Yet another decision granting an interlocutory injunction to restrain infringement of a patent relating to a pharmaceutical product in Abbott GMBH & Co. KG v Apotex Pty Ltd [2009] FCA 1366, highlights the potential significance of a deliberate decision not to seek revocation of a patent prior to entering the market.
Having considered the claim for infringement and the cross-claim for revocation which was stated to be “a legitimate and potentially viable cross-claim that will require a serious response from the applicants”, Jessup J concluded that the patentee Abbott had made out a prima facia case. His honour then considered the balance of convenience, noting that “this is not a case in which the respondent has been preparing to introduce a new product on to the market, and is surprised to learn of the suggestion that its proposed product would infringe an existing patent”. Rather;
the respondent knew of the patent in suit, and (I infer) of its potential to stand in the way of its commercial plans, as much as about a year ago. Yet no challenge was made to the validity of the patent until the applicants were on the threshold of losing the added protection of patent No 633529. Standing alone, this would account to an important discretionary consideration in favour of granting the relief which the applicants seek.
In seeking to diminish the significance of this factor, Apotex relied upon the recent Full Court decision in
Smith & Nephew Pty Ltd v Wake Forest University Health Sciences [2009] FCAFC 142 (reported
here), in which the Court held that:
it would be an error in considering whether the grant of an interlocutory injunction, in the context of an infringement claim, where the validity of the patent is in issue, to impose on a person who seeks to launch an alleged infringing product, an obligation to ‘clear the way’ by revoking the patent. Equally, the fact that a new entrant is prepared to take the risk of being restrained with its eyes wide open, should not be elevated beyond being a factor in the assessment of the many factors relevant to whether to grant an injunction.
Jessup J considered that taking this factor into account as a discretionary consideration was in the circumstances appropriate, concluding that:
[t]he respondent chose to refrain from challenging the validity of the patent in suit for what I consider to be essentially tactical reasons. To expect it to live with the consequences of that choice does not, I consider, amount to the imposition of a requirement that it “clear the way”.
Accordingly, while not to be elevated above the many factors to be considered in assessing the balance of convenience, a deliberate tactical decision not to challenge the validity of a patent prior to entering the market is likely to weigh in favour of the grant of an interlocutory injunction. Given that the grant of a patent is a prima facie indication of its validity, it is unsurprising that a party who considers its conduct shall not infringe because the patent is bad should be restrained from the allegedly infringing conduct until such time as its case for invalidity is made out.