Neurim Pharmaceuticals (1991) Ltd v Generic Partners Pty Ltd (No 4) [2020] FCA 1776

Neurim Pharmaceuticals (1991) Ltd v Generic Partners Pty Ltd (No 4) [2020] FCA 1776

The applicant is permitted to amend its statement of claim to reformulate its claim for additional damages under s 122(1A) of the Patents Act 1990 (Cth), but only to the extent the claim is based on benefits alleged to have accrued to the respondents as a result of the alleged infringements, and excluding matters that are not reasonably capable of justifying an award of additional damages (such as non-arm's length transactions or mere timing of product launch where no knowledge or recklessness is alleged).

Parties
Applicant/cross Respondent: Neurim Pharmaceuticals (1991) Ltd; First Respondent/cross Claimant: Generic Partners Pty Ltd (ACN 132 833 777); Second Respondent/cross Claimant: Apotex Pty Ltd (ACN 096 916 148)
Jurisdiction
Australia
Judgment Date
11 December 2020
Procedural Posture
Patent Infringement and Amendment Application / Interlocutory; Application for Leave to Amend Statement of Claim
Outcome
Application to amend statement of claim allowed in part; applicant directed to file and serve draft further amended statement of claim deleting previous paragraph 45 and including new paragraph 45A consistent with the judgment.
Legal Topics
Infringement Proceedings, Relief (damages), Additional Damages Under Patents Act S 122(1 A), Amendment of Pleadings
Intellectual Property Patents Infringement Proceedings Relief (damages) Additional Damages Under Patents Act S 122(1 A) Amendment of Pleadings

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Parties

Neurim Pharmaceuticals (1991) Ltd

Applicant/cross Respondent

Generic Partners Pty Ltd (ACN 132 833 777)

First Respondent/cross Claimant

Apotex Pty Ltd (ACN 096 916 148)

Second Respondent/cross Claimant

Procedural Posture

Patent Infringement and Amendment Application / Interlocutory; Application for Leave to Amend Statement of Claim

Legal Issues

  1. 1 Whether the applicant should be permitted to amend its statement of claim to reformulate a claim for additional damages under s 122(1A) of the Patents Act 1990 (Cth)
  2. 2 Whether the matters proposed to be relied upon by the applicant are reasonably capable of warranting an award of additional damages under s 122(1A)
  3. 3 Relevance of benefits alleged to have accrued to respondents as a result of the alleged infringements

Ratio Decidendi

The applicant is permitted to amend its statement of claim to reformulate its claim for additional damages under s 122(1A) of the Patents Act 1990 (Cth), but only to the extent the claim is based on benefits alleged to have accrued to the respondents as a result of the alleged infringements, and excluding matters that are not reasonably capable of justifying an award of additional damages (such as non-arm's length transactions or mere timing of product launch where no knowledge or recklessness is alleged).

Court Disposition

Application to amend statement of claim allowed in part; applicant directed to file and serve draft further amended statement of claim deleting previous paragraph 45 and including new paragraph 45A consistent with the judgment.

Orders

  • Within 7 days the applicant is to file and serve a draft further amended statement of claim that deletes paragraph 45 and includes a new paragraph 45A which confines the claim for additional damages to one based on benefits alleged to have accrued to the respondents because of the respondents' alleged patent...
  • All questions concerning costs of the applicant's application for leave to amend the amended statement of claim be reserved.