Federal Court of Australia
FEDERAL COURT OF AUSTRALIA
Otsuka Pharmaceutical Co., Ltd v Generic Health Pty Ltd (No 2) [2016] FCAFC 111 Appeal from: Otsuka Pharmaceutical Co., Ltd v Generic Health Pty Ltd (No 4) (2015) 113 IPR 191; [2015] FCA 634
File number: NSD 837 of 2015
Judges: BESANKO, NICHOLAS AND BEACH JJ
Date of judgment: 24 August 2016
Catchwords: PATENTS – appeal against decision of primary judge that appellants' claims were invalid for lack of novelty and lack of inventive step – where primary judge held respondent would have infringed appellants' claims had they been valid – where patent concerns carbostyril compound called aripiprazole and its use in treatment of schizophrenia – where primary judge held features of claims accretions to knowledge or arbitrary not sufficient to give rise to novelty – whether primary judge's conclusions about novelty and inventive step based on a flawed construction of the claims – whether primary judge erred in not construing a feature as an essential feature or integer of a claim – whether primary judge erred in finding a feature arbitrary
Legislation: Patents Act 1990 (Cth) ss 7, 13, 117
Cases cited: Actavis UK Ltd v Janssen Pharmaceuticals NV [2008] FSR 35 Actavis UK Ltd v Merck & Co Inc [2009] 1 WLR 1186 Apotex Pty Ltd v Sanofi-Aventis Australia Pty Limited [2013] HCA 50; (2013) 304 ALR 1 Bristol-Myers Squibb v Baker Norton Pharmaceuticals Inc [1999] RPC 253 British Celanese, Ltd v Courtaulds, Ltd (1935) 52 RPC 171 EISAI/Second Medical Indication (G05/83) [1979-85] EPOR B241 Electric and Musical Industries, Ld and Boonton Research Corporation, Ltd v Lissen, Ltd and another (1939) 56 RPC 23 Fresenius Medical Care Australia Pty Ltd v Gambro Pty Ltd and Another [2005] FCAFC 220; (2005) 67 IPR 230 General Tire & Rubber Company v Firestone Tyre and Rubber Company Limited and Others [1972] RPC 457 Kinabalu Investments Pty Ltd v Barron and Rawson Pty Ltd [2008] FCAFC 178 Lockwood Security Products Pty Ltd v Doric Products Pty Ltd [No 2] [2007] HCA 21; (2007) 235 CLR 173 Martin v Scribal Proprietary Limited (1954) 92 CLR 17 MOBIL/Friction Reducing Additive (G02/88) [1990] EPOR 73 Osram Lamp Works Ld v Pope's Electric Lamp Company Ld (1917) 34 RPC 369 Raychem Corporation's Patents [1998] RPC 31 Root Quality Pty Ltd and Another v Root Control Technologies Pty Ltd and Others [2000] FCA 980; (2000) 49 IPR 225 Sartas No 1 v Koukourou & Partners Pty Ltd and Another (1994) 30 IPR 479 Blanco White TA, Patents for inventions and the protection of industrial designs (5th ed, Stevens, 1983)
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