Novartis AG v Pharmacor Pty Limited [2023] FCA 804

Novartis AG v Pharmacor Pty Limited [2023] FCA 804

Discovery should be ordered against both Novartis AG and Novartis Pharmaceuticals Australia Pty Limited, but the scope of discovery is limited to documents relating to pharmaceutical compositions comprising valsartan (or its pharmaceutically acceptable salt), sacubitril or sacubitrilat (or their pharmaceutically acceptable salts), and a pharmaceutically acceptable carrier, where valsartan and the NEP inhibitor are associated by non-covalent bonds, created between 16 January 1998 and 16 January 2003. The broader category proposed by Pharmacor regarding any NEP inhibitor is not warranted. The category is sufficiently certain when expressed in these terms, and the burden of discovery on...

Jurisdiction
Australia
Judgment Date
14 July 2023
Procedural Posture
Interlocutory Application for Discovery in Patent Proceeding / Ruling on Discovery Dispute and Pre Trial Procedural Orders
Outcome
Discovery ordered as modified; procedural timetable progressed; costs reserved.
Legal Topics
['patents' 'discovery' 'best Method Requirement' 'infringement' 'revocation']
['intellectual Property Law'] ['patents' 'discovery' 'best Method Requirement' 'infringement' 'revocation']

Case Brief

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Procedural Posture

Interlocutory Application for Discovery in Patent Proceeding / Ruling on Discovery Dispute and Pre Trial Procedural Orders

Legal Issues

  1. 1 ["Whether discovery should be granted relating to Novartis' knowledge of pharmaceutical compositions within patent claim 1 at the filing date" 'Whether the discovery category should be limited to certain NEP inhibitors' 'Whether both Novartis AG and Novartis Pharmaceuticals Australia Pty Ltd should give discovery' 'Whether the patent specification complies with the best method requirement under s 40(2)(a) Patents Act 1990 (Cth)']

Ratio Decidendi

Discovery should be ordered against both Novartis AG and Novartis Pharmaceuticals Australia Pty Limited, but the scope of discovery is limited to documents relating to pharmaceutical compositions comprising valsartan (or its pharmaceutically acceptable salt), sacubitril or sacubitrilat (or their pharmaceutically acceptable salts), and a pharmaceutically acceptable carrier, where valsartan and the NEP inhibitor are associated by non-covalent bonds, created between 16 January 1998 and 16 January 2003. The broader category proposed by Pharmacor regarding any NEP inhibitor is not warranted. The category is sufficiently certain when expressed in these terms, and the burden of discovery on...

Court Disposition

Discovery ordered as modified; procedural timetable progressed; costs reserved.

Orders

  • ['By 4.00 pm on 17 August 2023, the applicants give discovery by reasonable search of documents set out in the Annexure to the orders, excluding duplicates, in the manner specified.' 'Applicants may exclude or redact documents subject to privilege when providing inspection.' 'Costs of the interlocutory application...