Pharmacia LLC v Juno Pharmaceuticals Pty Ltd (No 2) [2022] FCA 369

Pharmacia LLC v Juno Pharmaceuticals Pty Ltd (No 2) [2022] FCA 369

Because the trial was conducted by both parties on the basis that the six exemplar batch records were representative and would enable the parties to determine infringement for products brought into and sold in Australia, declarations identifying which exemplar batches fell within or outside specified claims had practical consequences and should be made. The broader proposed infringement declarations were not made because of ambiguous drafting, the injunctions were refused because the Patent had expired and an injunction would be futile, costs of the infringement claim were deferred until quantum was resolved, and the respondents were ordered to pay the applicants' costs of the failed...

Jurisdiction
Australia
Judgment Date
11 April 2022
Procedural Posture
Patent Infringement Claim and Defensive Revocation Cross Claim Concerning Australian Patent No. 2002256031 / Form of Orders After Substantive Judgment, Including Declarations, Injunctions and Costs
Outcome
Declarations made in part; injunctions refused; cross-claim dismissed; respondents ordered to pay applicants' costs of the cross-claim; costs of the infringement claim deferred pending resolution of pecuniary relief.
Legal Topics
['patent Infringement' 'declaratory Relief' 'injunctive Relief' 'expiry of Patent' 'admissions' 'representative Batch Records' 'revocation Cross Claim' 'pecuniary Relief' 'costs Discretion']
['intellectual Property' 'patents' 'costs'] ['patent Infringement' 'declaratory Relief' 'injunctive Relief' 'expiry of Patent' 'admissions' 'representative Batch Records' 'revocation Cross Claim' 'pecuniary Relief' 'costs Discretion']

Case Brief

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Procedural Posture

Patent Infringement Claim and Defensive Revocation Cross Claim Concerning Australian Patent No. 2002256031 / Form of Orders After Substantive Judgment, Including Declarations, Injunctions and Costs

Legal Issues

  1. 1 ["Whether declarations should be made about which exemplar batches of the respondents' parecoxib products fell within specified claims of the Patent." 'Whether declarations of infringement and threatened infringement should be made against Juno and Neo.' 'Whether injunctions should be granted where the Patent had expired shortly after the hearing on final orders.' 'Whether the respondents could rely on further evidence to contend that no batches actually imported and sold in Australia infringed.' 'Whether costs of the infringement claim should be ordered immediately or deferred until after determination of pecuniary relief.' "Whether the respondents should pay the applicants' costs of the unsuccessful cross-claim."]

Ratio Decidendi

Because the trial was conducted by both parties on the basis that the six exemplar batch records were representative and would enable the parties to determine infringement for products brought into and sold in Australia, declarations identifying which exemplar batches fell within or outside specified claims had practical consequences and should be made. The broader proposed infringement declarations were not made because of ambiguous drafting, the injunctions were refused because the Patent had expired and an injunction would be futile, costs of the infringement claim were deferred until quantum was resolved, and the respondents were ordered to pay the applicants' costs of the failed...

Court Disposition

Declarations made in part; injunctions refused; cross-claim dismissed; respondents ordered to pay applicants' costs of the cross-claim; costs of the infringement claim deferred pending resolution of pecuniary relief.

Orders

  • ["The Court declares that exemplar batches 31604, 31605 and 31606 of the Respondents' parecoxib products contain a composition as referred to in claims 1, 4, 5, 11, 14, 15, 17, 18, 19, 20, 21, 24, 34, 35, 36, 37, 38, 39, 40 and 41 of Australian Patent No. 2002256031." "The Court declares that exemplar batches 31601,...