Warner-Lambert Company LLC v Apotex Pty Ltd [2014] FCAFC 59

FEDERAL COURT OF AUSTRALIA

Warner-Lambert Company LLC v Apotex Pty Ltd [2014] FCAFC 59 Citation: Warner-Lambert Company LLC v Apotex Pty Ltd [2014] FCAFC 59

Appeal from: Warner-Lambert Company LLC v Apotex Pty Ltd [2014] FCA 241

Parties: WARNER-LAMBERT COMPANY LLC, PF PRISM CV, PFIZER IRELAND PHARMACEUTICALS, PFIZER ASIA PACIFIC PTE LTD and PFIZER AUSTRALIA PTY LTD (ACN 008 422 348) v APOTEX PTY LTD (ACN 096 916 148)

File number: NSD 287 of 2014

Judges: ALLSOP CJ, JAGOT & NICHOLAS JJ

Date of judgment: 19 May 2014

Catchwords: APPEAL – appeal against primary judge's refusal to grant interlocutory injunction restraining alleged patent infringement – where application for interlocutory injunction based solely on threatened contravention of s 117(1) when read with s 117(2)(b) of Patents Act 1990 (Cth) – where primary judge not satisfied appellants had established prima facie case – where primary judge found that appellants' case that pharmacists would not be deterred from engaging in product substitution was unsupported by evidence – whether primary judge erred in failing to give any weight to expert evidence called by appellants – whether such evidence was mere conjecture and assertion – whether conflict of expert evidence capable of resolution on application for interlocutory injunction – whether balance of convenience favoured grant of interlocutory injunction; PATENTS – where application for interlocutory injunction based solely on threatened contravention of s 117(1) when read with s 117(2)(b) of the Patents Act 1990 (Cth) – where patent for method of use for pharmaceutical compound known as pregabalin in the treatment of pain – where respondent's products indicated for the treatment of different condition – where respondent's products capable of infringing and non-infringing use – whether respondent had requisite "reason to believe" for the purposes of s 117(2)(b) – significance of treatment indications – significance of approved product information – significance of respondent's proposed written directions to doctors and pharmacists – whether prima facie case of threatened patent infringement – whether balance of convenience favoured grant of interlocutory injunction; Held: Appeal allowed; interlocutory injunction granted.