Orion Corporation v Actavis Pty Ltd [2015] FCA 909

Orion Corporation v Actavis Pty Ltd [2015] FCA 909

The challenged claims are valid as they are sufficiently clear, fairly based on the specification, novel, involve an inventive step, and have utility. Claims 17, 18, 19, 20, and 21 of the patent are infringed by Actavis’ products (five of six products in the case of claims 19 and 20), as Actavis’ processes and products include all necessary integers of those claims. The skilled addressee would not have found the invention obvious or anticipated by the prior art given the technical and practical challenges faced at the priority date. The inclusion of certain excipients is not an essential limitation unless expressly claimed. The expressions 'substantial portion', 'pharmaceutically...

Parties
Applicant/cross Respondent: Orion Corporation; Applicant/cross Respondent: Novartis Pharma AG; Applicant/cross Respondent: Novartis Pharmaceuticals (Australia) Pty Ltd ACN 004 244 160; Respondent/cross Claimant: Actavis Pty Ltd ACN 003 854 626; Respondent/cross Claimant: Medis Pharma Pty Ltd ACN 109 225 747
Jurisdiction
Australia
Judgment Date
21 August 2015
Procedural Posture
Patent Infringement/validity / First Instance Judgment
Outcome
Claims held valid; infringement found for certain claims; parties to confer on final orders and costs.
Legal Topics
Patent Infringement, Patent Validity, Construction of Patent Claims, Pharmaceutical Patents, Novelty, Inventive Step, Utility, Clarity, Fair Basis
Intellectual Property Patents Patent Infringement Patent Validity Construction of Patent Claims Pharmaceutical Patents Novelty Inventive Step +3 more

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Parties

Orion Corporation

Applicant/cross Respondent

Novartis Pharma AG

Applicant/cross Respondent

Novartis Pharmaceuticals (Australia) Pty Ltd ACN 004 244 160

Applicant/cross Respondent

Actavis Pty Ltd ACN 003 854 626

Respondent/cross Claimant

Medis Pharma Pty Ltd ACN 109 225 747

Respondent/cross Claimant

Procedural Posture

Patent Infringement/validity / First Instance Judgment

Legal Issues

  1. 1 Whether patent claims 1, 2, 12, 13, 14, 17, 18, 19, 20, and 21 are invalid for lack of definition, clarity, utility, novelty, inventive step, or fair basis; Whether Actavis' products infringe any of the valid claims of the patent; Proper construction of the claims—especially terms such as 'substantial portion', 'pharmaceutically acceptable excipient', and 'pharmacologically effective amounts'

Ratio Decidendi

The challenged claims are valid as they are sufficiently clear, fairly based on the specification, novel, involve an inventive step, and have utility. Claims 17, 18, 19, 20, and 21 of the patent are infringed by Actavis’ products (five of six products in the case of claims 19 and 20), as Actavis’ processes and products include all necessary integers of those claims. The skilled addressee would not have found the invention obvious or anticipated by the prior art given the technical and practical challenges faced at the priority date. The inclusion of certain excipients is not an essential limitation unless expressly claimed. The expressions 'substantial portion', 'pharmaceutically...

Court Disposition

Claims held valid; infringement found for certain claims; parties to confer on final orders and costs.

Orders

  • On or before 28 August 2015, parties to confer and prepare draft orders to give effect to the reasons.
  • If agreed, provide to associate; if not agreed, provide respective orders and brief submissions.