Boehringer Ingelheim Animal Health USA Inc. v Intervet International B.V. [2020] FCA 1333

FEDERAL COURT OF AUSTRALIA

Boehringer Ingelheim Animal Health USA Inc. v Intervet International B.V. [2020] FCA 1333 Appeal from: A decision of a delegate of the Commissioner of Patents: Merial, Inc. v Intervet International B.V. [2018] APO 52 (17 August 2018)

File number: VID 1127 of 2018

Judgment of: MOSHINSKY J

Date of judgment: 17 September 2020

Catchwords: PATENTS – appeal under s 60(4) of the Patents Act 1990 (Cth) – novelty – combination injectable formulation for controlling parasites in animals – where opponent contended that alleged invention lacked novelty based on Chinese patent application – where Chinese patent application did not describe the type of formulation intended to be made or any manufacturing steps – where the relevant example in the Chinese patent application specified a concentration of 5% w/v levamisole hydrochloride but the patent application in suit specified a range between 10-35% w/v PATENTS – appeal under s 60(4) of the Patents Act 1990 (Cth) – inventive step – obviousness – combination injectable formulation for controlling parasites in animals – where opponent contended that alleged invention lacked an inventive step based on common general knowledge alone, or common general knowledge and the Chinese patent application – where the alleged invention was a combination injectable formulation in a non-aqueous solvent system where the macrocyclic lactone was in solution and the levamisole was a salt in particulate form – where there were no known injectable formulations of levamisole in particulate form in an oily formulation – where it was common general knowledge that levamisole and macrocyclic lactones are chemically incompatible PATENTS – appeal under s 60(4) of the Patents Act 1990 (Cth) – utility – where opponent contended that alleged invention lacked utility – promise of the patent application – whether the patent application promised stability for six months under accelerated conditions – whether, in the alternative, the patent application promised stability for three months under accelerated conditions – whether lack of utility established by stability study data in later patent application