Neurim Pharmaceuticals (1991) Ltd v Generic Partners Pty Ltd (No 3) [2020] FCA 1552

Neurim Pharmaceuticals (1991) Ltd v Generic Partners Pty Ltd (No 3) [2020] FCA 1552

The matters pleaded in paragraph 45 of the amended statement of claim in support of additional damages concern the respondents' state of mind and are tied to liability for infringement. Those pleaded matters should be determined at the trial of liability issues, not deferred to a later damages hearing. Issues of election and quantification of pecuniary relief, including quantification of any additional damages, should be determined separately and later. Any additional, unpleaded basis for additional damages can be considered only if an amendment application is made and allowed.

Jurisdiction
Australia
Judgment Date
23 October 2020
Procedural Posture
Proceeding for Patent Infringement and Cross Claims for Revocation Concerning Australian Patent AU 2002326114 / Interlocutory Practice and Procedure Determination of Whether Additional Damages Entitlement Should Be Tried With Liability or Deferred to a Damages Hearing
Outcome
Order made for separate determination: liability issues, including validity and entitlement to injunctive relief and additional damages based on paragraph 45, are to be determined before and separately from election and quantification of pecuniary relief.
Legal Topics
['patent Infringement' 'additional Damages' 'separate Determination of Issues' 'validity' 'injunctive Relief' 'pecuniary Relief']
['intellectual Property' 'patents' 'practice and Procedure'] ['patent Infringement' 'additional Damages' 'separate Determination of Issues' 'validity' 'injunctive Relief' 'pecuniary Relief']

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Procedural Posture

Proceeding for Patent Infringement and Cross Claims for Revocation Concerning Australian Patent AU 2002326114 / Interlocutory Practice and Procedure Determination of Whether Additional Damages Entitlement Should Be Tried With Liability or Deferred to a Damages Hearing

Legal Issues

  1. 1 ["Whether the applicant's entitlement to additional damages under s 122(1A) of the Patents Act 1990 (Cth), if any, should be determined at the trial of liability issues or deferred to any damages hearing." 'Whether allegations in paragraph 45 of the amended statement of claim concerning flagrancy, knowledge, reckless disregard and intended benefit should be addressed at trial.' 'Whether additional matters raised in particulars but not pleaded in paragraph 45 could support a claim for additional damages.']

Ratio Decidendi

The matters pleaded in paragraph 45 of the amended statement of claim in support of additional damages concern the respondents' state of mind and are tied to liability for infringement. Those pleaded matters should be determined at the trial of liability issues, not deferred to a later damages hearing. Issues of election and quantification of pecuniary relief, including quantification of any additional damages, should be determined separately and later. Any additional, unpleaded basis for additional damages can be considered only if an amendment application is made and allowed.

Court Disposition

Order made for separate determination: liability issues, including validity and entitlement to injunctive relief and additional damages based on paragraph 45, are to be determined before and separately from election and quantification of pecuniary relief.

Orders

  • ['Pursuant to Rule 30.01(1) of the Federal Court Rules 2011 (Cth) all issues relating to liability for infringement (including validity) of Australian Patent AU 2002326114 (including the entitlement of the applicant to injunctive relief and additional damages based on any one or more of the matters pleaded in...