ViiV Healthcare Company v Gilead Sciences Pty Limited (No 2) [2020] FCA 1455

ViiV Healthcare Company v Gilead Sciences Pty Limited (No 2) [2020] FCA 1455

Although Gilead's amended particulars did not currently comply with r 34.46(3) because the particulars of inutility were not limited to identified compounds, it was appropriate to allow them to stand temporarily given the expansive claims, the need for discovery and possible experiments, and the absence of practical prejudice because Gilead would have to align its particulars with its evidence in chief before ViiV filed invalidity evidence. The strike out application was therefore not granted at this time and was adjourned sine die. Discovery was confined to categories directly relevant and proportionate to the pleaded utility issues: category 5 as limited to documents describing or...

Jurisdiction
Australia
Judgment Date
09 October 2020
Procedural Posture
Patent Infringement Proceeding With Cross Claim for Revocation of Asserted Patent Claims / Interlocutory Applications: Vii V's Strike Out Application Concerning Amended Particulars of Invalidity and Gilead's Discovery Application
Outcome
ViiV's strike out application adjourned sine die; Gilead's discovery application allowed only in limited respects; costs of both interlocutory applications to be costs in the cause.
Legal Topics
['patent Utility' 'particulars of Invalidity' 'strike Out Application' 'discovery' 'predictive Coding' 'continuous Active Learning Technology' 'fishing Expedition']
['patents' 'intellectual Property' 'civil Procedure'] ['patent Utility' 'particulars of Invalidity' 'strike Out Application' 'discovery' 'predictive Coding' 'continuous Active Learning Technology' 'fishing Expedition']

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Procedural Posture

Patent Infringement Proceeding With Cross Claim for Revocation of Asserted Patent Claims / Interlocutory Applications: Vii V's Strike Out Application Concerning Amended Particulars of Invalidity and Gilead's Discovery Application

Legal Issues

  1. 1 ["Whether parts of Gilead's amended particulars of invalidity alleging lack of utility should be struck out for non-compliance with r 34.46(3) of the Federal Court Rules 2011 (Cth) or under r 16.21." 'Whether technical expressions such as "bulky substituents", "larger than" and "disrupts the intramolecular hydrogen bonding with the pyridone core carbonyl" made the particulars impermissibly uncertain at the interlocutory stage.' 'Whether Gilead should be given discovery of documents relevant to its inutility allegations, and if so in what categories.' 'Whether aspects of the discovery sought amounted to a fishing expedition or were disproportionate or oppressive.']

Ratio Decidendi

Although Gilead's amended particulars did not currently comply with r 34.46(3) because the particulars of inutility were not limited to identified compounds, it was appropriate to allow them to stand temporarily given the expansive claims, the need for discovery and possible experiments, and the absence of practical prejudice because Gilead would have to align its particulars with its evidence in chief before ViiV filed invalidity evidence. The strike out application was therefore not granted at this time and was adjourned sine die. Discovery was confined to categories directly relevant and proportionate to the pleaded utility issues: category 5 as limited to documents describing or...

Court Disposition

ViiV's strike out application adjourned sine die; Gilead's discovery application allowed only in limited respects; costs of both interlocutory applications to be costs in the cause.

Orders

  • ["The applicants' interlocutory application seeking to strike out the respondent's amended particulars of invalidity be adjourned sine die." "Within 7 days of the date hereof, the parties submit minutes of proposed orders to give effect to these reasons concerning the respondent's interlocutory application seeking...