Abbott GMBH & Co. KG v Apotex Pty Ltd (No 2) [2010] FCA 940

Abbott GMBH & Co. KG v Apotex Pty Ltd (No 2) [2010] FCA 940

The respondent failed to establish invalidity. Example 11 of the British patent did not anticipate Claims 1 and 2 because a skilled addressee in 1985 could reasonably read it as requiring removal of water and anhydrous conditions, so performance of the prior art would not inevitably yield sibutramine hydrochloride monohydrate. The claimed monohydrate was not obvious because the evidence did not show that the uninventive skilled worker would as a matter of course have formed the monohydrate to solve hygroscopicity. The compound was a manner of manufacture because it was a new compound with non-hygroscopicity and was not merely a known material used for a known purpose. The amendment during...

Jurisdiction
Australia
Judgment Date
02 September 2010
Procedural Posture
Patent Infringement Proceeding and Cross Claim for Revocation / Reasons for Judgment After Hearing; Final Orders Deferred
Outcome
Cross-claim for revocation rejected; infringement established; applicants to bring in short minutes and parties to be heard on costs before final orders.
Legal Topics
['patent Validity' 'novelty' 'inventive Step' 'manner of Manufacture' 'false Suggestion' 'patent Infringement' 'pharmaceutical Compounds' 'prior Art Anticipation']
['intellectual Property' 'patent Law'] ['patent Validity' 'novelty' 'inventive Step' 'manner of Manufacture' 'false Suggestion' 'patent Infringement' 'pharmaceutical Compounds' 'prior Art Anticipation']

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Procedural Posture

Patent Infringement Proceeding and Cross Claim for Revocation / Reasons for Judgment After Hearing; Final Orders Deferred

Legal Issues

  1. 1 ['Whether Claims 1 and 2 of Australian Patent No 601167 were anticipated by Example 11 of British Patent Specification No 2098602.' 'Whether the claimed invention involved an inventive step when compared with the prior art base as at the priority date.' 'Whether the claimed invention was a manner of manufacture.' 'Whether the patent was obtained by false suggestion.' "Whether Apotex's proposed sibutramine hydrochloride monohydrate product would infringe Claims 1 and 2."]

Ratio Decidendi

The respondent failed to establish invalidity. Example 11 of the British patent did not anticipate Claims 1 and 2 because a skilled addressee in 1985 could reasonably read it as requiring removal of water and anhydrous conditions, so performance of the prior art would not inevitably yield sibutramine hydrochloride monohydrate. The claimed monohydrate was not obvious because the evidence did not show that the uninventive skilled worker would as a matter of course have formed the monohydrate to solve hygroscopicity. The compound was a manner of manufacture because it was a new compound with non-hygroscopicity and was not merely a known material used for a known purpose. The amendment during...

Court Disposition

Cross-claim for revocation rejected; infringement established; applicants to bring in short minutes and parties to be heard on costs before final orders.

Orders

  • ["Within 7 days, the applicants file and serve a minute of the orders proposed by them to reflect the court's reasons published this day, together with a memorandum as to costs." "Within a further 7 days, the respondent file and serve a memorandum in response to the applicants' minute and memorandum." 'The...