Bristol-Myers Squibb Company v Apotex Pty Ltd (No 5) [2013] FCA 1114

Bristol-Myers Squibb Company v Apotex Pty Ltd (No 5) [2013] FCA 1114

Apotex's challenges to the validity of asserted claims failed, except for claim 45 (not a manner of manufacture) and claim 43 (insufficient infringement evidence); the claims were found novel, involved inventive step, were clear and fairly based, and Crystals B were not anticipated by prior art. Bristol-Myers Squibb was not an exclusive licensee because it lacked the right to manufacture under the license. Apotex's threatened sale was found to infringe the valid claims except those mentioned.

Jurisdiction
Australia
Judgment Date
30 October 2013
Procedural Posture
Civil / Final Judgment
Outcome
Largely in favour of the applicants; most patent claims found valid and infringed, but claim 45 invalid (not a manner of manufacture), claim 43 not infringed, and applicant Bristol-Myers Squibb not an exclusive licensee; further submissions invited regarding claim 14 infringement, draft orders, possible...
Legal Topics
['patent Validity' 'patent Infringement' 'novelty' 'inventive Step' 'manner of Manufacture' 'clarity' 'fair Basis' 'false Suggestion' 'exclusive Licensing']
['intellectual Property' 'patents'] ['patent Validity' 'patent Infringement' 'novelty' 'inventive Step' 'manner of Manufacture' 'clarity' 'fair Basis' 'false Suggestion' 'exclusive Licensing']

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Procedural Posture

Civil / Final Judgment

Legal Issues

  1. 1 ['Whether Apotex infringed or threatened to infringe certain claims of Patent No. 2002334413' 'Whether relevant claims were invalid for lack of novelty, inventive step, manner of manufacture, clarity, fair basis, or false suggestion/misrepresentation' 'Whether Bristol-Myers Squibb Company is an exclusive licensee with standing to sue']

Ratio Decidendi

Apotex's challenges to the validity of asserted claims failed, except for claim 45 (not a manner of manufacture) and claim 43 (insufficient infringement evidence); the claims were found novel, involved inventive step, were clear and fairly based, and Crystals B were not anticipated by prior art. Bristol-Myers Squibb was not an exclusive licensee because it lacked the right to manufacture under the license. Apotex's threatened sale was found to infringe the valid claims except those mentioned.

Court Disposition

Largely in favour of the applicants; most patent claims found valid and infringed, but claim 45 invalid (not a manner of manufacture), claim 43 not infringed, and applicant Bristol-Myers Squibb not an exclusive licensee; further submissions invited regarding claim 14 infringement, draft orders, possible...

Orders

  • ['Parties to submit draft orders reflecting reasons by 8 November 2013; if not agreed, submissions and draft orders by 13 November 2013.' 'If the second applicant pursues infringement of claim 14, further written submissions (not exceeding three pages) permitted by 13 November 2013.' 'Reasons for judgment not to be...