Orion Corporation v Actavis Pty Ltd (No 3) [2015] FCA 1373

Orion Corporation v Actavis Pty Ltd (No 3) [2015] FCA 1373

The 2014 licence used the statutory terminology of an exclusive licence and, construed objectively in its commercial and legal context, granted Novartis the full congeries of rights of an exclusive licensee under the Patents Act 1990 (Cth). Clause 2 was an independent purchase promise and did not qualify or derogate from the plenary grant in cl 1. Novartis therefore had title to sue from 7 March 2014. Novartis Australia, as assignee of exclusive rights under the 2014 sub-licence, had an interest in the patent and was a proper and necessary party with title to sue from 11 March 2014. Given the parties' relative successes and failures, Actavis should pay two-thirds of the applicants' costs...

Jurisdiction
Australia
Judgment Date
04 December 2015
Procedural Posture
Patent Infringement and Revocation Proceedings / Post Trial Determination of Title to Sue and Costs Issues
Outcome
Declarations made that the second and third applicants were proper and necessary parties with title to sue from 7 March 2014 and 11 March 2014 respectively; respondents ordered to pay two-thirds of the applicants' costs subject to costs thrown away orders against the second and third applicants.
Legal Topics
['exclusive Licence' 'exclusive Sub Licence' 'title to Sue' 'patent Infringement Proceedings' 'patent Revocation Proceedings' 'contract Construction' 'costs']
['intellectual Property' 'patents' 'contracts'] ['exclusive Licence' 'exclusive Sub Licence' 'title to Sue' 'patent Infringement Proceedings' 'patent Revocation Proceedings' 'contract Construction' 'costs']

Case Brief

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Procedural Posture

Patent Infringement and Revocation Proceedings / Post Trial Determination of Title to Sue and Costs Issues

Legal Issues

  1. 1 ['Whether Novartis Pharma AG had title to sue as an exclusive licensee of the patent from 7 March 2014.' 'Whether cl 2 of the 2014 licence qualified or derogated from the grant of an exclusive licence in cl 1 by reserving manufacture rights to Orion.' 'Whether Novartis Pharmaceuticals (Australia) Pty Ltd had title to sue or was a proper and necessary party by reason of the 2014 sub-licence from 11 March 2014.' 'What costs orders should be made after mixed success in the claim and cross-claim and the standing issue.']

Ratio Decidendi

The 2014 licence used the statutory terminology of an exclusive licence and, construed objectively in its commercial and legal context, granted Novartis the full congeries of rights of an exclusive licensee under the Patents Act 1990 (Cth). Clause 2 was an independent purchase promise and did not qualify or derogate from the plenary grant in cl 1. Novartis therefore had title to sue from 7 March 2014. Novartis Australia, as assignee of exclusive rights under the 2014 sub-licence, had an interest in the patent and was a proper and necessary party with title to sue from 11 March 2014. Given the parties' relative successes and failures, Actavis should pay two-thirds of the applicants' costs...

Court Disposition

Declarations made that the second and third applicants were proper and necessary parties with title to sue from 7 March 2014 and 11 March 2014 respectively; respondents ordered to pay two-thirds of the applicants' costs subject to costs thrown away orders against the second and third applicants.

Orders

  • ['It be declared that: (a) on and after 7 March 2014 the second applicant was; and (b) on and after 11 March 2014 the third applicant was a proper and necessary party to the proceedings and had title to sue for the relief claimed in the originating application.' "Subject to order 3 below, the respondents pay...