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  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
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
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
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
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).
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
To print this article, all you need is to be registered on Mondaq.com.
Click to Login as an existing user or Register so you can print this article.
IP is the legal property in the innovation in your business and it is that which drives your revenue and profit growth.
Some comments from our readers… “The articles are extremely timely and highly applicable” “I often find critical information not available elsewhere” “As in-house counsel, Mondaq’s service is of great value”
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).