Albany Molecular Research Inc v Alphapharm Pty Ltd (No 2) [2011] FCA 425

Albany Molecular Research Inc v Alphapharm Pty Ltd (No 2) [2011] FCA 425

Because the respondent was generally successful in defeating the infringement proceeding and obtaining invalidity and revocation of claims 1, 6, 7, 8, 9 and 10, the applicant was ordered to pay the respondent's costs of the application and, subject to specified exclusions, the costs of the cross-claim. The respondent should not recover costs incurred only on failed invalidity grounds or most of the failed Carr 129 factual case, but the applicant should not recover its own costs of resisting those grounds. A 21-day stay of revocation was sufficient, continuing if an appeal was lodged within that period and subject to undertakings.

Jurisdiction
Australia
Judgment Date
04 May 2011
Procedural Posture
Patent Infringement Proceeding and Cross Claim for Patent Invalidity/revocation / Post Judgment Determination of Final Orders, Stay and Costs After Judgment on 18 February 2011
Outcome
Application dismissed; claims 1, 6, 7, 8, 9 and 10 of Australian patent No 699799 declared invalid and revoked; revocation stayed on undertakings for 21 days and, if an appeal is lodged within that period, until hearing and determination or further order; cross-claim otherwise dismissed; costs ordered with specified...
Legal Topics
['patent Infringement' 'patent Invalidity' 'revocation of Patent Claims' 'stay Pending Appeal' 'costs' 'novelty' 'false Suggestion' 'inventive Step']
['intellectual Property' 'patent Law' 'civil Procedure'] ['patent Infringement' 'patent Invalidity' 'revocation of Patent Claims' 'stay Pending Appeal' 'costs' 'novelty' 'false Suggestion' 'inventive Step']

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

Patent Infringement Proceeding and Cross Claim for Patent Invalidity/revocation / Post Judgment Determination of Final Orders, Stay and Costs After Judgment on 18 February 2011

Legal Issues

  1. 1 ['What final orders should be made to give effect to the reasons published on 18 February 2011.' 'Whether the order revoking claims 1, 6, 7, 8, 9 and 10 of Australian patent No 699799 should be stayed for 21 or 28 days pending any appeal.' 'What costs orders should be made for the application, the cross-claim, unsuccessful invalidity grounds, the Carr 129 issue, and post-judgment submissions.']

Ratio Decidendi

Because the respondent was generally successful in defeating the infringement proceeding and obtaining invalidity and revocation of claims 1, 6, 7, 8, 9 and 10, the applicant was ordered to pay the respondent's costs of the application and, subject to specified exclusions, the costs of the cross-claim. The respondent should not recover costs incurred only on failed invalidity grounds or most of the failed Carr 129 factual case, but the applicant should not recover its own costs of resisting those grounds. A 21-day stay of revocation was sufficient, continuing if an appeal was lodged within that period and subject to undertakings.

Court Disposition

Application dismissed; claims 1, 6, 7, 8, 9 and 10 of Australian patent No 699799 declared invalid and revoked; revocation stayed on undertakings for 21 days and, if an appeal is lodged within that period, until hearing and determination or further order; cross-claim otherwise dismissed; costs ordered with specified...

Orders

  • ['The application be dismissed.' 'So far as it relates to Claims 1, 6, 7, 8, 9 and 10, Australian patent No 699799 is invalid.' 'So far as it relates to Claims 1, 6, 7, 8, 9 and 10, Australian patent No 699799 be revoked.' 'Upon the applicant by its counsel undertaking to prosecute any appeal expeditiously, during...