Bristol-Myers Squibb Company v Apotex Pty Ltd (No 6) [2013] FCA 1235

Bristol-Myers Squibb Company v Apotex Pty Ltd (No 6) [2013] FCA 1235

Because BMS lacked entitlement to sue for infringement, it should not recover all of its costs, but Apotex's failure to oppose interlocutory injunctive relief on that basis and the practical availability of Otsuka as patentee meant BMS should not be ordered to pay Apotex's earlier costs. Apotex should pay Otsuka's costs except for the amendment motion, and pay BMS's costs of the cross-claim, with BMS and Apotex otherwise bearing their own costs. The release from security should be stayed only until further order to avoid assumptions about any appeal outcome.

Jurisdiction
Australia
Judgment Date
22 November 2013
Procedural Posture
Patent Infringement and Revocation Proceeding; Practice and Procedure and Costs / Post Judgment Determination on Proposed Final Orders and Costs, Determined on the Papers
Outcome
Final orders made substantially as proposed, including injunctive relief in favour of the second applicant, dismissal of the cross-claim except as to claim 45, revocation of claim 45, release of the first applicant from security subject to a stay, and costs orders reflecting the Court's reasons.
Legal Topics
['form of Final Orders' 'undertaking as to Damages' 'security for Undertaking as to Damages' 'standing to Sue for Patent Infringement' 'patent Injunction' 'revocation of Patent Claim' 'costs After Mixed Success']
['practice and Procedure' 'costs' 'patents'] ['form of Final Orders' 'undertaking as to Damages' 'security for Undertaking as to Damages' 'standing to Sue for Patent Infringement' 'patent Injunction' 'revocation of Patent Claim' 'costs After Mixed Success']

Case Brief

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Procedural Posture

Patent Infringement and Revocation Proceeding; Practice and Procedure and Costs / Post Judgment Determination on Proposed Final Orders and Costs, Determined on the Papers

Legal Issues

  1. 1 ['Whether the first applicant should be released from the undertaking as to damages it gave when obtaining interlocutory injunctive relief against the respondent.' 'What costs orders should be made given the finding that the first applicant had no entitlement to sue the respondent for infringement of the patent.' 'What form of stay should apply to the order releasing the first applicant from its obligation to provide security.']

Ratio Decidendi

Because BMS lacked entitlement to sue for infringement, it should not recover all of its costs, but Apotex's failure to oppose interlocutory injunctive relief on that basis and the practical availability of Otsuka as patentee meant BMS should not be ordered to pay Apotex's earlier costs. Apotex should pay Otsuka's costs except for the amendment motion, and pay BMS's costs of the cross-claim, with BMS and Apotex otherwise bearing their own costs. The release from security should be stayed only until further order to avoid assumptions about any appeal outcome.

Court Disposition

Final orders made substantially as proposed, including injunctive relief in favour of the second applicant, dismissal of the cross-claim except as to claim 45, revocation of claim 45, release of the first applicant from security subject to a stay, and costs orders reflecting the Court's reasons.

Orders

  • ['Order 1 made by Bennett J on 20 October 2009 be vacated.' 'The respondent be restrained, without the authority of the second applicant, from specified acts within the patent area for the term of Patent No. 2002334413, including offering to sell or dispose of the Apotex products, importing them, keeping them for...