Commonwealth of Australia v Sanofi-Aventis [2015] FCA 384

Commonwealth of Australia v Sanofi-Aventis [2015] FCA 384

Leave to amend was granted only in part. The copyright-based defence was reasonably arguable and not precluded by existing authority, so it could go to trial. The AstraZeneca-based defence had no reasonable prospect of success because it necessarily involved a collateral attack on the Full Court judgment in Apotex revoking the patent and was inconsistent with the rationale of undertakings as to damages and the principle of finality. The defence based on failure to notify before the special leave application was determined also had no reasonable prospect of success. The defence based on delay causing prejudice through loss of evidence could only be pleaded if Sanofi provided additional...

Jurisdiction
Australia
Judgment Date
24 April 2015
Procedural Posture
Application for Leave to File and Serve Further Amended Points of Defence to a Claim by the Commonwealth on Undertakings as to Damages / Interlocutory Application
Outcome
Sanofi was granted leave to file Further Amended Points of Defence subject to conditions deleting or particularising specified proposed amendments; costs thrown away were ordered against Sanofi and costs of the interlocutory application were reserved.
Legal Topics
['leave to Amend Pleadings' 'undertaking as to Damages' 'summary Dismissal Under S 31 A' 'delay and Prejudice' 'unclean Hands' 'pbs Listing' 'patent Invalidity' 'copyright Infringement' 'finality in Litigation']
['practice and Procedure' 'equity' 'intellectual Property' 'patent Law' 'copyright'] ['leave to Amend Pleadings' 'undertaking as to Damages' 'summary Dismissal Under S 31 A' 'delay and Prejudice' 'unclean Hands' 'pbs Listing' 'patent Invalidity' 'copyright Infringement' 'finality in Litigation']

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Procedural Posture

Application for Leave to File and Serve Further Amended Points of Defence to a Claim by the Commonwealth on Undertakings as to Damages / Interlocutory Application

Legal Issues

  1. 1 ["Whether Sanofi should be granted leave to amend its points of defence to raise copyright-based defences to the Commonwealth's claim on undertakings as to damages." "Whether Sanofi should be granted leave to amend to plead prejudice arising from the Commonwealth's alleged delay in notifying and commencing its compensation claim." "Whether Sanofi should be granted leave to amend to contend that the Full Court decision revoking Sanofi's patent was wrongly decided in light of AstraZeneca AB v Apotex Pty Ltd (2014) 226 FCR 324." 'Whether the proposed defences had no reasonable prospect of success or were otherwise inadequately pleaded.']

Ratio Decidendi

Leave to amend was granted only in part. The copyright-based defence was reasonably arguable and not precluded by existing authority, so it could go to trial. The AstraZeneca-based defence had no reasonable prospect of success because it necessarily involved a collateral attack on the Full Court judgment in Apotex revoking the patent and was inconsistent with the rationale of undertakings as to damages and the principle of finality. The defence based on failure to notify before the special leave application was determined also had no reasonable prospect of success. The defence based on delay causing prejudice through loss of evidence could only be pleaded if Sanofi provided additional...

Court Disposition

Sanofi was granted leave to file Further Amended Points of Defence subject to conditions deleting or particularising specified proposed amendments; costs thrown away were ordered against Sanofi and costs of the interlocutory application were reserved.

Orders

  • ['The first, second and third respondents (the Sanofi parties) be granted leave to file Further Amended Points of Defence in the form of their draft document dated 19 November 2014 subject to the following conditions: (a) para 84A(c)(i) and particular (1) are to be deleted; (b) para 84A(c)(ii) and particular (2) are...