FEDERAL COURT OF AUSTRALIA Sigma Pharmaceuticals (Australia) Pty Ltd v Wyeth (No 2) [2010] FCA 1212 Citation: Sigma Pharmaceuticals (Australia) Pty Ltd v Wyeth (No 2) [2010] FCA 1212 Parties: SIGMA PHARMACEUTICALS (AUSTRALIA) PTY LTD v WYETH and WYETH AUSTRALIA PTY LIMITED ALPHAPHARM PTY LIMITED v WYETH and WYETH AUSTRALIA PTY LIMITED GENERIC HEALTH PTY LTD v WYETH and WYETH AUSTRALIA PTY LIMITED File numbers: VID 195 of 2009 NSD 596 of 2009 NSD 1124 of 2009 Judge: JAGOT J Date of judgment: 8 November 2010 Catchwords: PATENTS – patent held valid and infringed – relief pending appeal – stay of injunction – whether undertakings appropriate COSTS – proceedings heard together – whether usual orders as to costs should be made – whether apportionment of costs appropriate PRACTICE AND PROCEDURE – confidentiality of part of reasons for judgment Legislation: Federal Court of Australia Act 1976 (Cth) Patents Act 1990 (Cth) Cases cited: Advanced Building Systems v Ramset Fasteners (Aust) Pty Ltd (1997) 145 ALR 121 Aiden Shipping Ltd v Interbulk Ltd [1986] AC 965 Alexander v Cambridge Credit Corp Ltd (1985) 2 NSWLR 685 Alphapharm Pty Limited v Wyeth (2009) 82 IPR 71; [2009] FCA 945 Australian Broadcasting Corporation v Lenah Game Meats Pty Limited (2001) 208 CLR 199; [2001] HCA 63 Caboolture Park Shopping Centre Pty Ltd (In liquidation) v White Industries (Qld) Pty Ltd (1993) 45 FCR 224 Federal Commissioner of Taxation v Myer Emporium Ltd (No 1) (1986) 160 CLR 220 Kirin-Amgen Inc v Transkaryotic Therapies Inc (No 3) [2005] FSR 41 Henderson v Amadio Pty Ltd (1996) 136 ALR 593 Hollier v Australian Maritime Safety Authority [1998] FCA 428 Knight v FP Special Assets Limited (1992) 174 CLR 178 Minnesota Mining & Manufacturing Company v Johnson & Johnson Limited [1976] RPC 671 Red Bull Australia Pty Limited v Sydneywide Distributors Pty Limited [2001] FCA 1750 Sigma Pharmaceuticals (Australia) Pty Ltd (ACN 004 118 594) v Wyeth (2009) IPR 339; [2009] FCA 595 Sigma Pharmaceuticals (Australia) Pty Ltd v Wyeth [2010] FCA 1211 Stirling Harbour Services Pty Ltd v Bunbury Port Authority (No 2) [2000] FCA 87 Trade Practices Commission v Arnotts Ltd (1990) 93 ALR 638 Virgin Atlantic v Premium Aircraft [2009] EWCA Civ 1513 Westaflex (Aust) Pty Ltd v Wood (1990) 18 IPR 168 Date of hearing: 28 October 2010 Date of last submissions: 3 November 2010 Place: Sydney Division: GENERAL DIVISION Category: Catchwords Number of paragraphs: 47 Counsel for the Applicant / Cross-Respondent in VID 195 of 2009: Mr D Shavin QC and Ms HMJ Rofe Solicitor for the Applicant / Cross-Respondent in VID 195 of 2009: Griffith Hack Lawyers Counsel for the Applicant / Cross-Respondent in NSD 596 of 2009: Mr SCG Burley SC and Mr PW Flynn Solicitor for the Applicant / Cross-Respondent in NSD 596 of 2009: Mallesons Stephen Jaques Counsel for the Applicant / Cross-Respondent in NSD 1124 of 2009: Ms AH Bowne SC Solicitor for the Applicant / Cross-Respondent in NSD 1124 of 2009: Middletons Counsel for the Respondents / Cross-Claimants in VID 195 of 2009, NSD 596 of 2009 and NSD 1124 of 2009: Mr AJL Bannon SC and Mr C Dimitriadis Solicitor for the Respondents / Cross-Claimants in VID 195 of 2009, NSD 596 of 2009 and NSD 1124 of 2009: Jones Day Lawyers IN THE FEDERAL COURT OF AUSTRALIA NEW SOUTH WALES DISTRICT REGISTRY GENERAL DIVISION VID 195 of 2009 BETWEEN: SIGMA PHARMACEUTICALS (AUSTRALIA) PTY LTD Applicant / Cross-Respondent AND: WYETH First Respondent / First Cross-Claimant WYETH AUSTRALIA PTY LIMITED Second Respondent / Second Cross-Claimant JUDGE: JAGOT J DATE OF ORDER: 8 November 2010 WHERE MADE: SYDNEY THE COURT DECLARES THAT: 1. The Applicant / Cross-Respondent has threatened to infringe each of claims 1, 4, 5, 8, 9, 10, 15, 16 and 27 of Australian Patent No 2003259586 (the Patent) by importing, marketing, taking orders for, selling, supplying, and offering to supply products included in the Australian Register of Therapeutic Goods under the name "Evelexa XR" (the Evelexa XR Products) in Australia for use by persons in need of venlafaxine for treatment of depression or social anxiety disorder, and by authorising, procuring or inducing or joining in a common design with other persons to do such acts, without the licence or authority of First Respondent / First Cross-Claimant. THE COURT ORDERS THAT: 2. The draft reasons for judgment provided to the parties on 23 September 2010 be published as the reasons for judgment, except for: (a) the quote in [624]: 2nd paragraph last sentence, 4th paragraph after "excipients" to the end of the 4th paragraph, 5th paragraph last sentence; (b) [628] 3rd to 6th sentences inclusive; and (c) [629] 4th to 8th sentences inclusive (together the confidential sentences). 3. The parties be provided with the reasons for judgment both as published and including the confidential sentences. 4. The confidential sentences be kept confidential by the parties (other than Alphapharm Pty Limited) and not be disclosed other than to their legal representatives and such other person as may be agreed to in writing by Alphapharm Pty Limited. 5. The Application be dismissed. 6. Order 1 made on 3 June 2009 be discharged and the Respondents / Cross-Claimants be released from the undertakings given by them to the Court in relation to those orders, being undertakings: (a) to submit to such order (if any) as the Court may consider to be just for the payment of compensation, to be assessed by the Court or as it may direct, to any person, whether or not a party, adversely affected by any operation of those orders or any continuation (with or without variation) thereof; and (b) to pay the compensation referred to in (a) to the person there referred to. 7. The Applicant / Cross-Respondent (whether by itself, its directors, servants, agents or otherwise) be restrained from infringing claims 1, 4, 5, 8, 9, 10, 15, 16 and 27 of the Patent, including, without limitation, by, in Australia, during the term of the Patent and without the licence or authority of the First Respondent / First Cross-Claimant: (a) importing, marketing, taking orders for, selling, supplying or offering to supply the Evelexa XR Products (or any other product comprising the same generic extended release formulation of venlafaxine hydrochloride) for use by persons in need of venlafaxine; (b) applying to list the Evelexa XR Products (or any other product comprising the same extended release formulation of venlafaxine hydrochloride) on the Schedule of Pharmaceutical Benefits; (c) authorising any other person to do any act referred to in sub-paragraphs (a) or (b) above; or (d) procuring or inducing or joining in a common design with any other person to do any act referred to in sub-paragraphs (a), (b) or (c) above. 8. Within 14 days of the date of these orders the Applicant / Cross-Respondent destroy any Evelexa XR Products (or any other product comprising the same generic modified release formulation of venlafaxine hydrochloride) in Australia in the possession, power or control of the Applicant / Cross-Respondent. 9. Within 14 days of the date of these orders the Applicant / Cross-Respondent file and serve an affidavit verifying compliance with order 8 of these orders. 10. The Applicant / Cross-Respondent pay the Respondents / Cross-Claimants' costs of and incidental to the proceeding, as agreed or taxed. THE COURT CERTIFIES THAT 11. For the purpose of section 19 of the Patents Act 1990 (Cth), the validity of claims 1 to 28 of the Patent was questioned unsuccessfully in this proceeding. THE COURT FURTHER: 12. ORDERS that orders 8, 9 and 11 above be stayed: (a) initially until the date which is 14 days after the making of these orders; and (b) if a notice of appeal to the Full Court of the Federal Court is filed within that period, until the determination of that appeal. 13. ORDERS the Applicant, during the currency of the stay in order 12 above, not to move, transfer, or otherwise deal in any Evelexa XR Products. 14. NOTES the undertaking of the Respondents / Cross-Claimants to the Court that, until further order, they will not make any application to de-list Efexor-XR from the Pharmaceutical Benefits Scheme. 15. ORDERS that the notice of motion filed 27 October 2010 be dismissed with costs. Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules. The text of entered orders can be located using Federal Law Search on the Court's website. IN THE FEDERAL COURT OF AUSTRALIA NEW SOUTH WALES DISTRICT REGISTRY GENERAL DIVISION NSD 596 of 2009 BETWEEN: ALPHAPHARM PTY LIMITED Applicant / Cross-Respondent AND: WYETH First Respondent / First Cross-Claimant WYETH AUSTRALIA PTY LIMITED Second Respondent / Second Cross-Claimant JUDGE: JAGOT J DATE OF ORDER: 8 November 2010 WHERE MADE: SYDNEY THE COURT DECLARES THAT: 1. The Applicant / Cross-Respondent has threatened to infringe each of claims 1, 4, 5, 8, 9, 10, 15, 16 and 27 of Australian Patent No 2003259586 (the Patent) by importing, marketing, taking orders for, selling, supplying, and offering to supply products included in the Australian Register of Therapeutic Goods under the name "Enlafax-XR" (the Enlafax-XR Products) in Australia for use by persons in need of venlafaxine for treatment of depression or social anxiety disorder, and by authorising, procuring or inducing or joining in a common design with other persons to do such acts, without the licence or authority of First Respondent / First Cross-Claimant. THE COURT ORDERS THAT: 2. The draft reasons for judgment provided to the parties on 23 September 2010 be published as the reasons for judgment, except for: (a) the quote in [624]: 2nd paragraph last sentence, 4th paragraph after "excipients" to the end of the 4th paragraph, 5th paragraph last sentence; (b) [628] 3rd to 6th sentences inclusive; and (c) [629] 4th to 8th sentences inclusive (together the confidential sentences). 3. The parties be provided with the reasons for judgment both as published and including the confidential sentences. 4. The confidential sentences be kept confidential by the parties (other than Alphapharm Pty Limited) and not be disclosed other than to their legal representatives and such other person as may be agreed to in writing by Alphapharm Pty Limited. 5. The Application be dismissed. 6. Orders 1 and 2 made on 25 August 2009 be discharged and the Respondents / Cross-Claimants be released from the undertakings given by them to the Court in relation to those orders, being undertakings: (a) to submit to such order (if any) as the Court may consider to be just for the payment of compensation, to be assessed by the Court or as it may direct, to any person, whether or not a party, adversely affected by any operation of those orders or any continuation (with or without variation) thereof; and (b) to pay the compensation referred to in (a) to the person there referred to; and (c) until further order, not to make any application to de-list Efexor-XR from the Pharmaceuticals Benefits Scheme. 7. The Applicant / Cross-Respondent (whether by itself, its directors, servants, agents or otherwise) be restrained from infringing claims 1, 4, 5, 8, 9, 10, 15, 16 and 27 of the Patent, including, without limitation, by, in Australia, during the term of the Patent and without the licence or authority of the First Respondent / First Cross-Claimant: (a) importing, marketing, taking orders for, selling, supplying or offering to supply the Enlafax-XR Products (or any other product comprising the same generic modified release formulation of venlafaxine hydrochloride) for use by persons in need of venlafaxine; (b) importing, marketing, taking orders for, selling, supplying or offering to supply the Enlafax-XR Products (or any other product comprising the same generic modified release formulation of venlafaxine hydrochloride) together with the giving of, or the publication of advertisements containing, instructions or inducements for the use of the Enlafax-XR Products by persons in need of venlafaxine; (c) applying to list the Enlafax-XR Products (or any other product comprising the same generic modified release formulation of venlafaxine hydrochloride) on the Schedule of Pharmaceutical Benefits; (d) authorising any other person to do any act referred to in sub-paragraphs (a), (b), or (c) above; or (e) procuring or inducing or joining in a common design with any other person to do any act referred to in sub-paragraphs (a), (b), (c) or (d) above. 8. Within 14 days of the date of this order the Applicant / Cross-Respondent destroy any Enlafax-XR Products (or any other product comprising the same generic modified release formulation of venlafaxine hydrochloride) in Australia in the possession, power or control of the Applicant / Cross-Respondent. 9. Within 14 days of the date of this order the Applicant / Cross-Respondent file and serve an affidavit verifying compliance with order 8 of these orders. 10. The Applicant / Cross-Respondent pay the Respondents / Cross-Claimants' costs of and incidental to the proceeding, as agreed or taxed. THE COURT CERTIFIES THAT: 11. For the purpose of section 19 of the Patents Act 1990 (Cth), the validity of claims 1 to 28 of the Patent was questioned unsuccessfully in this proceeding. THE COURT FURTHER: 12. ORDERS that upon the undertaking noted in paragraph 13 below, orders 8, 9 and 11 above be stayed: (a) initially until the date which is 14 days after the making of these orders; and (b) if a notice of appeal to the Full Court of the Federal Court is filed within that period, until the determination of that appeal. 13. NOTES that the Applicant undertakes to the Court that, during the currency of the stay in order 12 above, it will not move, transfer, or otherwise deal in any Enlafax-XR Products. 14. NOTES the undertaking of the Respondents / Cross-Claimants to the Court that, until further order, they will not make any application to de-list Efexor-XR from the Pharmaceutical Benefits Scheme. Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules. The text of entered orders can be located using Federal Law Search on the Court's website. IN THE FEDERAL COURT OF AUSTRALIA NEW SOUTH WALES DISTRICT REGISTRY GENERAL DIVISION NSD 1124 of 2009 BETWEEN: GENERIC HEALTH PTY LTD Applicant / Cross-Respondent AND: WYETH First Respondent / First Cross-Claimant WYETH AUSTRALIA PTY LIMITED Second Respondent / Second Cross-Claimant JUDGE: JAGOT J DATE OF ORDER: 8 November 2010 WHERE MADE: SYDNEY THE COURT DECLARES THAT: 1. The Applicant / Cross-Respondent has threatened to infringe each of claims 1, 4, 5, 8, 9, 10, 15, 16 and 27 of Australian Patent No 2003259586 (the Patent) by importing, marketing, taking orders for, selling, supplying, and offering to supply any products the subject of ARTG registration numbers 151874, 151875, 151876, 151877, 151878, 151880, 151884, 151885 (the GH Products) in Australia for use by persons in need of venlafaxine for the treatment of depression or social anxiety disorder. THE COURT ORDERS THAT 2. The draft reasons for judgment provided to the parties on 23 September 2010 be published as the reasons for judgment, except for: (a) the quote in [624]: 2nd paragraph last sentence, 4th paragraph after "excipients" to the end of the 4th paragraph, 5th paragraph last sentence; (b) [628] 3rd to 6th sentences inclusive; and (c) [629] 4th to 8th sentences inclusive (together the confidential sentences). 3. The parties be provided with the reasons for judgment both as published and including the confidential sentences. 4. The confidential sentences be kept confidential by the parties (other than Alphapharm Pty Limited) and not be disclosed other than to their legal representatives and such other person as may be agreed to in writing by Alphapharm Pty Limited. 5. The Application be dismissed. 6. Order 1 made on 10 November 2009 be discharged and the Respondents / Cross-Claimants be released from the undertakings given by them to the Court in relation to those orders, being undertakings: (a) to submit to such order (if any) as the Court may consider to be just for the payment of compensation, to be assessed by the Court or as it may direct, to any person, whether or not a party, adversely affected by any operation of those orders or any continuation (with or without variation) thereof; and (b) to pay the compensation referred to in (a) to the person there referred to; and (c) until further order, not to make any application to de-list Efexor-XR from the Pharmaceuticals Benefits Scheme. 7. The Applicant / Cross-Respondent (whether by itself, its directors, servants, agents or otherwise) be restrained from infringing claims 1, 4, 5, 8, 9, 10, 15, 16 and 27 of the Patent, including, without limitation, by, in Australia, during the term of the Patent and without the licence or authority of the First Respondent / First Cross-Claimant: (a) importing, marketing, taking orders for, selling, supplying or offering to supply the GH Products (or any other product comprising the same generic extended release formulation of venlafaxine hydrochloride) for use by persons in need of venlafaxine; (b) applying to list the GH Products (or any other product comprising the same extended release formulation of venlafaxine hydrochloride) on the Schedule of Pharmaceutical Benefits; (c) authorising any other person to do any act referred to in sub-paragraphs (a) or (b) above; or (d) procuring or inducing or joining in a common design with any other person to do any act referred to in sub-paragraphs (a), (b) or (c) above. 8. Within 14 days of the date of these orders the Applicant / Cross-Respondent destroy any GH Products (or any other product comprising the same generic modified release formulation of venlafaxine hydrochloride) in Australia in the possession, power or control of the Applicant / Cross-Respondent. 9. Within 14 days of the date of these orders the Applicant / Cross-Respondent file and serve an affidavit verifying compliance with order 8 of these orders. 10. The Applicant / Cross-Respondent pay the Respondents / Cross-Claimants' costs of and incidental to the proceeding, as agreed or taxed. THE COURT CERTIFIES THAT: 11. For the purpose of section 19 of the Patents Act 1990 (Cth), the validity of claims 1 to 28 of the Patent was questioned unsuccessfully in this proceeding. THE COURT FURTHER: 12. ORDERS that orders 8, 9 and 11 above be stayed: (a) initially until the date which is 14 days after the making of these orders; and (b) if a notice of appeal to the Full Court of the Federal Court is filed within that period, until the determination of that appeal. 13. ORDERS the Applicant, during the currency of the stay in order 12 above, not to move, transfer, or otherwise deal in any GH Products. 14. NOTES the undertaking of the Respondents / Cross-Claimants to the Court that, until further order, they will not make any application to de-list Efexor-XR from the Pharmaceutical Benefits Scheme. Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules. The text of entered orders can be located using Federal Law Search on the Court's website. IN THE FEDERAL COURT OF AUSTRALIA NEW SOUTH WALES DISTRICT REGISTRY GENERAL DIVISION VID 195 of 2009 BETWEEN: SIGMA PHARMACEUTICALS (AUSTRALIA) PTY LTD Applicant / Cross-Respondent AND: WYETH First Respondent / First Cross-Claimant WYETH AUSTRALIA PTY LIMITED Second Respondent / Second Cross-Claimant IN THE FEDERAL COURT OF AUSTRALIA NEW SOUTH WALES DISTRICT REGISTRY GENERAL DIVISION NSD 596 of 2009 BETWEEN: alphapharm pty limited Applicant / Cross-Respondent AND: WYETH First Respondent / First Cross-Claimant WYETH AUSTRALIA PTY LIMITED Second Respondent / Second Cross-Claimant IN THE FEDERAL COURT OF AUSTRALIA NEW SOUTH WALES DISTRICT REGISTRY GENERAL DIVISION NSD 1124 of 2009 BETWEEN: GENERIC HEALTH PTY LTD Applicant / Cross-Respondent AND: WYETH First Respondent / First Cross-Claimant WYETH AUSTRALIA PTY LIMITED Second Respondent / Second Cross-Claimant JUDGE: JAGOT J DATE: 8 November 2010 PLACE: SYDNEY REASONS FOR JUDGMENT 1 On 23 September 20101 I provided to the parties my draft reasons for judgment in these proceedings. At the same time, and as the parties had requested at the conclusion of the hearing, I ordered that the draft reasons be kept confidential to the legal and other nominated representatives of the parties so that they could each consider whether any parts of those reasons disclosed confidential information and thus should be the subject of a permanent confidentiality order. I also ordered the parties to file agreed or competing draft orders (including orders for costs) that they proposed should be made in accordance with the draft reasons for judgment. 2 The further hearing on 28 October 2010 concerned these three issues – confidentiality, the making of final orders, and costs. 3 Abbreviations used in these reasons are defined in the principal reasons for judgment, also published today (Sigma Pharmaceuticals (Australia) Pty Ltd v Wyeth [2010] FCA 1211). CONFIDENTIALITY 4 Alphapharm and Wyeth contended that certain parts of the reasons for judgment contained confidential information. 5 Insofar as Alphapharm is concerned the parts are of limited extent and relate solely to certain details in respect of its Enlafax formulation identified in Dr Marshall's evidence and referred to at [624], [628] and [629] of the principal reasons. By reason of the confidential affidavit of Virginia Hazard (Alphapharm's regional general counsel) sworn 25 October 2010 I am satisfied that this information is not in the public domain and is subject to confidentiality obligations between Alphapharm and its supplier Pharmathen S.A. The information is of commercial value to Alphapharm and, if disclosed, would be of commercial value to its trade competitors. Maintaining them as confidential also would not affect the capacity of any reader to understand the reasons for judgment, a fundamental consideration in the administration of justice (Trade Practices Commission v Arnotts Ltd (1990) 93 ALR 638). In these circumstances these parts of the judgment should be the subject of confidentiality orders. 6 Insofar as Wyeth is confirmed, the position is different. Wyeth contended that [79]-[90], [94]-[108], [110]-[123], [126], [128], [130], [134], [143], [144] and [595] and parts of [169] and [536] of the reasons for judgment should be maintained as confidential. It did so on the sole ground that matters disclosed in those paragraphs are the subject of a protective order in corresponding proceedings in the United States. The basis for the making of those protective orders in the United States was not apparent. It follows that I am not satisfied that any part of those paragraphs is confidential. Accordingly, the principal reasons for judgment will be published with those paragraphs disclosed. FINAL ORDERS 7 As the principal reasons disclose, in each of the proceedings Wyeth, the patent holder, was wholly successful. Accordingly, Sigma, Alphapharm and Generic Health failed in their claims that the patent was invalid and should be revoked. Wyeth succeeded in its claims against Sigma, Alphapharm and Generic Health for threatened infringement of the patent. 8 There is a limited dispute between the parties about the drafting of the final orders. There is a more extensive dispute, however, about whether the final orders restraining the threatened infringements should be stayed or be made subject to a condition, or whether other orders should be made to protect the interests of Sigma and Alphapharm pending their foreshadowed appeals. I deal with the more extensive dispute first. 9 The more extensive dispute arises in the following circumstances. (1) Sigma obtained registration on the Australian Register of Therapeutic Goods (ARTG) of its generic extended release venlafaxine hydrochloride product, Evelexa XR, on 26 February 2009. (2) Alphapharm obtained registration on the ARTG of its generic extended release venlafaxine hydrochloride product, Enlafax-XR, on 30 April 2009. (3) Wyeth applied for an interlocutory injunction against Sigma on 1 May 2009. (4) On 3 June 2009 orders were made enjoining Sigma from taking steps to exploit its generic extended release venlafaxine hydrochloride product (Sigma Pharmaceuticals (Australia) Pty Ltd (ACN 004 118 594) v Wyeth (2009) IPR 339; [2009] FCA 595). (5) Wyeth applied for an interlocutory injunction against Alphapharm on 24 July 2009. (6) On 25 August 2009 orders were made enjoining Alphapharm from taking steps to exploit its generic extended release venlafaxine hydrochloride product (Alphapharm Pty Limited v Wyeth (2009) 82 IPR 71; [2009] FCA 945). (7) Generic Health obtained registration on the ARTG of its generic extended release venlafaxine hydrochloride product, "generichealth XR", on 6 August 2009. (8) On 10 November 2009 consent orders were made enjoining Generic Health from taking steps to exploit its generic extended release venlafaxine hydrochloride product. 10 Wyeth has agreed to undertake not to de-list its extended release venlafaxine hydrochloride product, Efexor-XR, from the Pharmaceutical Benefits Scheme (PBS) pending further order. By this undertaking Sigma and Alphapharm (which have indicated their intention to appeal) are protected from the risk of not being able to list their own generic products on the basis of bioequivalence with Efexor-XR should they succeed in any appeal. Wyeth, however, refuses to give any undertaking as to damages in respect of the period between the making of final orders in these proceedings and the determination of any appeal. Accordingly, if Sigma and Alphapharm succeed in the foreshadowed appeals the undertaking as to damages Wyeth gave in respect of the interlocutory injunctions will operate in respect of loss by reason of those interlocutory orders, but no such undertaking will be in place in respect of loss by reason of the final orders pending the appeal. 11 Wyeth also refuses to undertake not to market and sell a generic extended release venlafaxine hydrochloride product of its own in Australia. Sigma and Alphapharm, in these circumstances, are concerned that they will be exposed to a change in position from the time at which they were enjoined (when there were no generic extended release venlafaxine hydrochloride products on the market, with Sigma being the first and Alphapharm the second to obtain ARTG registration). In short, they contend that without undertakings or orders to protect them from a hiatus in Wyeth's undertaking as to damages and what may be described as a change in the circumstances in which they otherwise would have entered the market except by reason of the interlocutory injunctions against them, they are exposed to an injustice which the Court should not permit. 12 Alphapharm sought to prevent this alleged injustice by a scheme involving the following principal elements: - (i) the grant of a final injunction against Alphapharm, (ii) a stay of that final injunction pending resolution of the foreshadowed appeal, (iii) the grant of an interlocutory injunction largely to the same effect as the final injunction against Alphapharm pending resolution of the foreshadowed appeal, and (iv) Wyeth providing an undertaking as to damages and other undertakings not to remove Efexor-XR from the PBS nor to market or release a generic extended release venlafaxine hydrochloride product of its own in Australia pending resolution of the foreshadowed appeal. If, as is the case, Wyeth is not willing to give the undertakings sought as the price for the interlocutory injunction (leaving Alphapharm free to deal in its Enlafax-XR product) then Alphapharm indicated that it would be willing to give an undertaking as to damages itself to compensate Wyeth in the event that Wyeth should succeed in the foreshadowed appeal. 13 Sigma sought to prevent this alleged injustice by a scheme achieving the same outcome as that proposed by Alphapharm. Sigma, however, proposed reaching this result either by making the final injunction in favour of Wyeth conditional on Wyeth giving the undertakings as sought or the making of interlocutory orders to the same general effect. While Sigma indicated its willingness to give an undertaking as to damages conditional on Wyeth also doing so, Sigma submitted it should not be required to proffer any additional undertaking if Wyeth's position remained that it was willing only to undertake not to remove Efexor-XR from the PBS. 14 Leaving aside the debate about the jurisdictional basis for the interlocutory orders sought (according to Wyeth there was no basis), the applicants agreed that the various schemes proposed were intended to achieve the same result (interim protection for what they described as the status quo pending the resolution of the appeal) and were subject to the same considerations of principle. As Sundberg J said in Hollier v Australian Maritime Safety Authority [1998] FCA 428 the "principle on which the Court acts in applications for injunctions pending appeal is the same as that applicable where a stay pending appeal is sought" (see also Stirling Harbour Services Pty Ltd v Bunbury Port Authority (No 2) [2000] FCA 87 at [13]), albeit by reference to the questions whether there is a serious question to be tried and the balance of convenience. 15 The principles apparent from the decisions on which the parties relied may be summarised as follows: (1) "A successful party is presumed to be entitled to the benefits of the judgment obtained" (Advanced Building Systems v Ramset Fasteners (Aust) Pty Ltd (1997) 145 ALR 121 at 122). (2) An "applicant for a stay has the burden of persuading the court that it should be granted" (Advanced Building Systems at 122) but it is not necessary to show special or exceptional circumstances (Henderson v Amadio Pty Ltd (1996) 136 ALR 593 at 595 applying Alexander v Cambridge Credit Corp Ltd (1985) 2 NSWLR 685). (3) "The court, in the exercise of its discretion, will not hesitate to stay proceedings when it is necessary to preserve the subject matter or integrity of the litigation. Nor will the court hesitate to grant a stay where the refusal of a stay could create practical difficulties in terms of the relief which [the] court could grant" (Advanced Building Systems at 122). (4) It is relevant to consider whether "there is a real risk that it will not be possible for a successful appellant to be restored substantially to his former position if the judgment against him is executed" (Federal Commissioner of Taxation v Myer Emporium Ltd (No 1) (1986) 160 CLR 220 at 223). (5) Another relevant consideration is whether the proposed appeal is genuine and based on reasonable grounds (Henderson v Amadio Pty Ltd at 595). (6) Relevant also is the willingness or not of a party to give an undertaking as to damages. Hence, in Red Bull Australia Pty Limited v Sydneywide Distributors Pty Limited [2001] FCA 1750 at [10] Red Bull's refusal to give such an undertaking, thereby exposing Sydneywide to irrecoverable loss if Sydneywide succeeded in its appeal, was described as "a factor which is clearly relevant to the exercise of the discretion to grant a stay", however it proved insufficient to displace the presumption that Red Bull was entitled to the benefit of its judgment (at [20]). 16 The debate between the parties (other than in respect of the weight to be given to the competing factors informing the exercise of discretion) related to the scope of the jurisdiction available. 17 According to Wyeth, interlocutory orders could not be made because such orders would not be in aid of any substantive right the applicants sought to vindicate in the proceedings or by the foreshadowed appeals. The only claim the applicants had brought against Wyeth was for revocation of the patent. It followed that there was no underlying cause of action sought to be preserved by the proposed interlocutory orders and no capacity to identify any serious question to be tried about that (non-existent) cause of action (Australian Broadcasting Corporation v Lenah Game Meats Pty Limited (2001) 208 CLR 199; [2001] HCA 63). 18 The applicants submitted that the jurisdiction derived from s 23 of the Federal Court of Australia Act 1976 (Cth) and was sufficient for the Court to mould its relief to ensure justice as between the parties pending the resolution of the appeals. The applicants referred to Minnesota Mining & Manufacturing Company v Johnson & Johnson Limited [1976] RPC 671, Kirin-Amgen Inc v Transkaryotic Therapies Inc (No 3) [2005] FSR 41 and Virgin Atlantic v Premium Aircraft [2009] EWCA Civ 1513 in support of this wider jurisdiction. In Minnesota Mining at 676 (cited with approval in Kirin-Amgen at [16] and Virgin Atlantic at [21]), Buckley LJ said: It is not in dispute that where a plaintiff has at first instance established a right to a perpetual injunction, the court has a discretion to stay the operation of that injunction pending an appeal by the defendant against the judgment. On what principles ought such a discretion to be exercised? The object, where it can be fairly achieved, must surely be so to arrange matters that, when the appeal comes to be heard, the appellate court may be able to do justice between the parties, whatever the outcome of the appeal may be. Where an injunction is an appropriate form of remedy for a successful plaintiff, the plaintiff, if he succeeds at first instance in establishing his right to relief, is entitled to that remedy upon the basis of the trial judge's findings of fact and his application of the law. This is, however, subject to the defendant's right of appeal. If the defendant in good faith proposes to appeal, challenging either the trial judge's findings or his law, and has a genuine chance of success on his appeal, the plaintiff's entitlement to his remedy cannot be regarded as certain until the appeal has been disposed of. In some cases the putting of an injunction into effect pending appeal may very severely damage the defendant in such a way that he will have no remedy against the plaintiff if he, the defendant, succeeds on his appeal. On the other hand, the postponement of putting an injunction into effect pending appeal may severely damage the plaintiff. In such a case a plaintiff may be able to recover some remedy against the defendant in the appellate court in respect of this damage in the event of the appeal failing, but the amount of this damage may be difficult to assess and the remedy available in the appellate court may not amount to a complete indemnity. It may be possible to do justice by staying the injunction pending the appeal, the plaintiff's position being suitably safeguarded. On the other hand it may, in some circumstances, be fair to allow the injunction to operate on condition that the plaintiff gives an undertaking in damages or otherwise protects the defendant's rights, should he succeed on his appeal. In some cases it may be impossible to devise any method of ensuring perfect justice in any event, but the court may nevertheless be able to devise an interlocutory remedy pending the decision of the appeal which will achieve the highest available measure of fairness. The appropriate course must depend on the particular facts of each case. 19 Wyeth contended that these observations did not represent the law in Australia at least insofar as they might suggest the capacity to grant an interlocutory injunction without some underlying cause of action. The applicants submitted that Wyeth's contention was inconsistent with both the decision in Westaflex (Aust) Pty Ltd v Wood (1990) 18 IPR 168 (in which Gray J cited and applied Buckley LJ's observations (at 170)) and the reasoning in Stirling Harbour Services v Bunbury Port Authority. 20 By reason of the outcome of my consideration of the various discretionary factors, it is sufficient that I assume I have the power to mould the terms of relief with the objective of doing justice between the parties pending the resolution of the appeals. 21 As to the question of discretion, relevant factors include the following. 22 First, the nature and complexity of the principal proceedings lead inevitably to the assumption that the foreshadowed appeals are genuine and reasonably arguable. 23 Second, although Wyeth has offered to undertake not to remove Efexor-XR from the PBS pending the resolution of the appeals, that does not protect Sigma and Alphapharm from the risk of harm from the cessation of Wyeth's undertaking as to damages (which Wyeth gave as the price for it obtaining interlocutory injunctions in its favour) or changes in market circumstances. Should Sigma and Alphapharm succeed in the proposed appeals Wyeth's refusal to give a further undertaking will mean that Sigma and Alphapharm are exposed to loss between the date on which the interlocutory injunctions are dissolved and the date the appeals are resolved (on this hypothesis in their favour). Continuing the interlocutory injunctions and refusing to release Wyeth from its undertakings will not assist because Wyeth's undertakings relate only to the consequences of the interlocutory orders. In any event, even if there were a proper basis for adopting that course the discretionary considerations are the same. Accordingly, and as in Red Bull, Wyeth's refusal to give any further undertaking as to damages is a relevant factor weighing in favour of Sigma and Alphapharm. 24 Third, it is relevant that both Sigma and Alphapharm are willing to give undertakings in one form or another in an attempt to protect Wyeth's position pending the resolution of the appeals (Sigma as the price for obtaining the interlocutory orders it sought and only if Wyeth itself gives equivalent undertakings and Alphapharm if a stay is granted without associated interlocutory orders). 25 Fourth, it is also relevant that Wyeth refuses to offer any other undertakings in respect of the prospect of introducing its own generic extended release venlafaxine hydrochloride product. On the evidence, that is not a fanciful prospect. A primary concern of Sigma and Alphapharm is market position. In short, Sigma registered on the ARTG first and, based on the evidence of Robert Ellis (Sigma's General Manager-Business Development), invited the inference that it would have entered the market first with its product. Alphapharm invited the inference that it would have entered the market with, at worst, one other competitor (Sigma's product). Mr Ellis said that entering a market for a generic product first gave a "first mover" advantage in terms of both market share and price. At the time the interlocutory injunction against Sigma was granted it was ready to enter the market first and obtain these advantages. If Wyeth were free to enter the market with its own generic product pending the resolution of the appeals Sigma, said Mr Ellis, would lose these advantages. Wyeth, in turn, would obtain a "significant head start". 26 Mr Ellis's affidavit was expressed at a high level of generality. He provided no specific examples of either the advantages of which he spoke or their likely or potential dollar value over time. Other than describing its generic extended release venlafaxine hydrochloride product as "very important" for Sigma's generic portfolio Mr Ellis provided no information about Sigma's product range, the money it spent on developing its product or its relative importance to Sigma's operations. Alphapharm presented no evidence about these issues, instead relying on Mr Ellis's evidence. 27 Mr Ellis was asked about information derived from IMS Health (see [498] of the principal reasons) in respect of escitalopram and sertraline. These are anti-depressants in the SSRI/SNRI class for which the relevant patent has expired. The statistical information available from IMS Health about these products is capable of different interpretations. On one view the information shows that generic products can readily enter markets (there are seven generic versions of escitalopram and 13 of sertraline). Further, late entry is not an insuperable barrier to obtaining a significant market share, as Sigma's product Lexam shows, although price discounting may be required. Nevertheless, it is obvious that the first generic entrant into a market has an advantage over later entrants simply by reason of the fact that later entrants face more competitors. It follows that I accept that, at the time they were enjoined, Sigma and Alphapharm stood to enter a market with no generic competitor but each other. In contrast, there is now a real (in the sense of not fanciful) risk that Wyeth itself may wish to place a generic product on the market. If Wyeth does so Sigma and Alphapharm will lose whatever benefit they would have obtained by entering a market with no other generic competitor. Whilst I have no details which would enable me to value that benefit or understand its importance to the operations of Sigma or Alphapharm I can infer from the information available in the principal proceeding that the benefit is real and not trivial. Although Sigma registered its product first and intended to be the first generic on the market, I do not know whether it could have done so before Alphapharm or, at the least, sufficiently before Alphapharm to have made any real difference between their two positions. It is also relevant that, within a further period of six months, Generic Health intended to enter the market with its extended release venlafaxine hydrochloride product. 28 Despite the weight to which these factors are entitled, I am unable to conclude that justice requires orders to be made as sought by Sigma and Alphapharm. Sigma and Alphapharm bore the persuasive onus. Neither had in fact entered the market at the time they were enjoined. As noted, had they not been enjoined, they would have entered a market in competition which each other, either immediately or within a very short time. It may be inferred that they also would have faced competition from the generichealth XR product within a relatively short time (perhaps less than six months) thereafter. At the same time, and subject only to Wyeth's willingness to undertake to the contrary (as it did pending the outcome of these proceedings), Wyeth was free to place its own generic product into the market. In other words, the market position which Sigma and Alphapharm wish to protect is a capacity to enter a market where, on entry, each would have been subject to competition one from the other and exposed other changes (including entry by Generic Health and perhaps Wyeth) in any event. 29 Against this background the nature of the interest sought to be protected, the vagueness of the available evidence about harm and the degree of protection afforded by the undertaking Wyeth is willing to give are significant factors. 30 As to the nature of the interest sought to be protected, this is not a case where the subject matter of the appeal will be destroyed unless orders as sought are made. It is also not a case where refusing to make such orders will result in any practical difficulty for the appellate court in making orders to fully and finally resolve all issues in dispute on the appeal. It is not even a case where Sigma or Alphapharm enjoy a known market share (in contrast to the position in Westaflex). At its highest Sigma and Alphapharm had a capacity to enter a market which, given Generic Health's (and perhaps Wyeth's) intentions, was likely to be subject to relatively rapid change. 31 Moreover, neither Sigma nor Alphapharm chose to present evidence enabling any conclusions to be reached about the real extent of the adverse impact on them. There is a material difference between evidence which enables an inference that the benefit lost can be described as "real and not trivial" (the best I can do in this case) and evidence of actual impacts. In Westaflex, for example, the trial judge was satisfied on the evidence that the appellant stood to lose 50% of its entire turnover, could not trade profitably and would be exposed to claims for damages by third parties for failure to fulfil existing contracts (at 171). The defendant was also well established in the market in Minnesota Mining. 32 This is not to say that established market share is a prerequisite to a stay or interlocutory orders pending an appeal. It is merely to recognise that, despite their persuasive burden, Sigma and Alphapharm provided no evidentiary foundation for anything other than a conclusion at a high level of generality that they stood to lose some benefit if the orders they sought were not made. 33 It is also relevant in this regard that, by the regimes they propose, Sigma and Alphapharm sought something that they could never have achieved by the proceedings themselves. If Wyeth's patent is valid (as I have held) then Wyeth has the exclusive right to licence the entry of any generic extended release venlafaxine hydrochloride product onto the market. If Wyeth's patent is invalid (as Sigma and Alphapharm) contend then the result (revocation of the patent) could never prevent Wyeth from marketing its own generic extended release venlafaxine hydrochloride product. Wyeth would have that right irrespective of these proceedings or the foreshadowed appeals. By the regimes they propose, Sigma and Alphapharm want to obtain from the court on an interlocutory basis something they could never obtain on a final basis. The fact that Wyeth was willing to give undertakings to the parties to the same general effect pending the resolution of these proceedings is not to the point. That was a choice Wyeth made, not a result the Court mandated. 34 The effect of the regimes Sigma and Alphapharm propose would be to deprive Wyeth of a right it has always enjoyed and which has never been subject to the outcome of these proceedings. Sigma and Alphapharm, by contrast, never enjoyed any such equivalent right. Unless and until they succeeded in having Wyeth's patent revoked Sigma and Alphapharm had neither a right to enter the market nor, indeed, any capacity to do so. It is one thing to accept that a foreshadowed appeal is reasonably arguable. It is another to recast the circumstances in which Sigma and Alphapharm proposed to enter the market at the time they were enjoined so as to ignore the reality of the full extent of Wyeth's rights at that time – both to enter the market itself and to rely on the validity of its patent unless and until declared otherwise. In other words, if the orders Sigma and Alphapharm sought are granted, they will have done more than preserve the status quo pending the resolution of the appeal. They will be afforded a guarantee of protection from competition by Wyeth, being an advantage they could not have obtained through the proceedings or the appeals and could never have enjoyed but for Wyeth giving undertakings to that effect (after, it might be said, Wyeth had the benefit of interlocutory relief in any event). 35 There are also practical difficulties with the regimes which Sigma and Alphapharm proposed. Sigma's proposed undertaking as to damages is conditional on an equivalent undertaking from Wyeth. Wyeth's position, however, is clear – it will not give any further undertaking as to damages. The stay of final orders in favour of Wyeth would mean Generic Health and other third parties could sell generic extended release formulations of venlafaxine hydrochloride. Generic Health and other third parties would thereby be free to take advantage of the stay without having to proffer any undertakings in Wyeth's favour (Generic Health has not foreshadowed an appeal). Alphapharm's willingness to give undertakings as to damages is not conditional upon Wyeth giving any equivalent undertaking. However, understandably, Alphapharm's proposed undertaking does not extend to loss to Wyeth by reason of the stay generally. It is confined to loss suffered by Wyeth by reason of Alphapharm being able to sell its generic extended release venlafaxine hydrochloride product, Enlafax-XR. Under this regime (the most likely in fact to occur given Wyeth's refusal to give any further undertaking) Wyeth would be exposed to losses from (certainly) any acts of Generic Health and (probably) by Sigma (on the assumption that Sigma's undertaking would not be given as its condition, that is Wyeth's equivalent undertaking, would not be fulfilled). If, in addition to the stay, Wyeth was restrained from itself dealing in its own generic extended release venlafaxine hydrochloride product, the result (combined with the stay) would be that everyone other than Wyeth (the patent holder) would be free to enter the market with their own generic extended release venlafaxine hydrochloride product but Wyeth would be restrained from so doing and may not be able to recover the losses to which it thereby may be exposed. Those outcomes are manifestly unjust to Wyeth, the party with the benefit of both the patent (unless and until revoked) and the principal judgment in its favour. 36 As to the vagueness of the available evidence about harm, little more need be said. I am prepared to infer a "real and not trivial" impact would be suffered by Sigma and Alphapharm if Wyeth were able to enter and establish its own generic product on the market first. When attempting to weigh the significance of that impact on the overall position of Sigma and Alphapharm, however, no inferences are possible. It can be inferred that their respective generic extended release venlafaxine hydrochloride products are but one of a wide range offered by Sigma and Alphapharm. Whilst Mr Ellis described Sigma's product as "very important" to it, he gave no clue about its relative importance compared to other products in the Sigma range or estimated financial importance to Sigma's turnover or profitability. He also gave no indication of the likely impact of Alphapharm entering the market at the same time as or soon after Sigma, nor of the impacts of Generic Health doing so thereafter. 37 As to the degree of protection afforded by the undertaking Wyeth is willing to give, some further observations are necessary. As noted, Wyeth is willing to undertake not to make any application to de-list Efexor-XR from the PBS until further order. This ensures that, if they succeed in the appeals, Sigma and Alphapharm will be able to list their products on the PBS as drugs bioequivalent to an already listed drug. By reason of this undertaking the capacity of Sigma and Alphapharm to enter the market is preserved. Because of the risk that Wyeth may place its own generic product on the market, the market might be different from that Sigma and Alphapharm had hoped to enter in or about mid 2009. But even in mid 2009 Sigma and Alphapharm were facing the certainty of competition between themselves almost immediately, competition from Generic Health soon thereafter and the same risk that Wyeth could enter the market at any time unless Wyeth chose to give undertakings to the contrary. 38 Once the true nature of the risk of harm to Sigma and Alphapharm is assessed it becomes apparent that, as in Red Bull, the risk of harm is "not of an overwhelming nature". When this is considered with the lack of evidence of the real extent of the adverse impact on Sigma and Alphapharm (particularly on the basis of the circumstances that in fact confronted them in mid 2009 in contrast to the hypothetical position that each somehow could have secured and maintained a "first mover" advantage despite the intentions of the other, Generic Health and possibly Wyeth) and the nature of the benefit sought to be secured (the mere capacity to enter a market), the conclusion I reach is that "the highest available measure of fairness" in this case (Minnesota Mining at 676) cannot be achieved by any of the alternative regimes proposed by Sigma or Alphapharm. To the contrary (on the most likely outcome of the various alternatives presented) there would be manifest unfairness to Wyeth. Accordingly, Wyeth is entitled to final relief. Sigma and Alphapharm have not discharged their persuasive onus to obtain a stay and/or the regime of interlocutory orders proposed. 39 The other minor disputes about the form of the orders are resolved as follows. First, I can see no reason why the final injunction should not extend to a common design. The terms of the relief sought in that regard are clear. Wyeth is entitled to relief of that scope. Otherwise the form of the injunction should be as Wyeth proposed. Second, if there is any doubt about the effect of a certificate of validity under s 19 of the Patents Act 1990 (Cth) then the stay of that order as sought should be granted. If it is simply unnecessary, as Wyeth submitted, so be it. COSTS 40 Wyeth, the successful party in all proceedings, would be content with the usual order as to costs in each proceeding. Generic Health would also not object to the making of the usual order as to costs against it in its proceeding. Sigma and Alphapharm take a different position. 41 Sigma and Alphapharm propose that there be a single costs order against the applicants in all three proceedings (excluding the costs in respect of the claims for interlocutory relief) with a further order that, as between the three applicants, the responsibility of the costs be apportioned, the apportionment to be supported by cross-indemnities between the applicants. The proposed apportionment gives Sigma a small discount for the more limited case it ran on infringement (its defence was invalidity) but otherwise treats the three applicants as equally responsible for all costs. 42 Sigma and Alphapharm submitted that this proposal was appropriate as the three proceedings, although not consolidated, were heard together with evidence in one being evidence in the other. Generic Health, they submitted, took advantage of the cases which Sigma and Alphapharm ran and thus should be liable equally for Wyeth's costs. They cited in support Aiden Shipping Ltd v Interbulk Ltd [1986] AC 965 at 980 in respect of orders for costs against non-parties particularly where proceedings have been heard together and where "it may be very difficult to attribute costs to one set of proceedings rather than the other" (see also Knight v FP Special Assets Limited (1992) 174 CLR 178 at 191 and Caboolture Park Shopping Centre Pty Ltd (In liquidation) v White Industries (Qld) Pty Ltd (1993) 45 FCR 224 at 229). Sigma and Alphapharm urged that I carry out the necessary apportionment rather than leave the issue to a taxing officer to unravel. 43 There are considerations which weigh in favour of the arrangement Sigma and Alphapharm proposed. There is power to make the orders sought. The proceedings were heard together. Evidence in one was ordered to be evidence in the other. Generic Health did largely take the benefit of the cases Sigma and Alphapharm ran. Further, the position of Generic Health as to costs appeared to be based on an incorrect assumption. Generic Health appeared to assume that its liability to Wyeth for costs, if I made the usual order for costs, would be limited to costs that Wyeth incurred solely by reason of Generic Health's proceedings and not costs that Wyeth incurred by reason of all three proceedings. It seems to me this must be in error. The usual order as to costs would enable Wyeth to recover all reasonable costs against any one of the parties. Reasonable costs would include not only the costs incurred solely by reason of that party but also the common costs. Moreover, insofar as Generic Health appeared to assume to the contrary, (on Generic Health's submission because it reduced the overall costs by not calling additional evidence or duplicating the cases of Sigma and Alphapharm), the answer is that Generic Health will benefit from those reduced costs. Wyeth's overall costs will not be as large as might otherwise have been the case. But that cannot lead to a position where, by the usual order as to costs, Generic Health is somehow immune from any liability for Wyeth's common costs. To achieve that result, a different costs order would be required, in effect, excluding from the costs order against Generic Health any of Wyeth's common costs. There is no basis for giving Generic Health the benefit of any such order, however. 44 While these considerations weigh in favour of a regime of the kind Sigma and Alphapharm proposed (which, at the least, would have the benefit of avoiding a future dispute on taxation and further claims between the applicants should Wyeth seek to recover the bulk of its costs from one applicant only) Generic Health's opposition to such a regime cannot simply be put to one side. While the proposed regime excludes the costs of the interlocutory hearings against Sigma and Alphapharm the fact is the Sigma proceedings commenced on 1 April 2009, the Alphapharm proceedings on 19 June 2009 and the Generic Health proceedings on 6 October 2009. According to Generic Health, and to take but one example, there were eight directions hearings in the Sigma proceedings before the Generic Health proceedings commenced. Many other steps involved Sigma or Alphapharm but not Generic Health (including amendments to pleadings and objections to evidence). These issues all lend substantial weight to Generic Health's submission that the apportionment proposed (in effect, a three way split with a small deduction for Sigma by reason of its infringement case) would be "extremely unfair" to Generic Health. 45 In short, had the three applicants agreed a regime for apportionment which they considered basically fair I would have made orders of the type sought. However, two only of the applicants agreed to the basic fairness of the scheme. The other, Generic Health, did not agree. Its opposition to the scheme is not unreasonable. After all Sigma would be obtaining a small deduction for its position on infringement whereas Generic Health would be left with a full one third responsibility despite the fact (for example) the proceedings against it commenced nearly six months later than those against Sigma and involved no material interlocutory disputes of any kind. In these circumstances the scheme is unjust to Generic Health. The consequence that there may be difficulties on taxation is not itself a sufficient reason to impose that injustice on Generic Health. In any event, I do not consider that taxation will necessarily be as burdensome to the taxing officer as suggested. 46 For these reasons I consider that the usual order as to costs should be made in each proceeding. Expedition 47 Finally, the applicants seek orders that the appeal be expedited. However, as the appeals have not yet been filed, expedition orders are inappropriate at this time. Nevertheless, I accept that the appeals should be granted expedition. I anticipate administrative arrangements can be made to facilitate this object once the appeals are filed. I certify that the preceding forty-seven (47) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Jagot. Associate: Dated: 8 November 2010