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Best Patent Cases 2019 Australia and New Zealand

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Best Patent Cases 2019 Australia and New Zealand Best Patent Cases 2019 Australia and New Zealand ShelstonIP.com Established. Excellence. • Patentees learned some harsh lessons as the Full Court dismissed infringement claims based on the Dear Reader construction of the terms “contains” (construed exhaustively in Nichia) and “recognise” (construed Welcome to Shelston’s wrap-up of the most broadly in Davies). notable patent decisions in Australia and • There were several applications by patentees to New Zealand delivered during 2019. It was amend patent claims and specifications after a busy year for patent jurisprudence with commencing infringement proceedings (Meat some interesting themes emerging – in & Livestock Australia, Neurim, BlueScope), with particular, it has been a banner year for mixed success. decisions on the “manner of manufacture” requirement for patentable subject matter. • Consideration was given in the Patent Office to Australia’s “raised bar” requirements for support and sufficiency Gary( Cox, Universal Polymers). • Both clinical trial patient consent forms (InterPharma) and academic conference posters • An expanded Full Federal Court clarified the (Regeneron) were considered prior art documents “manner of manufacture” test for computer- in life sciences cases. implemented methods to be patentable • There were further decisions regarding families of (Encompass), a topic that was also central to patents that have been litigated for a decade or several other Federal Court (Tettman, Repipe, more (Globaltech, SNF). Watson) and Patent Office Apple( ) decisions. • There were also decisions regarding the • There were also important “manner of admissibility of “WayBackMachine” evidence (Dyno manufacture” decisions in the life sciences space, Nobel), summary dismissal of an infringement case with single judges finding both a diagnostic (Pilkin), a successful application for preliminary method involving a process of detecting genetic discovery (MMD), a failed cross-claim for unjustified material (Sequenom) and use of genetic threats (Liberation), a failed attempt to withdraw information to infer traits (Meat & Livestock admissions relating to infringement (Juno), a Australia) to be patentable subject matter. “strawman” opponent to a patent application • The Full Court confirmed there is no doctrine having to pay security for costs in an appeal despite of patent exhaustion in Australia, the critical winning the opposition (Toolgen) and a party distinction being between repairs permitted by commencing infringement proceedings despite implied or express licence terms brought home to not being a proper exclusive licensee having to pay the purchaser of a product, and the impermissible indemnity costs (Vald). re-making of the product beyond the scope of any • Two recent decisions issued by the Intellectual licence (Calidad (No. 1)). Property Office of New Zealand provide new hope • The Full Court confirmed that a permanent that, in certain circumstances, it may be possible injunction framed in general form by reference to obtain an extension of time to file a divisional to the claims of an infringed patent is generally patent application (Primapak, Magic Leap). appropriate and may be ordered in addition to a As 2020 gets underway, we hope this provides a useful specific injunction describing products or conduct and practical resource and, of course, please do not found to infringe (Calidad No. 2). hesitate to take the opportunity to contact our authors, • The Full Court overturned an award of additional all subject-matter experts in their respective fields, damages for flagrant patent infringement on the for advice on the issues raised by these important basis that the infringer had believed, on objectively decisions. reasonable grounds, that its conduct did not infringe the patent (Oxworks). Editors • The tide continued to turn against pharmaceutical patentees being granted interlocutory injunctions Duncan Longstaff (Mylan, Sanofi-Aventis). Principal (Lawyer) Dr Roshan Evans Lawyer i Shelston IP Established. Excellence. Full Federal Court Decisions Federal Court Decisions Encompass Corporation Pty Ltd v InfoTrack Pty Sequenom, Inc. v Ariosa Diagnostics, Inc. [2019] Ltd [2019] FCAFC 161 (13 September 2019) FCA 1011 (27 June 2019) computer-implemented method life sciences | prenatal testing manner of manufacture | innovative step product of a process | manner of manufacture Page 1 (go to article) Page 16 (go to article) Calidad Pty Ltd v Seiko Epson Corporation [2019] InterPharma Pty Ltd v Hospira, Inc (No 5) [2019] FCAFC 115 (5 July 2019) FCA 960 (20 June 2019) pharmaceutical | clinical trial | consent forms Calidad Pty Ltd v Seiko Epson Corporation (No 2) novelty | method of treatment claims [2019] FCAFC 168 (27 September 2019) Page 18 (go to article) mechanical | patented product | implied licence exhaustion | repair | final injunction Page 3 (go to article) Liberation Developments Pty Ltd v Lomax Group Pty Ltd [2019] FCA 1180 (30 July 2019) mechanical | purposive construction | claim Oxworks Trading Pty Ltd v Gram Engineering construction | infringement | unjustified threats Pty Ltd [2019] FCAFC 240 (23 December 2019) Page 20 (go to article) infringement | additional damages | flagrancy Page 6 (go to article) SNF (Australia) Pty Limited v BASF Australia Ltd [2019] FCA 425 (27 March 2019) Nichia Corporation v Arrow Electronics Australia chemical | mining | inventive step | novelty Pty Ltd [2019] FCAFC 2 (29 January 2019) secret use electrical | construction | “contains” | infringement Page 22 (go to article) inventive step | Cripps question Page 8 (go to article) Technological Resources Pty Limited v Tettman [2019] FCA 1889 (15 November 2019) Globaltech Corporation Pty Ltd v Australian mechanical | electrical | mining Mud Company Pty Ltd [2019] FCAFC 162 manner of manufacture (13 September 2019) Page 24 (go to article) mechanical | mining | claim construction preferred embodiment | infringement Page 10 (go to article) Repipe Pty Ltd v Commissioner of Patents [2019] FCA 1956 (22 November 2019) computer-implemented method Davies v Lazer Safe Pty Ltd [2019] FCAFC 65 manner of manufacture | innovation patent (26 April 2019) Page 28 (go to article) electrical | IT | construction of claims non-infringement Page 12 (go to article) Watson v Commissioner of Patents [2019] FCA 1015 (28 June 2019) Sanofi-Aventis Deutschland GmbH v Alphapharm computer-implemented method | “chilling effect” Pty Ltd [2019] FCAFC 28 (22 February 2019) innovation patent | manner of manufacture pharmaceutical | interlocutory injunction Page 28 (go to article) balance of convenience Page 14 (go to article) ii Shelston IP Established. Excellence. Mylan Health Pty Ltd v Sun Pharma ANZ Pty Ltd Pilkin v Sony Australia Limited (No. 2) [2019] FCA [2019] FCA 28 (22 January 2019) 980 (3 June 2019) pharmaceutical | swiss-style claims electrical | IT | novelty | summary dismissal interlocutory injunction | balance of convenience no reasonable prospects Page 30 (go to article) Page 44 (go to article) MMD Design and Consultancy Limited v Toolgen Incorporated v Fisher [2019] FCA 2158 Camco Engineering Pty Ltd [2019] FCA 1803 (19 December 2019) (7 November 2019) life sciences | security for costs mechanical | mining | preliminary discovery strawman opposition | grounds of cross-appeal reasonable belief Page 46 (go to article) Page 32 (go to article) Vald Performance Pty Ltd v Kangatech Pty Ltd Meat & Livestock Australia Limited v Cargill, Inc [2019] FCA 1880 (13 November 2019) (No 2) [2019] FCA 33 (23 January 2019) licensing | standing as exclusive licensee life sciences | genetic screening litigation procedure | indemnity costs amendment application Page 48 (go to article) discretionary considerations Page 34 (go to article) Neurim Pharmaceuticals (1991) Ltd v Generic Partners Pty Ltd (No 2) [2019] FCA 154 (19 February 2019) pharmaceutical | amendment application during litigation | discretionary considerations Page 36 (go to article) BlueScope Steel Limited v Dongkuk Steel Mill Co., Ltd (No 2) [2019] FCA 2117 (17 December 2019) chemical | best method | constructive notice amendment application Page 38 (go to article) Juno Pharmaceuticals Pty Ltd v Millennium Pharmaceuticals, Inc. [2019] FCA 526 (16 April 2019) pharmaceutical | admissions leave to withdraw | expert opinion Page 40 (go to article) Dyno Nobel Inc v Orica Explosives Technology Pty Ltd (No 2) [2019] FCA 1552 (17 September 2019) mining | wayback machine | evidence hearsay | business records Page 42 (go to article) iii Shelston IP Established. Excellence. Australian Patent Office Decisions Apple, Inc. [2019] APO 32 (19 July 2019) computer-implemented method | opposition manner of manufacture Page 51 (go to article) Gary B Cox v MacroGenics, Inc. [2019] APO 13 (27 March 2019) life sciences | protein-based therapeutic opposition | plausibility | sufficiency Page 53 (go to article) Regeneron Pharmaceuticals, Inc. v Kymab Limited [2019] APO 36 (31 July 2019) life sciences | opposition | “parameteritis” conference posters | prior art Page 55 (go to article) Universal Polymers Pty Ltd v Greenzone Pest Innovations Pty Ltd [2019] APO 23 (20 May 2019) building materials | claim construction sufficiency | support | inventive step Page 57 (go to article) Intellectual Property Office of New Zealand Decisions Primapak LLC [2019] NZIPOPAT 1 (7 January 2019) Magic Leap, Inc. [2019] NZIPOPAT 8 (30 April 2019) IPONZ | divisional applications | extensions corrections Page 59 (go to article) iv Shelston IP Established. Excellence. Snapshot Encompass is the latest Full
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