Actavis Pty Ltd v Orion Corporation [2016] FCAFC 121

Actavis Pty Ltd v Orion Corporation [2016] FCAFC 121

The impugned claims are fairly based on the broader matter described in the specification and need not be limited to preferred embodiments. Claims 19 and 20 are valid as dosage form claims not limited by process or excipient exclusions. The proper construction of claim 17 requires the pharmacologically effective amounts to be added as designated in the process steps, rejecting an overly broad interpretation of 'comprises'. Novartis, via the 2014 licence, is the exclusive licensee and has standing, but Novartis Australia, as sub-licensee, does not have standing to sue for infringement under s 120(1).

Parties
Appellant: ACTAVIS PTY LTD; Appellant: MEDIS PHARMA PTY LTD; Respondent: ORION CORPORATION; Respondent: NOVARTIS PHARMA AG; Respondent: NOVARTIS PHARMACEUTICALS (AUSTRALIA) PTY LIMITED
Jurisdiction
Australia
Judgment Date
09 September 2016
Procedural Posture
Appeal / Judgment
Outcome
Appeal allowed in part and otherwise dismissed.
Legal Topics
Patent Validity, Patent Infringement, Standing to Sue for Patent Infringement, Fair Basis, Clarity of Claims, Exclusive Licences, Sub Licences
Intellectual Property Patent Validity Patent Infringement Standing to Sue for Patent Infringement Fair Basis Clarity of Claims Exclusive Licences Sub Licences

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Parties

ACTAVIS PTY LTD

Appellant

MEDIS PHARMA PTY LTD

Appellant

ORION CORPORATION

Respondent

NOVARTIS PHARMA AG

Respondent

NOVARTIS PHARMACEUTICALS (AUSTRALIA) PTY LIMITED

Respondent

Procedural Posture

Appeal / Judgment

Legal Issues

  1. 1 Are claims 17-22 of Patent No. 765932 fairly based on the specification?
  2. 2 Do the Actavis products infringe claims 17 and 18 of the patent?
  3. 3 Are claims 17, 18, and 21 clear and properly defined?

Ratio Decidendi

The impugned claims are fairly based on the broader matter described in the specification and need not be limited to preferred embodiments. Claims 19 and 20 are valid as dosage form claims not limited by process or excipient exclusions. The proper construction of claim 17 requires the pharmacologically effective amounts to be added as designated in the process steps, rejecting an overly broad interpretation of 'comprises'. Novartis, via the 2014 licence, is the exclusive licensee and has standing, but Novartis Australia, as sub-licensee, does not have standing to sue for infringement under s 120(1).

Court Disposition

Appeal allowed in part and otherwise dismissed.

Orders

  • Parties to bring in agreed orders by 4.00 pm on 23 September 2016, including on costs.
  • If not agreed, parties to provide drafts and submissions by 4.00 pm on 30 September 2016.