GlaxoSmithKline Consumer Healthcare Investments (Ireland) (No.2) Limited v Apotex Pty Ltd [2014] FCA 1398

GlaxoSmithKline Consumer Healthcare Investments (Ireland) (No.2) Limited v Apotex Pty Ltd [2014] FCA 1398

The applicants have a strong prima facie case on infringement, and no ground of patent invalidity advanced by the respondents amounts to a strong prima facie case. The balance of convenience favours maintaining the current restraints (undertakings or their equivalent as injunctions) due to the applicants' established market position, threat of significant market loss, and difficulties in quantification of harm. The applications to be released from undertakings are therefore dismissed.

Parties
First Applicant/cross Respondent: GlaxoSmithKline Consumer Healthcare Investments (Ireland) (No.2) Limited; Second Applicant/cross Respondent: GlaxoSmithKline Australia Pty Ltd (ACN 100 162 481); Respondent/cross Claimant: Apotex Pty Ltd (ACN 096 916 148); Respondent/cross Claimant: Generic Partners Pty Ltd (ACN 132 833 777)
Jurisdiction
Australia
Judgment Date
16 December 2014
Procedural Posture
Interlocutory Application in Patent Infringement Action / Application for Release From Undertakings/interlocutory Injunctions
Outcome
Applications for release from undertakings/interlocutory relief dismissed; undertakings/constraints maintained
Legal Topics
Interlocutory Injunctions, Patent Infringement, Patent Validity, Practice and Procedure
Intellectual Property Law Patents Civil Procedure Interlocutory Injunctions Patent Infringement Patent Validity Practice and Procedure

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Parties

GlaxoSmithKline Consumer Healthcare Investments (Ireland) (No.2) Limited

First Applicant/cross Respondent

GlaxoSmithKline Australia Pty Ltd (ACN 100 162 481)

Second Applicant/cross Respondent

Apotex Pty Ltd (ACN 096 916 148)

Respondent/cross Claimant

Generic Partners Pty Ltd (ACN 132 833 777)

Respondent/cross Claimant

Procedural Posture

Interlocutory Application in Patent Infringement Action / Application for Release From Undertakings/interlocutory Injunctions

Legal Issues

  1. 1 Whether applicants should be released from undertakings restraining supply of generic products alleged to infringe patent
  2. 2 Whether interlocutory injunctions restraining respondents should remain pending trial
  3. 3 Strength of prima facie case for infringement and invalidity grounds

Ratio Decidendi

The applicants have a strong prima facie case on infringement, and no ground of patent invalidity advanced by the respondents amounts to a strong prima facie case. The balance of convenience favours maintaining the current restraints (undertakings or their equivalent as injunctions) due to the applicants' established market position, threat of significant market loss, and difficulties in quantification of harm. The applications to be released from undertakings are therefore dismissed.

Court Disposition

Applications for release from undertakings/interlocutory relief dismissed; undertakings/constraints maintained

Orders

  • Respondent's interlocutory applications dated 5 December 2014 in both proceedings be dismissed.
  • The existing undertakings restraining supply of the relevant products remain in place with minor variations to the text of the undertakings as set out in the orders.