30 August 2015

Case: Orion Corporation v Actavis Pty Ltd [2015] FCA 909 (21 August 2015)

Judge: Rares J


  1. A combination of three known active pharmaceutical ingredients (APIs) called levodopa, carbidopa and entacapone, and methods of producing that combination and tablets comprising it used in the treatment of Parkinson’s disease.
  2. Drafting tip: Court referred to a paragraph in the specification that referred to "comprises". This was used in the construction of the claims.
  3. Skilled addressee - a legal construct whose appreciation must draw upon expertise in more than one field, discipline or art. That will reflect the likely reality that the claimed invention will have involved an inter-disciplinary team of various skilled persons. The legal standard for the degree of expertise that the skilled addressee will bring to the problem at hand, in light of the common general knowledge, is, again, an objective one of a non-inventive skilled worker in the field: Minnesota Mining and Manufacturing Co v Beiersdorf (Australia) Ltd 
  4. The question of what the invention described in the specification was must be decided first, before considering arguments as to the validity of the individual claims: Welch Perrin & Co Pty Ltd v Worrel [1961] HCA 91.
  5. Claims should be construed in a way in which the invention will work in preference to one in which it will not - Pfizer Overseas Pharmaceuticals v Eli Lilly & Co [2005] FCAFC 224
  6. A skilled addressee will take a commonsense approach and would therefore assume certain characteristics in order for the definition to make sense.
  7. Relative expressions that require the exercise of judgment can be used in a claim but must be understood in a practical commonsense manner: Stena Rederi Aktiebolag v Austal Ships Sales Pty Ltd [2007] FCA 864.
  8. Utility - Advanced Building Systems Pty Ltd v Ramset Fasteners (Aust) Pty Ltd [1998] HCA 19.
  9. Inventive step - Lockwood Security Products Pty Ltd v Doric Products Pty Ltd (No 2) [2007] HCA 21. A “scintilla of invention” remains sufficient in Australian law to support the validity of a patent.” Ingenuity may lie in an idea for overcoming a practical difficulty in circumstances where a difficulty with a product consisting of a known set of integers is common general knowledge.

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