There is no time like the present
The Federal Court of Australia recently refused an application for an interlocutory injunction by Aventis because ten months had elapsed between Aventis' realisation of allegedly infringing conduct by two generic manufacturers and its subsequent application for injunctive relief from such conduct (Interpharma Pty Ltd v Aventis Pharma SA [2011] FCA 32).
Aventis realised in February 2010 that two generic manufacturers, Interpharma and Hospira, intended to market generic docetaxel (taxotere) compositions following the expiry of Aventis' docetaxel compound patent (AU591309) having on 6 February 2011. Between February and May 2010, Aventis communicated with the generic manufacturers and repeatedly threatened to apply for injunctive relief, unless the generic manufacturers provided undertakings that their conduct would not infringe Aventis' Australian patent covering specific docetaxel compositions (AU666859; having an expiry date of 3 July 2012 and referred to as "the composition patent" below).
However, the generic manufacturers did not provide such undertakings and Aventis did not take immediate action. In fact, Aventis only filed an application for an interlocutory injunction after the generic manufacturers initiated revocation proceedings against the composition patent.
Justice Jagot, for the Federal Court, considered the three main questions relevant to an application for an interlocutory injunction. Namely:
a) Whether there is a serious question to be tried;
b) Whether the patentee would suffer irreparable harm for which damages would not be an adequate remedy; and
c) Whether the balance of convenience favours granting inte rlocutory relief.
With regard to a) above, the judge found that Aventis had established a prima facie case and that, if the evidence remains as it is, there was a probability that a trial would find Aventis to be entitled to relief.
However, with regard to b) and c) above, Justice Jagot did not find in Aventis' favour. She held that Aventis' damages resulting from lost sales or decreased profits could easily be calculated at the conclusion of trial - should the generic manufacturers be found to have infringed the composition patent. In addition, she held that no unquantifiable losses would be likely to occur, particularly in light of the impending expiry of the composition patent.
More importantly, however, Justice Jagot held that Aventis had failed to establish that the balance of convenience should favour the grant of an interlocutory injunction. Specifically, she stated that Aventis inadequately explained the delay in seeking injunctive relief and that "[t]his delay, its consequences and the lack of an adequate explanation for it, when weighed with all other factors on which the parties relied, leads to the conclusion that the balance of convenience favours a refusal to grant relief."
As indicated above, the application was refused and revocation/infringement proceedings are currently pending before the Federal Court of Australia (Hospira Australia Pty Ltd & Anor v Aventis Pharma S.A., NSD1521/2010).
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