Generic Health Pty Ltd v Bayer Pharma Aktiengesellschaft [2018] FCAFC 183

FEDERAL COURT OF AUSTRALIA

Generic Health Pty Ltd v Bayer Pharma Aktiengesellschaft [2018] FCAFC 183 Appeal from: Bayer Pharma Aktiengesellschaft v Generic Health Pty Ltd [2017] FCA 250; 124 IPR 23 Bayer Pharma Aktiengesellschaft v Generic Health Pty Ltd [2017] FCA 428

File number: NSD 717 of 2017

Judges: ALLSOP CJ, YATES AND BEACH JJ

Date of judgment: 24 October 2018

Catchwords: PATENTS – infringement – pharmaceutical product – oral contraceptive – combination of ethinylestradiol and drospirenone – s 115(1)(a) of Patents Act 1990 (Cth) – whether specification framed in good faith and with reasonable skill and knowledge – corporate patentee – drafter taken to have patentee's knowledge – knowledge patentee reasonably should be taken to have had DAMAGES – loss of profits on lost sales – quantification of damages – compensatory – estimation – probabilities of hypothetical counterfactual – loss of opportunity – value of loss of opportunity – whether sale of each infringing product resulted in a lost sale of patented product – uncertainty – appropriate discount – whether other oral contraceptives substitutable – five-step methodology – price depression – sale of patentee's own generic product – reasonable response by patentee – causation – remoteness – relevant sales period to address price depression – pre-judgment interest – interest assessed on pre-tax loss – indemnity costs – r 25.14(3) of Federal Court Rules 2011 (Cth) – appeal allowed in part

Legislation: Federal Court of Australia Act 1976 (Cth), s 28 Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (Cth) Letters Patent for Invention Act 1835 (UK), s 1 (repealed) Patent Law Amendment Act 1852 (UK) (repealed) Patents Act 1899 (NSW), s 19 (repealed) Patents Act 1889 (Vic), s 26 (repealed) Patents Act 1903 (Cth), s 82 (repealed) Patents Act 1949 (UK), s 59(3) (repealed) Patents Act 1952 (Cth), ss 87 (repealed), 159B (repealed) Patents Act 1962 (Cth), s 17 (repealed) Patents Act 1969 (Cth), s 35 (repealed) Patents Act 1977 (UK), ss 62(3), 63(2) Patents Act 1990 (Cth), ss 40(2)(a), 40(3), 115(1)(a), 138(3)(e) Patents Amendment Act 1979 (Cth), s 66 (repealed) Patents and Designs Act 1907 (UK), s 23 (repealed) Patents and Designs Act 1932 (UK) (repealed) Patents, Designs, and Trade Marks Act 1883 (UK), ss 18 (repealed), 19 (repealed), 20 (repealed) Federal Court Rules 2011 (Cth), rr 1.35, 25.14(3)