H. Lundbeck A/S v Sandoz Pty Ltd [2022] HCA 4

H. Lundbeck A/S v Sandoz Pty Ltd [2022] HCA 4

The settlement agreement's non-exclusive licence to Sandoz was effective only in the two weeks before expiration of the original patent and expired at that date; Sandoz's sales during the extended term were not covered by the licence. Exclusive licensees may not bring proceedings under s 79, only patentees may. Patentee's cause of action for damages under s 79 accrues on grant of patent extension, not at time of infringing acts. Sandoz's failure to warn customers about the possibility of patent extension did not constitute misleading or deceptive conduct as the possibility was too remote to be material.

Parties
Appellant: H. Lundbeck A/S; Appellant: Lundbeck Australia Pty Ltd; Appellant: CNS Pharma Pty Ltd; Respondent: Sandoz Pty Ltd
Jurisdiction
Australia
Judgment Date
09 March 2022
Procedural Posture
Appeal / Final Judgment From High Court of Australia
Outcome
Appeal in S22/2021 (Lundbeck) allowed; appeal in S23/2021 (CNS Pharma) dismissed.
Legal Topics
Patent Extension, Infringement Proceedings, Licensing, Contract Interpretation, Misleading or Deceptive Conduct
Intellectual Property Contracts Consumer Law Patent Extension Infringement Proceedings Licensing Contract Interpretation Misleading or Deceptive Conduct

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Parties

H. Lundbeck A/S

Appellant

Lundbeck Australia Pty Ltd

Appellant

CNS Pharma Pty Ltd

Appellant

Sandoz Pty Ltd

Respondent

Procedural Posture

Appeal / Final Judgment From High Court of Australia

Legal Issues

  1. 1 Whether the settlement agreement granted Sandoz an indefinite non-exclusive licence or a licence limited to two weeks before expiry of initial term of the patent
  2. 2 Whether an exclusive licensee may bring infringement proceedings under s 79 of Patents Act 1990 (Cth)
  3. 3 When the patentee's cause of action for damages accrued for purposes of pre-judgment interest

Ratio Decidendi

The settlement agreement's non-exclusive licence to Sandoz was effective only in the two weeks before expiration of the original patent and expired at that date; Sandoz's sales during the extended term were not covered by the licence. Exclusive licensees may not bring proceedings under s 79, only patentees may. Patentee's cause of action for damages under s 79 accrues on grant of patent extension, not at time of infringing acts. Sandoz's failure to warn customers about the possibility of patent extension did not constitute misleading or deceptive conduct as the possibility was too remote to be material.

Court Disposition

Appeal in S22/2021 (Lundbeck) allowed; appeal in S23/2021 (CNS Pharma) dismissed.

Orders

  • In S22/2021: appeal allowed with costs.
  • Set aside Full Court orders made on 4 August 2020 and 30 March 2021; allow appeal and cross-appeal from primary judge's 19 February 2019 orders in part.