Arrow Pharmaceuticals Ltd v Merck & Co Inc [2003] FCA 642

Arrow Pharmaceuticals Ltd v Merck & Co Inc [2003] FCA 642

Arrow is not entitled, at this stage, to orders requiring Merck to plead to the Amended Particulars of Invalidity, or to provide particulars of inventive step or of the person skilled in the art, as there is no procedural rule or principle supporting such orders in these circumstances. Discovery and particulars are to be confined appropriately to matters relevant to the issues as pleaded and in accordance with established practice; Merck is entitled to further and better particulars from Arrow relating to the acts alleged in support of invalidity.

Parties
Applicant: Arrow Pharmaceuticals Ltd; Respondent: Merck & Co Inc
Jurisdiction
Australia
Judgment Date
27 June 2003
Procedural Posture
Application for Revocation of Patent (interlocutory) / Interlocutory Motions; Directions on Pleadings and Discovery
Outcome
Orders as to interlocutory applications deferred; certain orders for particulars and discovery made as per reasoning.
Legal Topics
Patent Revocation, Pleadings and Particulars, Discovery
Intellectual Property Practice and Procedure Patent Revocation Pleadings and Particulars Discovery

Case Brief

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Parties

Arrow Pharmaceuticals Ltd

Applicant

Merck & Co Inc

Respondent

Procedural Posture

Application for Revocation of Patent (interlocutory) / Interlocutory Motions; Directions on Pleadings and Discovery

Legal Issues

  1. 1 Whether the patentee (Merck) is required to plead to Particulars of Invalidity filed by the applicant (Arrow) for revocation
  2. 2 Whether the patentee should provide particulars of inventive step and identity of the person skilled in the art as sought by the applicant
  3. 3 Categories of documents to be discovered by the patentee

Ratio Decidendi

Arrow is not entitled, at this stage, to orders requiring Merck to plead to the Amended Particulars of Invalidity, or to provide particulars of inventive step or of the person skilled in the art, as there is no procedural rule or principle supporting such orders in these circumstances. Discovery and particulars are to be confined appropriately to matters relevant to the issues as pleaded and in accordance with established practice; Merck is entitled to further and better particulars from Arrow relating to the acts alleged in support of invalidity.

Court Disposition

Orders as to interlocutory applications deferred; certain orders for particulars and discovery made as per reasoning.

Orders

  • The notices of motion of the parties are stood over for settlement and entry of short minutes of order reflecting the Court's reasons.
  • Merck is entitled to further and better particulars from Arrow regarding certain acts alleged in support of invalidity.