GlaxoSmithKline Consumer Healthcare Investments (Ireland) (No 2) Limited v Generic Partners Pty Limited [2018] FCAFC 71

GlaxoSmithKline Consumer Healthcare Investments (Ireland) (No 2) Limited v Generic Partners Pty Limited [2018] FCAFC 71

The Court held that claim 1 must be construed as drafted—that is, 'basket' means 'basket' and not 'cylinder'—even if the skilled addressee would recognize the inclusion of 'basket' as a drafting error in context. The Court could not, under the guise of construction, correct the claim to refer to 'cylinder'; such correction, if necessary, should be sought by amendment and is circumscribed by statutory criteria. Consequently, the non-infringement finding below was correct. The cross-appeal arguments on fair basis and best method failed: the claims were held fairly based, not limited to a single formulation, and the complete specification disclosed the best method as required.

Jurisdiction
Australia
Judgment Date
10 May 2018
Procedural Posture
Appeal and Cross Appeal (intellectual Property/patents) / Judgment on Appeal From Decision of Primary Judge, Federal Court of Australia
Outcome
Appeal dismissed; cross-appeal dismissed
Legal Topics
['patent Construction' 'pharmaceutical Patents' 'fair Basis' 'best Method' 'patent Clarity' 'revocation']
['intellectual Property' 'patents'] ['patent Construction' 'pharmaceutical Patents' 'fair Basis' 'best Method' 'patent Clarity' 'revocation']

Case Brief

Summary, issues, holding and outcome

More case intelligence is available

Unlock the full research layer for this judgment.

Full judgment text Downloadable case file Legal principles 1 Authorities cited 2 Party arguments 2 Amounts and remedies 1
Sign in to unlock

Procedural Posture

Appeal and Cross Appeal (intellectual Property/patents) / Judgment on Appeal From Decision of Primary Judge, Federal Court of Australia

Legal Issues

  1. 1 ["Proper construction of claim 1 of Australian Patent No 2001260212—whether the term 'basket' in 'USP type III apparatus, reciprocating basket' should be interpreted as 'cylinder' or corrected as a drafting error" 'Whether patent claims were fairly based on the matter described in the specification' 'Whether the complete specification disclosed the best method known to the patentee for performing the invention']

Ratio Decidendi

The Court held that claim 1 must be construed as drafted—that is, 'basket' means 'basket' and not 'cylinder'—even if the skilled addressee would recognize the inclusion of 'basket' as a drafting error in context. The Court could not, under the guise of construction, correct the claim to refer to 'cylinder'; such correction, if necessary, should be sought by amendment and is circumscribed by statutory criteria. Consequently, the non-infringement finding below was correct. The cross-appeal arguments on fair basis and best method failed: the claims were held fairly based, not limited to a single formulation, and the complete specification disclosed the best method as required.

Court Disposition

Appeal dismissed; cross-appeal dismissed

Orders

  • ['The appeals be dismissed.' 'The cross-appeals be dismissed.' 'Parties to file and exchange written submissions (limited to 2 pages) in relation to costs of the appeals and cross-appeals within 7 days; reply submissions within 14 days; further orders as to costs reserved.']