Albany Molecular Research Inc v Alphapharm Pty Ltd (No 2) [2011] FCA 425

FEDERAL COURT OF AUSTRALIA

Albany Molecular Research Inc v Alphapharm Pty Ltd (No 2) [2011] FCA 425 Citation: Albany Molecular Research Inc v Alphapharm Pty Ltd (No 2) [2011] FCA 425

Parties: ALBANY MOLECULAR RESEARCH, INC v ALPHAPHARM PTY LTD (ACN 002 359 739)

File number: VID 219 of 2007

Judge: JESSUP J

Date of judgment: 4 May 2011

Cases cited: Albany Molecular Research Inc v Alphapharm Pty Ltd [2011] FCA 120 Port of Melbourne Authority v Anshun Pty Ltd (1981) 147 CLR 589

Date of hearing: Heard on the papers

Date of last submissions: 11 March 2011

Place: Melbourne

Division: GENERAL DIVISION

Category: No Catchwords

Number of paragraphs: 9

Counsel for the Applicant: Mr A Archibald QC with Mr A Ryan SC and Ms K Beattie

Solicitor for the Applicant: Phillips Ormonde Fitzpatrick

Counsel for the Respondent: Mr D Catterns QC with Mr N Murray

Solicitor for the Respondent: Mallesons Stephen Jaques

IN THE FEDERAL COURT OF AUSTRALIA VICTORIA DISTRICT REGISTRY GENERAL DIVISION VID 219 of 2007

BETWEEN: ALBANY MOLECULAR RESEARCH, INC

Applicant/CrossRespondent

AND: ALPHAPHARM PTY LTD (ACN 002 359 739)

Respondent/Cross-Claimant

JUDGE: JESSUP J DATE OF ORDER: 4 MAY 2011 WHERE MADE: MELBOURNE

THE COURT ORDERS THAT:

1. The application be dismissed.

THE COURT DECLARES THAT: 2. So far as it relates to Claims 1, 6, 7, 8, 9 and 10, Australian patent No 699799 is invalid.

THE COURT FURTHER ORDERS THAT: 3. So far as it relates to Claims 1, 6, 7, 8, 9 and 10, Australian patent No 699799 be revoked. 4. Upon the applicant by its counsel undertaking – (a) to prosecute any appeal expeditiously; (b) during the period of the stay, not to threaten any person with proceedings for infringement of claims 1, 6, 7, 8, 9 or 10 of the said patent; and (c) during the period of the stay, not to seek to amend any claims of the said patent otherwise than in the course of or in connection with this proceeding; the operation of Order 3 above be stayed – (i) for 21 days; and (ii) if the applicant has, within that 21day period, lodged an appeal against the making of that order, until the hearing and determination thereof or further order. 5. The cross-claim otherwise be dismissed. 6. Subject to Order 8 below, the applicant pay the respondent's costs of the application. 7. Subject to Order 8 below, save for – (a) 85% of the costs incurred in relation to the allegation that the prior art referred to in the reasons of the court given on 18 February 2011 as "Carr 129" set out an effective means for the preparation of fexofenadine; and (b) costs incurred only in connection with the allegations that the invention did not involve an inventive step, that the claims did not define the invention, that the claims were not clear and succinct, that the priority date was later than 24 June 1993, that the invention was not a manner of manufacture, that the complete specification did not describe the invention fully and that the claims were not fairly based on the matter described in the specification, the cross-respondent pay the cross-claimant's costs of the cross-claim. 8. There be no order as to the costs incurred by the parties after 18 February 2011 in connection with their submissions as to the orders proper to be made to give effect to the court's reasons of that date or as to costs, or in connection with the appearances associated with those submissions, those orders or 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.