Juno Pharmaceuticals Pty Ltd v Celgene Corporation [2021] FCA 236

Juno Pharmaceuticals Pty Ltd v Celgene Corporation [2021] FCA 236

Applications for summary dismissal and strike out regarding best method and false suggestion failed; the claims in suit require a trial on their factual and legal boundaries, particularly as to the meaning and characterization of the 'invention' and best method; cross-claim for infringement of other patents not struck out as the applicant's stated intention suffices to found a justiciable issue; grant of expedited trial on issues of invalidity/infringement of the 779 patent is justified to enable applicants to clear the way for generic entry.

Jurisdiction
Australia
Judgment Date
19 March 2021
Procedural Posture
Patent Proceeding / Interlocutory Judgment on Summary Dismissal and Strike Out Applications
Outcome
Applications for summary dismissal and strike out dismissed; application for expedited trial granted; respondent's application to amend the cross-claim refused; applicants excused from compliance with notices to produce; costs reserved.
Legal Topics
['patents' 'pharmaceutical Patents' 'compound Claims' 'invalidity' 'failure to Disclose Best Method' 'false Suggestion' 'infringement' 'expedited Trial']
['intellectual Property'] ['patents' 'pharmaceutical Patents' 'compound Claims' 'invalidity' 'failure to Disclose Best Method' 'false Suggestion' 'infringement' 'expedited Trial']

Case Brief

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Procedural Posture

Patent Proceeding / Interlocutory Judgment on Summary Dismissal and Strike Out Applications

Legal Issues

  1. 1 ['Whether claims 1, 4 and 9 of Australian Patent No 715779 are invalid for failure to disclose the best method under s 40(2)(a) Patents Act 1990 (Cth)' 'Whether there was false suggestion or misrepresentation in obtaining the patent under s 138(3)(d) Patents Act 1990 (Cth)' 'Whether parts of the cross-claim related to infringement of other patents should be struck out' 'Whether to grant an expedited trial on invalidity/infringement of the patent in suit']

Ratio Decidendi

Applications for summary dismissal and strike out regarding best method and false suggestion failed; the claims in suit require a trial on their factual and legal boundaries, particularly as to the meaning and characterization of the 'invention' and best method; cross-claim for infringement of other patents not struck out as the applicant's stated intention suffices to found a justiciable issue; grant of expedited trial on issues of invalidity/infringement of the 779 patent is justified to enable applicants to clear the way for generic entry.

Court Disposition

Applications for summary dismissal and strike out dismissed; application for expedited trial granted; respondent's application to amend the cross-claim refused; applicants excused from compliance with notices to produce; costs reserved.

Orders

  • ['Applicants granted leave nunc pro tunc to file and serve amended particulars of invalidity.' "Respondent's application for summary dismissal of parts of applicants' amended particulars of invalidity dismissed." "Applicants' application to strike out parts of the respondent’s cross-claim dismissed." "Respondent's...