FEDERAL COURT OF AUSTRALIA Daiichi Sankyo Company, Limited v Alethia Biotherapeutics Inc. [2016] FCA 1540 File number: NSD 1177 of 2015 Judge: BURLEY J Date of judgment: 19 December 2016 Catchwords: PATENTS – appeal under s 60(4) of the Patents Act 1990 (Cth) – where opponent has effectively withdrawn and Commissioner of Patents is not taking active part in proceedings – no evidence to support grounds of opposition – appeal allowed Legislation: Patents Act 1990 (Cth) ss 59, 60 Federal Court Rules 2011 (Cth) r 34.23 Cases cited: Cadbury Schweppes Plc v Effem Foods Pty Ltd [2006] FCA 1267; (2006) 69 IPR 584 Delnorth Pty Ltd v Dura-Post (Aust) Pty Ltd (Administrator Appointed) [2010] FCA 465; (2010) 85 IPR 642 Scott v Icon Plastics Pty Ltd [2012] FCA 428 Date of hearing: Determined on the papers Date of last submissions: 21 November 2016 Registry: New South Wales Division: General Division National Practice Area: Intellectual Property Sub-area: Patents and associated Statutes Category: Catchwords Number of paragraphs: 9 ORDERS NSD 1177 of 2015 BETWEEN: DAIICHI SANKYO COMPANY, LIMITED Appellant AND: ALETHIA BIOTHERAPEUTICS INC. First Respondent COMMISSIONER OF PATENTS Second Respondent JUDGE: BURLEY J DATE OF ORDER: 5 DECEMBER 2016 BY CONSENT, THE COURT ORDERS THAT: 1. Pursuant to r 34.23 of the Federal Court Rules, the Commissioner of Patents (Commissioner) be joined as the second respondent. 2. The appeal be allowed. 3. The decision of the delegate of the Commissioner made on 9 September 2015 concerning opposed Australian Patent Application 2008311698 ([2015] APO 59) be set aside. 4. Alethia Biotherapeutics Inc's opposition to Australian Patent Application 2008311698 is dismissed. 5. Australian Patent Application 2008311698 proceed to grant. 6. There be no order as to costs. Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011. REASONS FOR JUDGMENT BURLEY J: 1 On 5 December 2016, I made the following consent orders in these proceedings and indicated that I would set out my reasons for doing so a little later: 1. Pursuant to r 34.23 of the Federal Court Rules, the Commissioner of Patents (Commissioner) be joined as the second respondent. 2. The appeal be allowed. 3. The decision of the delegate of the Commissioner made on 9 September 2015 concerning opposed Australian Patent Application 2008311698 ([2015] APO 59) be set aside. 4. Alethia Biotherapeutics Inc's opposition to Australian Patent Application 2008311698 is dismissed. 5. Australian Patent Application 2008311698 proceed to grant. 6. There be no order as to costs. 2 The relevant background to these orders is as follows. 3 On 9 September 2015, a delegate of the Commissioner gave a decision in an opposition brought pursuant to section 59 of the Patents Act 1990 (Cth) (Act) whereby certain claims of Australian Patent Application 2008311698 were found to lack an inventive step. Accordingly, the Commissioner refused to allow those claims to proceed to grant. 4 These proceedings are an appeal from that decision, brought pursuant to subsection 60(4) of the Act. 5 In Cadbury Schweppes Plc v Effem Foods Pty Ltd [2006] FCA 1267; (2006) 69 IPR 584 (Cadbury Schweppes) Lindgren J considered circumstances where there is an appeal from a decision of the Commissioner of Patents to refuse to grant a patent application, but no one tenders any evidence at the hearing of the appeal in support of any ground of opposition to the grant of the patent. At [12] – [18] of his reasons his Honour said: 12 An appeal under s 60(4) of the Act is a proceeding in the original jurisdiction of the Court, and is in the nature of a hearing de novo. None of the evidence in support of the opposition that was before the Delegate was before the Court. 13 Cadbury submitted that the onus rested on Effem to establish that, if granted, the Patent would be clearly invalid: F Hoffman-La Roche AG v New England Biolabs Inc (2000) 99 FCR 56 at [48]-[67]. 14 Cadbury further submitted that in the circumstances, it was not required to adduce any evidence to counter the ground of opposition that succeeded before the Delegate or any other ground of opposition. 15 Recently, in European Community v Commissioner of Patents [2006] FCA 706, Young J dealt with a similar submission made in similar forensic circumstances. Young J accepted the submission and held that the appeal should be allowed and that the application for the patent should proceed to grant. His Honour referred to Caroma Sales Pty Ltd v Philmac Pty Ltd (1972) 46 ALJR 324 per Walsh J; Brickwood Holdings Pty Ltd v ACI Operations Pty Ltd [1983] 2 VR 587 at 588-589 per King J; and Titan Mining & Engineering Pty Ltd v Arnall's Engineering Pty Ltd (1988) 12 NSWLR 73 at 75-76 per McLelland J. 16 I have read those authorities, but will not review them. They support the following propositions: • on the hearing of an appeal under s 60(4) of the Act (the precursor provision, with which the cases to which Young J referred were concerned, was s 60(5) of the Patents Act 1952), the only evidence to be taken into consideration is that adduced on that hearing; • the applicant is not obliged to put into evidence the evidentiary material that was before the Commissioner or other evidence, going to the merits of the appeal or going to actual or potential grounds of opposition; • where, as in the present case, the opponent has withdrawn and the Commissioner has indicated on the hearing of the appeal that she does not wish to take any active part in the proceeding, and there is no evidence before the Court capable of supporting any actual or potential ground of opposition, there is no basis on which the Court can uphold any ground of opposition. 17 It is important to note that in the light of the history of the application, and, in particular, the Commissioner's acceptance of the application and the complete specification, s 61 of the Act would have obliged the Commissioner to grant the Patent if there had been no opposition to the grant. In substance, that is now the position on the appeal. 18 The appeal should be allowed, the Commissioner's decision allowing the opposition should be reversed, and the Patent application should proceed to grant. 6 The reasoning set out in these paragraphs has been followed in a number of cases, including Delnorth Pty Ltd v Dura-Post (Aust) Pty Ltd (Administrator Appointed) [2010] FCA 465; (2010) 85 IPR 642 at [13] – [16]; Scott v Icon Plastics Pty Ltd [2012] FCA 428 at [12], [14] and [15]. 7 In the present case, the circumstances are relevantly the same as those identified in [16] of Cadbury Schweppes, namely, the first respondent has effectively withdrawn (it filed a Submitting Notice dated 26 October 2016 and a Notice of Discontinuance in relation to its cross-appeal dated 27 October 2016), the Commissioner has indicated that she does not wish to take any active part in the proceeding, and there is no evidence before the Court capable of supporting any actual or potential ground of opposition. As a consequence, there is no basis on which the Court can uphold any ground of opposition. 8 The matters that I have adverted to were set out in an affidavit of Paul Alexander Dewar, which was supplied to me in support of the consent orders to which I have referred in [1] above. 9 In these circumstances, it was appropriate to make the orders disposing of the proceedings and allowing the appeal from the decision of the delegate. I certify that the preceding nine (9) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Burley. Associate: Dated: 19 December 2016