Alcon Laboratories (Australia) Pty Ltd v Trustees of Columbia University in the City of New York [2002] FCA 1314

FEDERAL COURT OF AUSTRALIA

Alcon Laboratories (Australia) Pty Ltd v Trustees of Columbia University in the City of New York [2002] FCA 1314 ALCON LABORATORIES (AUSTRALIA) PTY LTD v THE TRUSTEES OF COLUMBIA UNIVERSITY IN THE CITY OF NEW YORK N676 OF 2002 EMMETT J 15 OCTOBER 2002 SYDNEY

IN THE FEDERAL COURT OF AUSTRALIA

NEW SOUTH WALES DISTRICT REGISTRY N676 OF 2002

BETWEEN: ALCON LABORATORIES (AUSTRALIA) PTY LIMITED (ABN 88 000 740 830)

FIRST APPLICANT

ALCON LABORATORIES, INC

SECOND APPLICANT

AND: THE TRUSTEES OF COLUMBIA UNIVERSITY IN THE CITY OF NEW YORK

FIRST RESPONDENT

PHARMACIA AKTIEBOLAG

SECOND RESPONDENT

JUDGE: EMMETT J

DATE OF ORDER: 15 OCTOBER 2002

WHERE MADE: SYDNEY

THE COURT ORDERS THAT:

1. Australian Letters Patent No 625096 ("the Patent") be amended by: (a) deleting claims 1 to 43 of the Patent; (b) inserting claims 1 to 71 as set out in pages 1 to 11 of the Schedule to these orders ("the Schedule"); (c) cancelling page 5 of the Specification on file and substituting therefor page 12 of the Schedule; and (d) cancelling page 21 of the Specification on file and substituting therefor page 13 of the Schedule. Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.

SCHEDULE TO THE ORDERS OF EMMETT J MADE 15 OCTOBER 2002 "1. A method for the treatment of glaucoma or ocular hypertension, comprising topical administration to a mammal of an effective intraocular pressure reducing amount of a therapeutically active and physiologically acceptable prostaglandin derivative of PGA, PGB, PGE or PGF in which the omega chain has the formula: (13) (14) (15-24) C B C - D - R2 or the pharmaceutically acceptable salts thereof, wherein C is a carbon atom (the number is indicated within parenthesis); B is a single bond, a double bond or a triple bond; D is a chain with 1-10 carbon atoms, optionally interrupted by one or more heteroatoms O, S, or N, the substituents on each carbon atom being selected from H, alkyl, carbonyl and hydroxyl groups; R2 is an aromatic ring structure which is unsubstituted or has at least one substituent selected from C1-C5 alkyl, C1-C4 alkoxy, trifluoromethyl, C1-C3 aliphatic acylamino, nitro, halogen and phenyl groups; or R2 is selected from thiazole, imidazole, pyrrolidine, thiophene, oxazole or such like aromatic heterocyclic groups having 5-6 ring atoms; or R2 is a cycloalkane or a cycloalkene with 3-7 carbon atoms in the ring, optionally substituted with lower alkyl groups with 1-5 carbon atoms, with the proviso that, when the said prostaglandin derivative is a derivative of PGE1 in which R2 is substituted or unsubstituted phenyl, benzyl or phenoxy, then the carbon at position 6 of the alpha chain cannot be substituted by hydroxy. 2. [12] The [A] method according to claim 1 [any one of claims 1 to 11], wherein the prostaglandin derivative is an alkyl ester. New claim 3. The method according to claim 1 or 2, wherein the alpha chain of the prostaglandin derivative has the formula: