Apotex Pty Ltd v AstraZeneca AB (No 5) [2013] FCA 560

Apotex Pty Ltd v AstraZeneca AB (No 5) [2013] FCA 560

The Federal Court Rules 2011 apply to costs issues as parties made settlement offers when new rules were in force. There was no evidentiary foundation for applying the old rules. Apotex’s settlement offers did not entitle it to indemnity costs as AstraZeneca’s refusal was not unreasonable. Apportionment of costs is refused due to significant overlap of issues and generic parties’ overall success. Further orders for invalidity are granted as principal reasons for judgment inexorably establish invalidity for remaining claims, with evidence traversing those claims.

Parties
Applicant/cross Respondent: Apotex Pty Ltd; First Respondent/cross Claimant: AstraZeneca AB; Second Respondent/cross Claimant: AstraZeneca Pty Limited; Applicant/cross Respondent: Watson Pharma Pty Ltd; Respondent/cross Claimant: Ascent Pharma Pty Ltd ACN 118 734 795
Jurisdiction
Australia
Judgment Date
11 June 2013
Procedural Posture
Patent Proceedings / Post Trial Judgment on Costs and Invalidity Orders
Outcome
Costs awarded to generic parties; Apotex’s application for indemnity costs refused; further orders of invalidity as to remaining patent claims.
Legal Topics
Patents, Costs, Invalidity Orders
Intellectual Property Law Patents Costs Invalidity Orders

Case Brief

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Parties

Apotex Pty Ltd

Applicant/cross Respondent

AstraZeneca AB

First Respondent/cross Claimant

AstraZeneca Pty Limited

Second Respondent/cross Claimant

Watson Pharma Pty Ltd

Applicant/cross Respondent

Ascent Pharma Pty Ltd ACN 118 734 795

Respondent/cross Claimant

Procedural Posture

Patent Proceedings / Post Trial Judgment on Costs and Invalidity Orders

Legal Issues

  1. 1 Should costs be apportioned based on partial success by AstraZeneca?
  2. 2 Should Apotex be awarded indemnity costs based on settlement offers?
  3. 3 Are further orders for invalidity warranted as to claims not previously addressed?

Ratio Decidendi

The Federal Court Rules 2011 apply to costs issues as parties made settlement offers when new rules were in force. There was no evidentiary foundation for applying the old rules. Apotex’s settlement offers did not entitle it to indemnity costs as AstraZeneca’s refusal was not unreasonable. Apportionment of costs is refused due to significant overlap of issues and generic parties’ overall success. Further orders for invalidity are granted as principal reasons for judgment inexorably establish invalidity for remaining claims, with evidence traversing those claims.

Court Disposition

Costs awarded to generic parties; Apotex’s application for indemnity costs refused; further orders of invalidity as to remaining patent claims.

Orders

  • AstraZeneca AB and AstraZeneca Pty Ltd pay the costs of Apotex Pty Limited (excluding costs for indemnity application).
  • AstraZeneca AB and AstraZeneca Pty Ltd pay the costs of Watson Pharma Pty Ltd.