Apotex Pty Ltd v Cipla Limited (No 2) [2018] FCA 1393

Apotex Pty Ltd v Cipla Limited (No 2) [2018] FCA 1393

The documents sought in categories 5 and 7 were not of direct relevance or only of secondary significance to the pleaded issues of lack of inventive step and false suggestion, particularly as they related to work or studies conducted after the patent's priority date, or did not go directly to the pleaded representation. In addition, the burden and scope of discovery sought was not proportionate to the issues in dispute. Therefore, discovery in these categories was refused.

Parties
Applicant / First Cross Respondent: Apotex Pty Ltd; Respondent / First Cross Claimant: Cipla Limited; Second Cross Claimant: Meda A.B.; Second Cross Respondent: Mylan Health Pty Ltd
Jurisdiction
Australia
Judgment Date
03 August 2018
Procedural Posture
Interlocutory Application in Patent Proceedings / Determination of Interlocutory Application for Discovery
Outcome
Application for discovery in categories 5 and 7 dismissed; discovery ordered only in a limited form for category 1; costs of the applicant's interlocutory application to be costs in the cause.
Legal Topics
Patents, Discovery, Pharmaceutical Patents, Obviousness (lack of Inventive Step), False Suggestion, Proportionality in Discovery
Intellectual Property Patents Discovery Pharmaceutical Patents Obviousness (lack of Inventive Step) False Suggestion Proportionality in Discovery

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Parties

Apotex Pty Ltd

Applicant / First Cross Respondent

Cipla Limited

Respondent / First Cross Claimant

Meda A.B.

Second Cross Claimant

Mylan Health Pty Ltd

Second Cross Respondent

Procedural Posture

Interlocutory Application in Patent Proceedings / Determination of Interlocutory Application for Discovery

Legal Issues

  1. 1 Whether the discovery categories sought by Apotex, specifically categories 5 and 7, are directly relevant to the issues of lack of inventive step and false suggestion concerning the patent in suit.
  2. 2 Whether the categories sought are proportionate given their potential relevance and the burden of discovery.

Ratio Decidendi

The documents sought in categories 5 and 7 were not of direct relevance or only of secondary significance to the pleaded issues of lack of inventive step and false suggestion, particularly as they related to work or studies conducted after the patent's priority date, or did not go directly to the pleaded representation. In addition, the burden and scope of discovery sought was not proportionate to the issues in dispute. Therefore, discovery in these categories was refused.

Court Disposition

Application for discovery in categories 5 and 7 dismissed; discovery ordered only in a limited form for category 1; costs of the applicant's interlocutory application to be costs in the cause.

Orders

  • By 4.00 pm on 19 October 2018, the Respondent/Cross-Claimants to conduct electronic searches of US Discovered Documents meeting certain criteria.
  • By 4.00 pm on 9 November 2018, Respondent/Cross-Claimants to give discovery and produce for inspection documents so identified, subject to privilege.