Sanofi v Amgen Inc. (No 2) [2023] FCA 1156

Sanofi v Amgen Inc. (No 2) [2023] FCA 1156

The interlocutory relief was refused because the orders made on 30 November 2022 permitted the respondent to tender declarations from the opposition and file supplementary affidavits by the same witnesses; the applicant had not objected to that course at the first case management hearing; a later change of mind was not a sufficient basis to revisit the leave granted; the alleged duplication, expert-number imbalance, hearing-time concerns and summarising did not establish actual or potential prejudice or non-compliance with the procedural orders; and any specific admissibility objections could be dealt with at the appropriate time.

Jurisdiction
Australia
Judgment Date
22 September 2023
Procedural Posture
Patent Appeal From a Decision of a Delegate of the Commissioner of Patents in Opposition Proceedings; Interlocutory Application Under R 5.04 of the Federal Court Rules 2011 (cth) to Limit Evidence / Interlocutory Application Before Hearing of the De Novo Appeal
Outcome
Interlocutory application dismissed with costs.
Legal Topics
['appeal From Commissioner of Patents Delegate' 'evidence in Patent Opposition Appeal' 'leave to Tender Declarations From Opposition Proceedings' 'supplementary Affidavit Evidence' 'duplicative Expert Evidence' 'expert Conclaves and Concurrent Evidence' 'federal Court Rules R 5.04']
['practice and Procedure' 'intellectual Property' 'patents' 'evidence'] ['appeal From Commissioner of Patents Delegate' 'evidence in Patent Opposition Appeal' 'leave to Tender Declarations From Opposition Proceedings' 'supplementary Affidavit Evidence' 'duplicative Expert Evidence' 'expert Conclaves and Concurrent Evidence' 'federal Court Rules R 5.04']

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Procedural Posture

Patent Appeal From a Decision of a Delegate of the Commissioner of Patents in Opposition Proceedings; Interlocutory Application Under R 5.04 of the Federal Court Rules 2011 (cth) to Limit Evidence / Interlocutory Application Before Hearing of the De Novo Appeal

Legal Issues

  1. 1 ['Whether the respondent should be prevented from adducing evidence said to be duplicative or substantially duplicative of other expert evidence.' 'Whether the respondent should be limited to declaration evidence expressly referred to in affidavits filed in the appeal.' "Whether the respondent's affidavits, which summarised statements made in declarations, failed to comply with the orders made on 30 November 2022 or created unfair uncertainty." "Whether case management concerns about expert conclaves, concurrent evidence and the allotted hearing time justified limiting the respondent's evidence."]

Ratio Decidendi

The interlocutory relief was refused because the orders made on 30 November 2022 permitted the respondent to tender declarations from the opposition and file supplementary affidavits by the same witnesses; the applicant had not objected to that course at the first case management hearing; a later change of mind was not a sufficient basis to revisit the leave granted; the alleged duplication, expert-number imbalance, hearing-time concerns and summarising did not establish actual or potential prejudice or non-compliance with the procedural orders; and any specific admissibility objections could be dealt with at the appropriate time.

Court Disposition

Interlocutory application dismissed with costs.

Orders

  • ['The interlocutory application dated 1 September 2023 be dismissed.' "The applicant pay the respondent's costs of and incidental to the interlocutory application."]