Actavis Pty Ltd v Orion Corporation (No 2) [2016] FCAFC 159

FEDERAL COURT OF AUSTRALIA

Actavis Pty Ltd v Orion Corporation (No 2) [2016] FCAFC 159 Appeal from: Orion Corporation v Actavis Pty Ltd [2015] FCA 909 Orion Corporation v Actavis Pty Ltd (No 2) [2015] FCA 1026 Orion Corporation v Actavis Pty Ltd (No 3) (2015) 116 IPR 102; [2015] FCA 1373

File number: NSD 1207 of 2015

Judges: ALLSOP CJ, NICHOLAS AND YATES JJ

Date of judgment: 23 November 2016

Catchwords: COSTS – where appeal succeeds in part – whether costs should be apportioned

Cases cited: Actavis Pty Ltd v Orion Corporation [2016] FCAFC 121

Date of hearing: Determined on the papers

Date of last submissions: 30 September 2016

Registry: New South Wales

Division: General Division

National Practice Area: Intellectual Property

Sub-area: Patents and associated Statutes

Category: Catchwords

Number of paragraphs: 22

Counsel for the Appellants: Mr JS Cooke

Solicitor for the Appellants: Ashurst Australia

Counsel for the Respondents: Mr C Dimitriadis SC with Mr C Burgess

Solicitor for the Respondents: Clayton Utz

ORDERS NSD 1207 of 2015

BETWEEN: ACTAVIS PTY LIMITED (ACN 003 854 626) (and another named in the Schedule) First Appellant

AND: ORION CORPORATION (and others named in the Schedule) First Respondent

JUDGES: ALLSOP CJ, NICHOLAS AND YATES JJ DATE OF ORDER: 23 NOVEMBER 2016

THE COURT ORDERS THAT:

1. The appeal be allowed in part. 2. The orders made on 16 September 2015 in NSD 2456 of 2013 be varied by: (a) deleting the reference to claims 17 and 18 in the declaration made in Order 1, so that it reads: 1. The Respondents and each of them have threatened to infringe each of claims 19, 20, 21 and 22 (insofar as dependent on claims 19 to 21) of Australian Patent No. 765932 (932 Patent). (b) deleting the references to claims 17 and 18 in Order 3, so that it reads: 3. Subject to Order 4, the Respondents and each of them, whether by themselves, their directors, officers, servants, agents or otherwise, be restrained, during the term of the 932 Patent, from infringing or threatening to infringe claims 19, 20, 21 and 22 (insofar as dependent on claims 19 to 21) of the 932 Patent and, in particular, from engaging in the following acts within Australia without the licence or authority of the Applicants: (a) making, selling, supplying or otherwise disposing of any LCE Product (as defined in Attachment A to this order); (b) offering to make, sell, supply or otherwise dispose of any LCE Product; (c) using or importing any LCE Product; (d) keeping any LCE Product for the purpose of doing any of the acts referred to in sub-paragraphs (a) to (c) above; (e) authorising, inducing, procuring or joining in a common design with other persons to engage in any of the acts referred to in sub-paragraphs (a) to (d) above, including the use of any LCE Product in a method of treating Parkinson's disease; (f) applying for, or taking any other step to obtain, the listing on the Schedule of Pharmaceutical Benefits of any LCE Product, including the pharmaceutical products registered on the Australian Register of Therapeutic Goods under the proprietary names LECAEN, CARLEVENT and ENTACAPONE COMBI ACTAVIS (formerly LECARENT); and (g) making or maintaining any commitment or guarantee to supply in connection with any application to list any LCE Product on the Schedule of Pharmaceutical Benefits other than as permitted by section 119A or 119C of the Patents Act 1990 (Cth). (c) deleting the references to claims 17 and 18 in Attachment A to those orders. 3. Orders 1, 2 and 3 made on 4 December 2015 in NSD 2456 of 2013 be set aside and in lieu thereof the following orders be made: 1. It be declared that: (a) on and after 7 March 2014 the Second Applicant was a proper party to the proceeding and had title to sue for the relief claimed in the Originating Application; (b) on and after 30 May 2014 the Third Applicant was a proper party to the proceeding in its capacity as a respondent to the cross-claim; (c) the Third Applicant did not have standing to sue for infringement. 2. The claim for infringement brought by the Third Applicant be dismissed. 3. Subject to order 4 below, the Respondents pay 60% of: (a) the First and Second Applicants' costs of the claim and cross-claim; and (b) the Third Applicant's costs of the cross-claim. 4. The Second and Third Applicants respectively pay the costs of the Respondents thrown away that were incurred in respect of: (a) the joinder of the Second and Third Applicants up to 7 March 2014; and (b) the participation of the Third Applicant in the proceeding thereafter in the capacity of an applicant (but not, for the avoidance of doubt, any costs associated with the participation of the Third Applicant in the proceeding thereafter as a cross-respondent). 4. The Appellants pay 80% of the Respondents' costs of and incidental to the appeal. Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.