Pfizer Ireland Pharmaceuticals v Samsung Bioepis AU Pty Ltd (No 4) [2024] FCA 678

Pfizer Ireland Pharmaceuticals v Samsung Bioepis AU Pty Ltd (No 4) [2024] FCA 678

Category 1 discovery was not warranted because the pleaded inventive step case involved over 80 poorly focussed permutations of common general knowledge and prior art, making the inventors' path to the invention only secondary and the request effectively fishing; the utility pleading did not make category 1 any less speculative. Category 2 discovery was warranted because the respondents pleaded a best method case identifying deficiencies in Example 16, the evidence gave some support for the contention that Example 16 alone did not disclose the best method, and the patent applicant may have information supplying the alleged deficiencies.

Jurisdiction
Australia
Judgment Date
18 June 2024
Procedural Posture
Patent Infringement and Revocation Proceedings / Respondents' Application for Non Standard Discovery by Categories Under Federal Court Rules 2011 (cth) R 20.15
Outcome
Discovery granted in part: category 2 discovery granted with amendments; category 1 discovery refused except for conditional discovery if inventor evidence is adduced; discovery application otherwise dismissed; costs in the cause.
Legal Topics
['non Standard Discovery' 'inventive Step' 'prior Art Combinations' 'best Method' 'utility' 'patent Invalidity']
['patents' 'civil Procedure'] ['non Standard Discovery' 'inventive Step' 'prior Art Combinations' 'best Method' 'utility' 'patent Invalidity']

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Procedural Posture

Patent Infringement and Revocation Proceedings / Respondents' Application for Non Standard Discovery by Categories Under Federal Court Rules 2011 (cth) R 20.15

Legal Issues

  1. 1 ['Whether discovery of research and development documents created from 27 August 2002 to 27 August 2004 should be ordered in relation to inventive step and utility.' 'Whether discovery should be ordered of documents created or dated before the filing date concerning the production of etanercept or "TNFR-Ig" as described in Example 16 of the patent for the pleaded best method case.' 'Whether the requested categories amounted to fishing or were directly relevant to issues raised by the pleadings.']

Ratio Decidendi

Category 1 discovery was not warranted because the pleaded inventive step case involved over 80 poorly focussed permutations of common general knowledge and prior art, making the inventors' path to the invention only secondary and the request effectively fishing; the utility pleading did not make category 1 any less speculative. Category 2 discovery was warranted because the respondents pleaded a best method case identifying deficiencies in Example 16, the evidence gave some support for the contention that Example 16 alone did not disclose the best method, and the patent applicant may have information supplying the alleged deficiencies.

Court Disposition

Discovery granted in part: category 2 discovery granted with amendments; category 1 discovery refused except for conditional discovery if inventor evidence is adduced; discovery application otherwise dismissed; costs in the cause.

Orders

  • ["By 4:00 pm on Monday, 19 August 2024, the Applicants/Cross-Respondent give discovery and inspection of documents within the category set out in the Annexure to the Orders by filing and serving a verified list of documents in accordance with r 20.17 of the Federal Court Rules 2011 (Cth) and producing electronic...