Sandoz Pty Ltd v H. Lundbeck A/S [2020] FCAFC 133

Sandoz Pty Ltd v H. Lundbeck A/S [2020] FCAFC 133

On its proper construction, the settlement agreement conferred an irrevocable non-exclusive licence to Sandoz as of the stipulated date, covering the period after the anticipated expiry of the patent. This licence protected Sandoz from infringement liability for its relevant acts during the gap period after patent expiry and before term extension. Section 79 of the Patents Act gives only the patentee, and not an exclusive licensee, standing to sue for acts done during the gap period. Section 223(10) did not provide Sandoz with a defence. The awards of damages and interest, as made below, are not sustainable on the facts and law as found in the appeal.

Parties
Appellant/cross Respondent: Sandoz Pty Ltd; First Respondent/first Cross Appellant: H. Lundbeck A/S; Second Respondent/second Cross Appellant: Lundbeck Australia Pty Ltd; Respondent/cross Appellant: CNS Pharma Pty Ltd
Jurisdiction
Australia
Judgment Date
04 August 2020
Procedural Posture
Appeal / Final Judgment and Orders on Appeal
Outcome
Appeal allowed; cross-appeal dismissed; primary judge's orders set aside; applications below dismissed; costs submissions invited for determination on the papers.
Legal Topics
Patent Law, Settlement Agreements, Interpretation of Contracts, Exclusive Licence, Damages, Pre Judgment Interest, Misleading and Deceptive Conduct
Intellectual Property Contracts Patent Law Settlement Agreements Interpretation of Contracts Exclusive Licence Damages Pre Judgment Interest +1 more

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Parties

Sandoz Pty Ltd

Appellant/cross Respondent

H. Lundbeck A/S

First Respondent/first Cross Appellant

Lundbeck Australia Pty Ltd

Second Respondent/second Cross Appellant

CNS Pharma Pty Ltd

Respondent/cross Appellant

Procedural Posture

Appeal / Final Judgment and Orders on Appeal

Legal Issues

  1. 1 Proper construction of settlement agreement clause regarding licence to exploit patent
  2. 2 Whether settlement agreement licence protected Sandoz for acts after patent expiry but before extension
  3. 3 Interpretation of s 79 of the Patents Act regarding patentee rights and exclusive licensee rights to sue

Ratio Decidendi

On its proper construction, the settlement agreement conferred an irrevocable non-exclusive licence to Sandoz as of the stipulated date, covering the period after the anticipated expiry of the patent. This licence protected Sandoz from infringement liability for its relevant acts during the gap period after patent expiry and before term extension. Section 79 of the Patents Act gives only the patentee, and not an exclusive licensee, standing to sue for acts done during the gap period. Section 223(10) did not provide Sandoz with a defence. The awards of damages and interest, as made below, are not sustainable on the facts and law as found in the appeal.

Court Disposition

Appeal allowed; cross-appeal dismissed; primary judge's orders set aside; applications below dismissed; costs submissions invited for determination on the papers.

Orders

  • The appeal is allowed.
  • The cross-appeal is dismissed.