Orion Corporation v Actavis Pty Ltd [2015] FCA 909

FEDERAL COURT OF AUSTRALIA

Orion Corporation v Actavis Pty Ltd [2015] FCA 909 Citation: Orion Corporation v Actavis Pty Ltd [2015] FCA 909

Parties: ORION CORPORATION AND OTHERS AS NAMED IN THE SCHEDULE v ACTAVIS PTY LTD ACN 003 854 626 AND ANOTHER AS NAMED IN THE SCHEDULE; ACTAVIS PTY LTD ACN 003 854 626 AND ANOTHER AS NAMED IN THE SCHEDULE; ORION CORPORATION AND OTHERS AS NAMED IN THE SCHEDULE

File number: NSD 2456 of 2013

Judge: RARES J

Date of judgment: 21 August 2015

Catchwords: PATENTS – whether patent invalid for failure to define invention – construction of patent – whether characteristics described in complete specification defined invention or constituted preferred embodiments – infringement – addition of integers to invention did not create a new working combination of integers to take claim beyond infringement – whether claims sufficiently clear – construction of phrase "substantial portion" – elucidation of a workable standard for skilled addressee must form part of construction of claim – whether claims fairly based on matter described in specification – description of certain embodiments in specification did not exclude those embodiments from invention merely because other embodiments described as preferable – whether claims lacked utility – whether assertion of monopoly in claims limited to useful results – determination of relevant priority date – whether claims lacked novelty compared with prior art base – skilled addressee's "background knowledge" of extrinsic matters not relevant to consideration of novelty – whether invention involved inventive step – consideration of difficulties and complications inventors faced, in determining obviousness of invention