Pharmacia LLC v Juno Pharmaceuticals Pty Ltd [2022] FCA 92

DATE OF JUDGEMENT: 15.02.2022:
CASE NO: NSD 1370 of 2019
CASE TITLE: Pharmacia LLC v Juno Pharmaceuticals Pty Ltd [2022] FCA 92
NAME OF HON'BLE COURT: Hon'ble Federal Court of Australia
NAME OF HON'BLE JUDGE: Hon'ble Justice Burley J

Brief Note on the case: 1. Patentee namely Pharmacia and Pfizer its exclusive licensee sought relief against Juno Pharmaceuticals Pty Ltd and Neo Health (Australia) Pty Ltd for infringement of Patent no. 2002256031, titled as “Reconstitutable parenteral composition containing a COX-2 inhibitor.

2.The subject matter Patent was developed by Pharmacia and marketed under the brand DYNASTAT basically used to manage post operative pain.

3.It is claimed that the product PARECOXIB of Respondent namely Juno was infringing the subject matter Patent. Now question was this whether product of Respondent fell within claims of the subject matter Patent.

4.The subject matter case dealt with claim construction.

5.The term about used in the context of claimed percentage weight ranges of the component was interpreted.

6.The Patentee alleged that the term used as about 90% of weight as used in claim 1 should to construed to include 5 % margin error. Hence as per the applicant , the claim 1 of the subject matter Patent may include 94.5% as upper limited. Para 155

7.While the Respondent tried to interpret the term about 90 % to include the nearest whole number, i.e. 90.49%. Para 155

8.As the term about was not defined in the specification, the Hon'ble Court accepted the interpretation given by the Respondents. Para 169

9. The Respondents highlighted that in subject matter Patent , residual water is 1%, while in their products , it was 2.48% and 4.37%. Having considered other difference, the court opined that infringement of claim 11 was not proved. Para 214.

10. In order to test obviousness, it has to be seen , what a person skilled in the was likely to have done, faced with the similar problem claimed in the invention. Para 260, 268.

11.The inventive steps has to be weighed within the parameters of qualitative test and not the quantitative test. Para 311

12.The task of the court involves an inquiry that is explicitly hypothetical. It is concerned with what would have happened had information of the character described been available to the person skilled in the relevant art. Para 318

13.While adjudicating the issue of ‘inventive step, the clarity is often borne our by the evidence of the experts. Para 394.

14.Lack of precise definition in claims is not fatal to their validity so long as they provide a workable standard suitable to the intended use. Para 414.

Ajay Amitabh Suman, IPR Advocate,
Hon’ble Delhi High Court,
ajayamitabh7@gmail.com,
9990389529