Generic Health Pty Ltd v Otsuka Pharmaceutical Co. Ltd [2013] FCAFC 17

 The Full Federal Court has dismissed the appeal from Generic Health Pty Limited (Generic Health) against interlocutory orders made against them back in 2012. The court was satisfied that there was no error on the part of the primary judge and found that the scope of each interlocutory order was appropriate once it was recognised that a prima facie case of infringement of s 117(2)(b) of the Patents Act 1990 (Cth)  (the Act) was established.

Background

Interlocutory orders were made by the primary judge on 22 March 2012 on the basis that the supply of certain products by Generic Health would involve an infringement of Australian patent number 200501772 by reason of s 117(2)(b) of the Act. The section basically provides that if the supplier who supplies a product to another person has reason to believe that the other person would put the product to a particular use and that that use would infringe a patent, then the supplier will be also have infringed that patent.

The Facts

The respondent, Otsuka Pharmaceutical Co. Limited (Otsuka) is the holder of the patent concerned. The patent relates to a method of treating patients suffering from a disorder associated with the central nervous system; i.e. schizophrenia. A core ingredient of this treatment is a substance known as aripiprazole which Generic Health was responsible for supplying. Generic Health contends that they had no reason to believe that a person to whom it supplied GH products would put them to an infringing use in order to make s117(2)(b) applicable.

The Decision

The primary judge ruled that Generic Health had reason to believe that there would be an infringement on the grounds that, amongst other things, Generic Health is a pharmaceutical company that supplies pharmaceutical products and thus is recognised objectively as having an interest in the use of its products. Further to this, the primary judge recognised that in light of all the evidence, Generic Health had reason to believe that its products would be put to use in treating patients suffering from cognitive impairment caused by schizophrenia.

Ultimately, the Full Court found no error with the primary judge’s reasoning and dismissed the appeal.

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