Eli Lilly & Company v Pfizer Ireland Pharmaceuticals (No 3) [2004] FCA 1085

Eli Lilly & Company v Pfizer Ireland Pharmaceuticals (No 3) [2004] FCA 1085

Leave was granted because there was no reasonable basis to infer deliberate concealment by Eli Lilly, the relevant experiments appeared to have been conducted for United States Patent Office re-examination proceedings rather than the Australian proceeding, the relevant claim construction issue became clear only after Pfizer's 5 April 2004 letter, and although Lilly had not acted with admirable promptness and the evidence still needed to be put in admissible form, Pfizer had not shown insuperable prejudice and vacating the trial date was commonly accepted to be highly undesirable.

Jurisdiction
Australia
Judgment Date
16 August 2004
Procedural Posture
Intellectual Property – Patents / Application for Leave to Rely on Evidence Derived From Experimental Proof; Alternatively, Directions for Further Experiments Pursuant to O 58 R 31 of the Federal Court Rules
Outcome
Leave granted to the applicants/cross-respondents to rely on evidence derived from experimental proof.
Legal Topics
['experimental Proof' 'patent Proceedings' 'leave to Rely on Evidence' 'prejudice' 'federal Court Rules O 58 R 31']
['intellectual Property' 'patents' 'civil Procedure'] ['experimental Proof' 'patent Proceedings' 'leave to Rely on Evidence' 'prejudice' 'federal Court Rules O 58 R 31']

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Procedural Posture

Intellectual Property – Patents / Application for Leave to Rely on Evidence Derived From Experimental Proof; Alternatively, Directions for Further Experiments Pursuant to O 58 R 31 of the Federal Court Rules

Legal Issues

  1. 1 ['Whether the applicants should be granted leave to rely on evidence derived from experimental proof.' 'Whether there was a reasonable basis for inferring a deliberate course of concealment by Eli Lilly.' 'Whether Pfizer would suffer insuperable prejudice if Eli Lilly were permitted to rely on the experimental evidence.']

Ratio Decidendi

Leave was granted because there was no reasonable basis to infer deliberate concealment by Eli Lilly, the relevant experiments appeared to have been conducted for United States Patent Office re-examination proceedings rather than the Australian proceeding, the relevant claim construction issue became clear only after Pfizer's 5 April 2004 letter, and although Lilly had not acted with admirable promptness and the evidence still needed to be put in admissible form, Pfizer had not shown insuperable prejudice and vacating the trial date was commonly accepted to be highly undesirable.

Court Disposition

Leave granted to the applicants/cross-respondents to rely on evidence derived from experimental proof.

Orders

  • ['Leave be granted to the applicants/cross-respondents to rely on affidavits in admissible form substantially in accordance with the declarations of Dr Vincent Florio and Dr Philip Iverson annexed to the notice of motion dated 10 August 2004 as evidence derived from experimental proof of a matter as evidence in this...