Sandoz Pty Ltd v H. Lundbeck A/S [2020] FCAFC 133

FEDERAL COURT OF AUSTRALIA

Sandoz Pty Ltd v H. Lundbeck A/S [2020] FCAFC 133 Appeal from: H. Lundbeck A/S v Sandoz Pty Ltd [2018] FCA 1797 H Lundbeck A/S v Sandoz Pty Ltd (No 2) [2019] FCA 46

File numbers: NSD 22 of 2019 NSD 23 of 2019

Judges: NICHOLAS, YATES AND BEACH JJ

Date of judgment: 4 August 2020

Catchwords: CONTRACTS – proper construction of settlement agreement compromising patent proceedings – effect of clause granting appellant licence to exploit patent prior to its expiry – where clause specified possible commencement dates but no end date – whether licence continued to apply in relation to acts occurring after expiry of term of the patent and before the term was subsequently extended – consideration of surrounding circumstances known to the three parties to settlement agreement and commercial purpose or objects of transaction – whether on appellant's construction the settlement agreement produced a commercially nonsensical result – whether settlement agreement provided appellant with a defence to infringement proceeding PATENTS – s 223(10) of the Act – whether patent the term of which was extended after having previously expired was a patent which had "ceased" and was later "restored" within the meaning of s 223(10)(b) of the Act – whether s 223(10)(b) of the Act provided appellant with a defence to infringement proceedings PATENTS – s 79 of the Patents Act 1990 (Cth) ("the Act") – whether exclusive licensee may commence proceeding for patent infringement for acts done during period between date of expiry of patent and date on which term of patent is subsequently extended PATENTS – whether deed of agreement appointing subsidiary exclusive licensee of patent was varied by settlement agreement authorising appellant to exploit invention – whether settlement agreement deprived subsidiary of its status under deed of agreement as exclusive licensee PATENTS – s 79 of the Act – date on which patentee's cause of action arises where patentee's right to commence proceeding depends on operation of s 79 of the Act – whether s 51A(1) of Federal Court of Australia Act 1976 (Cth) authorised award of pre-judgment interest in respect of damages suffered by patentee prior to the extension of term of patent