Merck & Co Inc v Genrx Pty Ltd [2006] FCA 1407

Merck & Co Inc v Genrx Pty Ltd [2006] FCA 1407

The proposed importation of GenRx's products containing AMT would infringe Merck's patent unless the patent were invalid. Although GenRx's lack of novelty case had limited prospects, there was a serious question to be tried. However, Merck would likely suffer losses that would be difficult to assess precisely, GenRx had knowingly arranged to enter the market despite Merck's patent rights, and the balance of convenience favoured maintaining the statutory patent protection until final determination. Interlocutory injunctive relief was therefore granted.

Jurisdiction
Australia
Judgment Date
31 October 2006
Procedural Posture
Patent Infringement Proceeding / Interlocutory Application for Injunctive Relief
Outcome
Interlocutory injunction granted; respondent ordered to pay the applicants' costs of the interlocutory application.
Legal Topics
['interlocutory Injunction' 'patent Infringement' 'patent Validity' 'novelty' 'pharmaceutical Products']
['patents' 'equity'] ['interlocutory Injunction' 'patent Infringement' 'patent Validity' 'novelty' 'pharmaceutical Products']

Case Brief

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Procedural Posture

Patent Infringement Proceeding / Interlocutory Application for Injunctive Relief

Legal Issues

  1. 1 ["Whether the respondent should be restrained on an interlocutory basis from importing pharmaceutical products containing the applicants' patented compound." 'Whether there was a serious question to be tried that the patent was invalid for lack of novelty in light of the Rosini patent.' 'Whether damages would be an adequate remedy for the applicants if interlocutory relief were refused.' 'Whether the balance of convenience favoured the grant of interlocutory injunctive relief.']

Ratio Decidendi

The proposed importation of GenRx's products containing AMT would infringe Merck's patent unless the patent were invalid. Although GenRx's lack of novelty case had limited prospects, there was a serious question to be tried. However, Merck would likely suffer losses that would be difficult to assess precisely, GenRx had knowingly arranged to enter the market despite Merck's patent rights, and the balance of convenience favoured maintaining the statutory patent protection until final determination. Interlocutory injunctive relief was therefore granted.

Court Disposition

Interlocutory injunction granted; respondent ordered to pay the applicants' costs of the interlocutory application.

Orders

  • ['Upon the applicants giving the usual undertaking as to damages, until judgment or further order, the respondent, whether by itself, its servants, agents or otherwise howsoever, be restrained from importing into Australia the products identified as APO-ALENDRONATE (ARTG No 123863), GENRX ALENDRONATE (ARTG No...