents were overall successful on the appeal because the major construction and fair basis issues were resolved in their favour and the patent remained valid and infringed as to claims 19 to 22, while the appellants' successful issues concerning claims 17 and 18 and Novartis Australia's standing were relatively limited. The proper balance was therefore to vary the first instance orders to remove claims 17 and 18 and to reflect Novartis Australia's lack of standing, order the appellants to pay 80% of the respondents' appeal costs, and reduce the first instance costs payable to 60%.

Jurisdiction
Australia
Judgment Date
23 November 2016
Procedural Posture
Appeal Concerning Patent Infringement Orders and Costs / Determined on the Papers After the Appeal Succeeded in Part
Outcome
Appeal allowed in part; first instance orders varied or set aside in part; costs apportioned.
Legal Topics
['apportionment of Costs Where Appeal Succeeds in Part' 'variation of Patent Infringement Declarations and Injunctions' 'standing to Sue for Patent Infringement' 'threatened Infringement of Australian Patent No. 765932']
['intellectual Property' 'patents' 'costs' 'civil Procedure'] ['apportionment of Costs Where Appeal Succeeds in Part' 'variation of Patent Infringement Declarations and Injunctions' 'standing to Sue for Patent Infringement' 'threatened Infringement of Australian Patent No. 765932']

Case Brief

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Procedural Posture

Appeal Concerning Patent Infringement Orders and Costs / Determined on the Papers After the Appeal Succeeded in Part

Legal Issues

  1. 1 ["What orders should be made to give effect to the Court's reasons allowing the appeal in part." 'What order should be made for the costs of the appeal.' 'What order should be made for the costs of the proceeding below after findings that claims 17 and 18 were not infringed and Novartis Australia lacked standing to sue for infringement.']

Ratio Decidendi

The respondents were overall successful on the appeal because the major construction and fair basis issues were resolved in their favour and the patent remained valid and infringed as to claims 19 to 22, while the appellants' successful issues concerning claims 17 and 18 and Novartis Australia's standing were relatively limited. The proper balance was therefore to vary the first instance orders to remove claims 17 and 18 and to reflect Novartis Australia's lack of standing, order the appellants to pay 80% of the respondents' appeal costs, and reduce the first instance costs payable to 60%.

Court Disposition

Appeal allowed in part; first instance orders varied or set aside in part; costs apportioned.

Orders

  • ['The appeal be allowed in part.' 'The orders made on 16 September 2015 in NSD 2456 of 2013 be varied by deleting references to claims 17 and 18 from the declaration, injunction and Attachment A, so that relief concerns claims 19, 20, 21 and 22 insofar as dependent on claims 19 to 21 of Australian Patent No....