Injunctive relief - preparation on procedural and substantive fronts

Sigma Pharmaceuticals (Australia) Pty Ltd (ACN 004 118 594) v Wyeth [2009] FCA 595 (3 June 2009):
http://www.austlii.edu.au/au/cases/cth/FCA/2009/595.html

Law

With a raft of patent cases working through the Federal Court, the Hon. Justice Sundberg has recently handed down a decision involving injunctive relief. The decision is one that analysed the the traditional principles involved with respect to interlocutory injunctions.

Of interest to the author was the overlapping nature of the general principles involved when granting an interlocutory injunction. His Honour relevantly said at [15]:

"[W]hether there is a serious question or a prima facie case should not be considered in isolation from the balance of convenience. The apparent strength of the parties’ substantive cases will often be an important consideration to be weighed in the balance: Tidy Tea Ltd v Unilever Australia Ltd (1995) 32 IPR 405 at [416]; Interpharma Pty Ltd v Commissioner of Patents (2008) 79 IPR 261 (Interpharma). "

At [16], his Honour reiterated the principle espoused by Jessup J in Interpharma that "special considerations apply where, as here, the party seeking interlocutory relief alleges infringement and the other party alleges invalidity."

Implications

The decision is an important one. It confirms the complexity of interlocutory injunctions in patent cases during their infancy. It also demonstrates the importance of preparing (in advance) on procedural and substantive fronts. The latter in this case being of some significance, where his Honour's judgment closely examined the relevant infringement and validity grounds (albeit in a prima facie sense).

The case is also noteworthy as one citing the leading cases on the threshold issue of inventiveness - including NV Philips Gloeilampenfabrieken v Mirabella International Pty Ltd [1995] HCA 15, (1995) 183 CLR 655 at 661-666 and Merck & Co Inc v Arrow Pharmaceuticals Ltd [2006] FCAFC 91; (2006) 154 FCR 31 at [63],

Despite debate as to whether this validity ground survived Lockwood (as suggested by some commentators), one of Australia's senior Federal Court judges has now, in this case, reinforced its application in Australian law. Whether disclaimers and the Gerber defence are relevant to that cause of action will, presumably, be points for trial and/or other recently filed Federal Court proceedings. Both those issues have been addressed on this site in earlier posts. The author intends to track this issue with interest given the unique nature of the threshold question to Australia's IP landscape. See posts - Bilski's relevance to Australia http://www.blogger.com/www.ipaustralia.gov.au/resources/news_new.shtml#29http://www.iproo.net/2008/11/bilskis-relevance-to-australia-acip.html