Federal Court of Australia
FEDERAL COURT OF AUSTRALIA Sandoz AG v Bayer Intellectual Property GmbH [2024] FCAFC 135 Appeal from: Sandoz AG v Bayer Intellectual Property GmbH [2023] FCA 1321
File number(s): VID 976 of 2023
Judgment of: YATES, BURLEY AND DOWNES JJ
Date of judgment: 23 October 2024
Catchwords: PATENTS – whether skilled person could be reasonably expected to have ascertained international patent publication – where patent database would have been one of the databases searched by person skilled in the art – where expert provided with search results which formed a subset of larger set of search results which would have been derived from broader search conducted by person skilled in the art – whether primary judge erred in finding that patent publication would not have been ascertained within meaning of s7(3) Patents Act 1990 (Cth) – error established PATENTS – whether inventions involved an inventive step – where primary judge found that the skilled person would be directly led to select compound disclosed in international patent publication as a lead candidate to take into further drug development work – where primary judge found that hypothetical skilled person would not have requisite expectation of success – whether primary judge applied incorrect legal test – error shown – appeal allowed
Legislation: Patents Act 1990 (Cth) s 7
Aspirating IP Ltd v Vision Systems Limited (2010) 88 IPR 52; [2010] FCA 1061 AstraZeneca AB v Apotex Pty Ltd (2015) 257 CLR 356; [2015] HCA 30 Commissioner of Taxation v Peabody (1994) 181 CLR 359 Generic Health Pty Ltd v Bayer Pharma Aktiengesellschaft (2014) 222 FCR 336; [2014] FCAFC 73 Hanwha Solutions Corp v REC Solar Pte Ltd [2023] FCA 1017 Merck Sharp & Dohme Corporation v Wyeth LLC (No 3) (2020) 155 IPR 1; [2020] FCA 1477 Cases cited: Minnesota Mining & Manufacturing Company v Tyco Electronics Pty Ltd (2002) 56 IPR 248; [2002] FCAFC 315 Mylan Health Pty Ltd v Sun Pharma ANZ Pty Ltd (2020) 279 FCR 354; [2020] FCAFC 116 Nichia Corporation v Arrow Electronics Australia Pty Ltd (2019) 175 IPR 187; [2019] FCAFC 2 Otsuka Pharmaceutical Co Ltd v Generic Health Pty Ltd (No 4) (2015) 113 IPR 191; [2015] FCA 634 Pharmacia LLC v Juno Pharmaceuticals Pty Ltd (2022) 165 IPR 200; [2022] FCA 92 Pharmacia LLC v Juno Pharmaceuticals Pty Ltd (2022) 168 IPR 431; [2022] FCAFC 167 Sandoz AG v Bayer Intellectual Property GmbH [2023] FCA 1321 Wellcome Foundation Ltd v VR Laboratories (Aust) Pty Ltd (1981) 148 CLR 262
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