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Best Patent Cases 2020 Australia and New Zealand

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Best Patent Cases 2020 Australia and New Zealand Best Patent Cases 2020 Australia and New Zealand ShelstonIP.com Established. Excellence. • In an unprecedented decision, the Federal Court of Australia has considered and dismissed Dear Reader a claim by the Commonwealth Government for compensation from sponsors of innovator Welcome to Shelston IP’s wrap-up of pharmaceutical products, pursuant to the most notable patent law decisions undertakings as to damages given in exchange in Australia and New Zealand delivered for an interlocutory (preliminary) injunction during 2020. restraining the launch of the first generic product (Commonwealth v Sanofi). • A party which gave undertakings not to launch • The High Court of Australia has endorsed an allegedly infringing biosimilar without first the doctrine of exhaustion, but made clear giving notice successfully resisted an application the critical question remains whether the for preliminary discovery (Pfizer v Sandoz). modifications made to a product in each case are Conversely preliminary discovery was granted properly characterised as permissible repair or against a former employee, but limited in scope impermissible re-making (Calidad v Seiko Epson). due to financial circumstances Sovereign( v Steynberg). • An enlarged Full Federal Court has confirmed that a protocol for a clinical trial can be novelty- • Extension of term applications were refused for defeating. The Full Court has also provided pharmaceutical patents (Pharma Mar, Ono). important guidance on the nature and scope of • An opposition to an Australian patent application Swiss-style claims (Mylan v Sun). based solely on a challenge to entitlement was • The Full Federal Court has found that a computer- successful (Liquid Time v Smartpak). implemented method that linked website users • The Federal Court considered the applicability of to online advertising was not patentable subject the Crown use defence to infringement, and the matter (Commissioner of Patents v Rokt). In effect of prior disclosures by the Crown on validity separate decisions, a computer-implemented (Axent v Compusign). method relating to “sandboxing” (Facebook) and an invention relating to the hardware and software • The nature and detail of disclosures in prior art components of an electronic gaming machine and the common general knowledge proved (Aristocrat v Commissioner of Patents) were held determinative of the validity in decisions to be patent-eligible, while a modified roulette table concerning a combination pharmaceutical was found not to be (Crown). product (Boehringer v Intervet) and a parking • The Full Federal Court has confirmed that section management system (Vehicle Monitoring 105(1A) of the Patents Act 1990 (Cth), confers on the Systems v SARB). Federal Court the power to direct amendments to • The construction of claims in the context of the patent applications during the course of an entire specification proved determinative of opposition appeal hearing (Meat and Livestock infringement and validity in several oppositions Australia v Branhaven). (Caffitaly v One Collective, Nufarm v Dow, CQMS • In the long-running patent dispute relating v ESCO). to Lundbeck’s antidepressant, Lexapro • The Intellectual Property Office of New Zealand has (escitalopram), the Full Court of the Federal Court delivered decisions demonstrating the difficulty of overturned a decision that had found Sandoz opposing an application under the “old” 1953 Act liable for patent infringement during the (Lonza v Koppers), the high burden for computer- extended term of a patent after it was restored, implemented methods (Thomson Reuters) and and awarded damages (Sandoz v Lundbeck). the more onerous support requirements under the • The Federal Court provided its first detailed analysis “new” 2013 Act (Taiho Pharmaceutical). of the Raising the Bar reforms to Australian patent law concerning sufficiency and support. Please do not hesitate to take the opportunity to A subsequent judgment on final relief highlights contact our authors, all subject-matter experts in their the challenges facing a defendant who seeks respective fields, for advice on the issues raised by to resist final injunctive relief on public interest these important decisions. grounds (Merck Sharp & Dohme v Wyeth). Those sufficiency and support requirements, as well as Editors best method, were also considered in detail by the Australian Patent Office (University of British Duncan Longstaff (Principal, Lawyer) Columbia, Gliknik v CSL). Dr Roshan Evans (Lawyer) 2 Shelston IP Established. Excellence. High Court Decisions Federal Court Decisions 7. Merck Sharp & Dohme Corporation v Wyeth 1. Calidad Pty Ltd and Others v Seiko Epson LLC (No 3) [2020] FCA 1477 Corporation and Another [2020] HCA 41 | mechanical | infringement | doctrine Merck Sharp & Dohme Corporation v Wyeth of exhaustion | LLC (No 4) [2020] FCA 1719 Page 6 (go to article) | biotechnology | construction of “comprising” | support | sufficiency | Page 22 (go to article) Full Federal Court Decisions 8. Commonwealth of Australia v Sanofi (No 5) 2. Mylan Health Pty Ltd v Sun Pharma ANZ Pty [2020] FCA 543 Ltd [2020] FCAFC 116 | pharmaceutical | damages | voluntary | pharmaceutical | novelty | inventive step undertakings | commonwealth claim | clinical trial protocols | Swiss-style claims | remoteness | Page 9 (go to article) Page 25 (go to article) 3. Commissioner of Patents v Rokt Pte Ltd 9. Commonwealth Scientific and Industrial [2020] FCAFC 86 Research Organisation v BASF Plant Science | information technology | manner of GmbH [2020] FCA 328 manufacture | computer-implemented | biotechnology | support | added subject invention | matter | intermediate generalisation | Page 13 (go to article) Page 27 (go to article) 4. Meat and Livestock Australia Ltd v Branhaven 10. Pfizer Ireland Pharmaceuticals v Sandoz Pty LLC [2020] FCAFC 171 Ltd [2020] FCA 1648 | biotechnology | patent application | biotechnology | biosimilars | preliminary amendments | court’s power to direct discovery | undertakings | amendments | Page 30 (go to article) Page 15 (go to article) 11. Boehringer Ingelheim Animal Health USA Inc 5. Sandoz Pty Ltd v H Lundbeck A/S v Intervet International B.V. [2020] FCA 1333 [2020] FCAFC 133 | pharmaceutical | escitalopram Boehringer Ingelheim Animal Health USA Inc. construction of contractual term | damages | v Intervet International B.V. (No 2) [2020] FCA 1433 Page 17 (go to article) | pharmaceutical | animal vaccines | Patent Office opposition appeal | validity | costs | 6. Pilkin v Sony Australia Limited [2020] FCAFC 51 Page 32 (go to article) | electronic | novelty | summary dismissal | service out of jurisdiction | 12. Axent Holdings Pty Ltd t/a Axent Global v Page 20 (go to article) Compusign Australia Pty Ltd [2020] FCA 1373 | mechanical | Crown use defence | Crown disclosure | extension of prescribed period | Page 35 (go to article) Shelston IP Established. Excellence. 3 13. Caffitaly System S.p.A v One Collective Group 20. Facebook, Inc. [2020] APO 19 Pty Ltd [2020] FCA 803 | information technology | manner of | mechanical | infringement | novelty | manufacture | computer-implemented inventive step | invention | Page 37 (go to article) Page 53 (go to article) 14. Vehicle Monitoring Systems Pty Limited v SARB Management Group Pty Ltd trading as 21. CQMS Pty Ltd v ESCO Group LLC [2020] APO 14 Database Consultants Australia [2020] FCA 6 CQMS Pty Ltd v ESCO Group LLC [2020] APO 24 | electronic | infringement | Anshun estoppel | CQMS Pty Ltd v ESCO Group LLC [2020] APO 53 Page 39 (go to article) CQMS Pty Ltd v ESCO Group LLC [2020] APO 54 | mechanical | patent office opposition | support 15. Vehicle Monitoring Systems Pty Ltd v SARB novelty | inventive step | Management Group Pty Ltd [2020] FCA 408 Page 55 (go to article) | electronic | post-raising the bar provisions | claim construction | inventive step | Page 42 (go to article) 22. Ono Pharmaceutical Co., Ltd. et al [2020] APO 43 | pharmaceutical | APO | extension of term | 16. Aristocrat Technologies Australia Pty Limited v Commissioner of Patents [2020] FCA 778 Page 58 (go to article) | mechanical | manner of manufacture | computer-implemented invention | hardware 23. Crown Melbourne Limited [2020] APO 47 Page 45 (go to article) | mechanical | manner of manufacture | gaming apparatus | 17. Sovereign Hydroseal Pty Ltd v Steynberg Page 60 (go to article) [2020] FCA 1084 | mechanical | preliminary discovery | 24. The University of British Columbia reasonable belief | ex-employee | [2020] APO 15 confidential information | | biotechnology | examination hearing | Page 47 (go to article) sufficiency support | best method | Page 62 (go to article) 25. Liquid Time Pty Ltd v Smartpark Australian Patent TechnologiesLLC [2020] APO 48 Office Decisions | mechanical | patent office opposition inventorship | entitlement | 18. Nufarm Australia Limited v Dow AgroSciences, Page 64 (go to article) LLC [2020] APO 10 | chemical | examination | product by process claims obtained | obtainable | 26. Gliknik, Inc. v CSL Behring Lengnau AG [2020] Page 49 (go to article) APO 46 | biotechnology | patent office opposition | Swiss-style claims | support | plausibility | 19. Pharma Mar SA [2020] APO 8 Page 66 (go to article) | pharmaceutical | patent term extension | kit or combination | pharmaceutical substance per se | Page 51 (go to article) 4 Shelston IP Established. Excellence. Intellectual Property Office of New Zealand Decisions 27. Lonza NZ Limited v Koppers Performance Chemicals New Zealand [2020] NZIPOPAT 4 | chemical | IPONZ | opposition proceeding
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