Commonwealth of Australia v Sanofi (formerly Sanofi-Aventis) (No 5) [2020] FCA 543

FEDERAL COURT OF AUSTRALIA

Commonwealth of Australia v Sanofi (formerly Sanofi-Aventis) (No 5) [2020] FCA 543 File number: NSD 1639 of 2007

Judge: NICHOLAS J

Date of judgment: 28 April 2020

Catchwords: PRACTICE AND PROCEDURE – where usual undertaking as to damages given in relation to interlocutory injunction obtained by patentee restraining infringement of pharmaceutical patent – where interlocutory injunction restrained generic supplier from supplying generic medicine – where generic supplier also gave interlocutory undertaking to the Court not to take steps to cause its generic medicine to be listed under the Pharmaceutical Benefits Scheme ("PBS") – where interlocutory undertaking was not the subject of any cross-undertaking as to damages – where final injunction subsequently granted against generic supplier by trial judge restraining it from supplying its generic medicine – where undertaking as to damages given in relation to final injunction as part of a package of undertakings to operate until determination of generic supplier's appeal and patentee's cross-appeal – where Full Court made orders setting aside final injunction and revoking patent – where claim for compensation under undertakings as to damages subsequently brought by generic supplier – where claim by generic supplier discontinued after it entered into settlement agreement with patentee – where Commonwealth claims against patentee for compensation under undertakings as to damages on the basis that it is a person adversely affected by interlocutory injunction and final injunction – where Commonwealth alleges loss and damage reflecting subsidies paid by it under PBS that it would not have paid had generic supplier obtained PBS listing of its generic medicine from 1 April 2008 – whether Commonwealth a person adversely affected by interlocutory injunction and final injunction – whether Commonwealth's alleged loss and damage would have been suffered but for interlocutory injunction or final injunction – whether generic supplier would have taken steps to list its generic medicine on PBS in absence of interlocutory injunction or final injunction – significance of undertaking given by generic supplier not to take steps to obtain PBS listing of its generic medicine – whether evidence establishes that PBS listing of generic supplier's medicine would have occurred but for the existence of the interlocutory injunction or final injunction – whether Commonwealth's alleged loss and damage a direct and reasonably foreseeable result of interlocutory injunction or final injunction – significance of final injunction and undertaking as to damages given in relation to final injunction in relevant counterfactual analysis – whether loss claimed by Commonwealth compensable under undertaking as to damages – whether relief claimed by Commonwealth should be refused in whole or part on discretionary grounds on account of conduct that would have been engaged in under relevant counterfactual scenario involving infringement by generic supplier of patentee's copyright in product information documents and alleged infringement of Canadian patent by generic supplier's Canadian parent company and on public interest grounds Held: application for compensation dismissed