Albany Molecular Research Inc v Arrow Pharmaceuticals Pty Ltd [2011] FCA 252

Albany Molecular Research Inc v Arrow Pharmaceuticals Pty Ltd [2011] FCA 252

The Court confined the invalidity declaration and revocation to Claims 1, 6, 7, 8, 9 and 10 because the evidence and earlier reasons supported a finding of false suggestion only for compounds with the specific characteristics addressed in the evidence, and did not justify extending relief to the other claims.

Jurisdiction
Australia
Judgment Date
23 March 2011
Procedural Posture
Patent Proceeding Concerning Validity and Revocation / Final Orders Save as to Costs Following Reasons Delivered on 18 February 2011
Outcome
Application dismissed; Claims 1, 6, 7, 8, 9 and 10 of Australian patent No 699799 declared invalid and revoked; cross-claim otherwise dismissed; revocation order stayed on undertakings for 28 days and, if an appeal is lodged within that period, until the appeal is heard and determined or further order.
Legal Topics
['patent Invalidity' 'patent Revocation' 'false Suggestion' 'stay Pending Appeal' 'costs Submissions']
['intellectual Property' 'patents' 'civil Procedure'] ['patent Invalidity' 'patent Revocation' 'false Suggestion' 'stay Pending Appeal' 'costs Submissions']

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Procedural Posture

Patent Proceeding Concerning Validity and Revocation / Final Orders Save as to Costs Following Reasons Delivered on 18 February 2011

Legal Issues

  1. 1 ['Whether the declaration of invalidity and revocation should be confined to Claims 1, 6, 7, 8, 9 and 10 of Australian patent No 699799 or extend to all claims in the patent.' 'Whether relief under s 138(3)(d) of the Patents Act 1990 (Cth) was supported in relation to claims not otherwise controversial in the proceeding.']

Ratio Decidendi

The Court confined the invalidity declaration and revocation to Claims 1, 6, 7, 8, 9 and 10 because the evidence and earlier reasons supported a finding of false suggestion only for compounds with the specific characteristics addressed in the evidence, and did not justify extending relief to the other claims.

Court Disposition

Application dismissed; Claims 1, 6, 7, 8, 9 and 10 of Australian patent No 699799 declared invalid and revoked; cross-claim otherwise dismissed; revocation order stayed on undertakings for 28 days and, if an appeal is lodged within that period, until the appeal is heard and determined or further order.

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...