Albany Molecular Research Inc v Alphapharm Pty Ltd [2011] FCA 120

FEDERAL COURT OF AUSTRALIA

Albany Molecular Research Inc v Alphapharm Pty Ltd [2011] FCA 120 Citation: Albany Molecular Research Inc v Alphapharm Pty Ltd [2011] FCA 120

Parties: ALBANY MOLECULAR RESEARCH INC v ALPHAPHARM PTY LTD (ACN 002 359 739) ALBANY MOLECULAR RESEARCH, INC v ARROW PHARMACEUTICALS PTY LTD (ACN 003 144 170), SIGMA PHARMACEUTICALS LIMITED (ACN 088 417 403), SIGMA PHARMACEUTICALS (AUSTRALIA) PTY LTD (ACN 004 118 594), SIGMA COMPANY LIMITED (ACN 004 132 923) and AVENTIS PHARMACEUTICALS, INC

File numbers: VID 219 of 2007 VID 883 of 2007

Judge: JESSUP J

Date of judgment: 18 February 2011

Catchwords: INTELLECTUAL PROPERTY – Patents – Whether patent invalid for want of novelty – Whether want of novelty established by disclosure of specific compound in terms in prior art base – Whether prior art needs to provide, for a skilled person working in the relevant area, information as to the means by which compound could practically and effectively be prepared – Whether prior art disclosed effective means – Whether further experiments and further information required in order to prepare compound – Whether further experiments and further information more than ordinary methods of trial and error INTELLECTUAL PROPERTY – Patents – Whether patent invalid for lack of inventive step – Whether a skilled person faced with the problem of preparing the relevant compound in substantial purity would have been led, as a matter of routine, to try that which was invented under the patent in suit INTELLECTUAL PROPERTY – Patents – Whether patent invalid due to inadequate description of invention or lack of clarity – Whether the expression "substantially pure" sufficiently clear INTELLECTUAL PROPERTY – Patents – Amendment to specification – Whether amendment affected priority date – Whether matter claimed post amendment fell within scope of claims before amendment INTELLECTUAL PROPERTY – Patents – Whether patent a manner of manufacture – Whether patent disclosed a new invention – Whether patent merely claimed a substance with desired attributes INTELLECTUAL PROPERTY – Patents – Whether patent invalid for lack of sufficient description – Whether patent gave the best method known to the inventor of performing the invention INTELLECTUAL PROPERTY – Patents – Whether patent invalid for lack of fair basis in the claims INTELLECTUAL PROPERTY – Patents – Whether patent invalid due to false suggestion – Whether false suggestion made to commissioner – Whether false suggestion materially contributed to commissioner's decision to grant patent, or was a material, inducing factor which led to grant