Apotex Pty Ltd v ICOS Corporation (No 4) [2018] FCA 1316

Apotex Pty Ltd v ICOS Corporation (No 4) [2018] FCA 1316

The Court made final orders declaring threatened infringement, certifying that the validity of specified claims of the '946 Patent and the '666 Patent had been unsuccessfully questioned, and restraining Apotex from infringing or threatening to infringe those claims. The Court rejected Apotex's objections to inclusion of a standard penal notice. However, prohibitions referring to making or offering to make products were removed because they did not relate to the facts of the case, and the proposed PBS listing commitment or guarantee prohibitions were refused because, although such conduct could be threatened infringement or a proper ancillary restraint, the issue had not been litigated,...

Jurisdiction
Australia
Judgment Date
24 August 2018
Procedural Posture
Patent Proceeding Concerning Declarations of Invalidity, Revocation, Threatened Infringement and Injunctive Relief / Final Declarations, Certifications and Orders After Reasons for Judgment
Outcome
Final orders made; Apotex's Originating Application dismissed; ICOS' amended Notice of Cross-claim otherwise dismissed; injunctions granted in modified form; Apotex ordered to pay ICOS' costs subject to specified prior costs orders.
Legal Topics
['patent Infringement' 'threatened Infringement' 'validity Certificates' 'final Injunctions' 'penal Notices' 'pbs Listing Commitments or Guarantees' 'confidentiality Orders']
['intellectual Property' 'patents' 'practice and Procedure'] ['patent Infringement' 'threatened Infringement' 'validity Certificates' 'final Injunctions' 'penal Notices' 'pbs Listing Commitments or Guarantees' 'confidentiality Orders']

Case Brief

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Procedural Posture

Patent Proceeding Concerning Declarations of Invalidity, Revocation, Threatened Infringement and Injunctive Relief / Final Declarations, Certifications and Orders After Reasons for Judgment

Legal Issues

  1. 1 ['Whether final orders should include a penal notice where the orders include patent injunctions against a corporation.' 'Whether the particular injunctive prohibitions referring to making or offering to make Tadalafil products should be included.' 'Whether injunctions should restrain making or maintaining a commitment or guarantee in connection with an application to list Tadalafil products on the Schedule of Pharmaceutical Benefits or the Repatriation Schedule of Pharmaceutical Benefits.' 'Whether such PBS listing commitment or guarantee conduct could be characterised as threatened infringement or as conduct properly restrained by an ancillary order.']

Ratio Decidendi

The Court made final orders declaring threatened infringement, certifying that the validity of specified claims of the '946 Patent and the '666 Patent had been unsuccessfully questioned, and restraining Apotex from infringing or threatening to infringe those claims. The Court rejected Apotex's objections to inclusion of a standard penal notice. However, prohibitions referring to making or offering to make products were removed because they did not relate to the facts of the case, and the proposed PBS listing commitment or guarantee prohibitions were refused because, although such conduct could be threatened infringement or a proper ancillary restraint, the issue had not been litigated,...

Court Disposition

Final orders made; Apotex's Originating Application dismissed; ICOS' amended Notice of Cross-claim otherwise dismissed; injunctions granted in modified form; Apotex ordered to pay ICOS' costs subject to specified prior costs orders.

Orders

  • ['The Court declared that Apotex had threatened to infringe claims 1-6, 8-17, 19-29 and 31-35 of Australian Patent No. 769946.' 'The Court declared that Apotex had threatened to infringe claims 1-3, 5-8, 10-12, 14-18 and 24-38 of Australian Patent No. 773666.' "Pursuant to section 19(1) of the Patents Act 1990...