Boehringer Ingelheim Animal Health USA Inc v Zoetis Services LLC [2023] FCA 1119

Federal Court of Australia

Boehringer Ingelheim Animal Health USA Inc v Zoetis Services LLC [2023] FCA 1119 Appeal from: Boehringer Ingelheim Animal Health USA Inc. v Zoetis Services LLC [2020] APO 40

File number(s): VID 632 of 2020

Judgment of: ROFE J

Date of judgment: 21 September 2023

Catchwords: PATENTS – three patent applications on appeal from a decision of a delegate of the Commissioner of Patents – patent applications disclose supernatant vaccine for Mycoplasma hyopneumoniae (M. hyo), a disease affecting pigs – applications include a platform, a bivalent and a multivalent vaccine – validity EVIDENCE – challenge to independence of expert witness – where expert did not disclose the extent of his prior involvement with the appellant – where non-disclosure was not deliberate but nevertheless tainted evidence – where evidence disregarded unless corroborated by other experts PATENTS – construction of integers of the claims – meaning of the term "comprising" – whether inclusive or exhaustive definition should be used PATENTS – common general knowledge – state of knowledge in the field of swine pathogens as at the priority date – vaccines against M. hyo available at the priority date PATENTS – validity – lack of inventive step – ss 7(2) and (3) of the Patents Act 1990 (Cth) – prior art documents to be considered – whether claim 1 in each of the 3 applications is obvious PATENTS – validity – lack of support and lack of disclosure PATENTS – validity – best method requirement – whether patentee has satisfied its duty to disclose the best method of performing the invention – duty not satisfied PATENTS – validity – manner of manufacture – whether certain of claims of the Applications are claims to "mere collocations" of integers rather than a patentable combination