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Litigation and Dispute Resolution

As part of the dispute resolution process, consideration is always given to the client's commercial objectives and how these can be achieved in a cost effective manner. Mediation, arbitration and conciliation are always considered as an alternative means of dispute resolution.

Complex commercial litigation requires a high level of expertise both from a legal, technical and strategic perspective with consideration of the client's commercial objectives. Often a client requires urgent injunctive relief from the courts to protect its rights including intellectual property. Such relief may include a mareva injunction to preserve the assets or an Anton Piller Order to preserve evidence.

Stephens Lawyers has an extensive litigation practice with particular emphasis on copyright, patent, trade mark and design infringement, unauthorised use of confidential information, ownership of intellectual property, Trade Practices Act (now Competition and Consumer Act) contravention and commercial/contractual disputes.

The case of Autodesk v. Dyason has been the most closely followed case in the area of computer law in recent years and the first case in Australia where the High Court had to consider amendments to the Copyright Act affording protection to computer programs as literary works. Stephens represented the successful appellants, Autodesk Inc. and Autodesk Australia Pty Ltd.

In recent litigious work, Stephens Lawyers has successfully represented Jesse James and West Coast Choppers in a trade mark ownership and copyright dispute in the Federal Court of Australia. The firm has also assisted Jesse James and West Cost Choppers in obtaining trade mark registration in Australia, to protect their intellectual property assets.

Leading Cases

Currently, Stephens Lawyers is representing clients in the Supreme Court of Victoria who were investors in the failed Timerbercorp and Great Southern Investment Schemes, including litigation against financial planners.

The firm has been involved in major litigation in State and Territory Supreme Courts, the Federal Court of Australia and appellate courts including the High Court of Australia. The firm's reported cases include:

InterPharma Pty Ltd v. Eli Lilly & Company and Anor [10 October 2008 FCA]

In these proceedings Eli Lilly claimed that InterPharma infringes:

(a) Eli Lilly Patent No. 565856 for an invention entitled 'Difluoro nucleoside antivirals', the term of which was extended for a five year period to 7 March 2009 ("Compound Patent").

(b) Eli Lilly Patent No.565856 for an invention entitled 'Steroselective glycosylation process' ("Process Patent")

by applying for Pharmaceutical Benefits Scheme ("PBS") listing and marketing of EBEGEMCIT, a pharmaceutical product containing the active ingredient gemcitabine hydrochloride. Eli Lilly sought an urgent interlocutory injunction requiring InterPharma to withdraw its PBS listing for EBEGEMCIT and to restrain InterPharma from importing, marketing, selling and otherwise exploiting EBEGEMCIT. Eli Lilly also sought to restrain InterPharma from applying for PBS listing, importing and marketing any product containing gemcitabine hydrochloride until the expiry of the Compound Patent and the Process Patent. InterPharma denied infringement and claimed invalidity of the Compound Patent and the Process Patent.

Jessup J refused to grant the interlocutory injunction in relation to the Compound Patent. The fact that the Compound Patent expires on 7 March 2009, calculations of any damages suffered by Eli Lilly was unlikely to present any real difficulties and the apparent strength on InterPharma's case on invalidity were considerations relevant to the injunction not being granted.

In relation to the Process Patent, Jessup J granted a limited interlocutory injunction which restrained InterPharma from dealing with any gemcitabine hydrochloride product made by the process the subject of the evidence before the Court. The practical effect of the decision was that InterPharma was free to deal with any gemcitabine hydrochloride product made using other processes.

InterPharma Pty Ltd v. Commissioner of Patents and Anor [2008] FCA 1283

In these proceedings, InterPharma claimed that the decision of the Commissioner of Patents to grant an extension of term of Eli Lilly Patent 565856 entitled "Difluoro nucloeoside anti-virals" was not lawfully extended under section 70 of the Patents Act 1990. InterPharma further claimed that Eli Lilly, in making the application for extension of term of the patent, had represented to the Commissioner that the pharmaceutical substance on the Australian Register of Therapeutic Goods ("ARTG"), namely Gemzar (a drug for the treatment of cancer) on which it relied was disclosed in Claims 1 to 4 and 6 of the Patent, when this was not the case. The Patent only disclosed anti-viral compounds. InterPharma alleged that these representations to the Commissioner of Patents were made in trade and commerce and were false in contravention of Section 52 of the Trade Practices Act.

Elli Lilly issued an application under Section 31A of the Federal Court of Australia Act for summary judgment claiming that InterPharma had no reasonable prospects of success in relation to said claims.

Sundberg J. held that InterPharma had no reasonable prospect of success in its Section 52 claim because in his opinion the representations by Eli Lilly to the Commissioner of Patents were not made in trade or commerce. Sundberg J followed the decision of Glueck v Stang (2008) 76 IPR 75. In that case, the Court held that representations by Novopharm to the Australian Patent Office, in the course of applying for and obtaining a grant of patent to an invention, were not made in trade or commerce. Sundberg J dismissed InterPharma's claim under Section 52.

In relation to InterPharma's claim that the term of the Patent had not been lawfully extended, InterPharma claimed that it was an "aggrieved person" and therefore had standing to seek orders under Section 5 of Administrative Decisions (Judicial Review) Act 1977 (Cth) (ADJR Act), Section 39B the Judiciary Act and Section 192(1) of the Patents Act. Sundberg J rejected Eli Lilly's claim that InterPharma's standing had evaporated because InterPharma was not in a position to launch product sourced from EBEWE Pharma in Austria, because of an Austrian Court decision on 7 July 2008, which enjoined EBEWE Pharma from making and importing product. InterPharma claimed that it had other sources of supply. Although Sundberg J rejected Eli Lilly's claims in relation to "lack of standing", he held that InterPharma had no reasonable prospects of successfully prosecuting the claims because of delay, despite the fact that InterPharma was not incorporated when the Commissioner made its decision to extend the term of the Patent. InterPharma's claims were dismissed.

Pharmacia Italia SPA & Pfizer (Perth) Pty Ltd v InterPharma Pty Ltd VID 1137/2005 - Federal Court - 31 October 2005.

This case involved a hearing before Registrar Bardsley on 31 October 2005 where InterPharma sought an order that Pfizer (Perth) and Pharmacia Italia ("the applicants") comply with InterPharma's Notice to Produce to make available documents produced in the 1992 proceeding between Farmitalia Carlo Erba S.r.L and Delta West Pty Ltd ("Delta West proceeding"). The Delta West proceeding involved a challenge to the validity of the same patent the subject of the present proceeding brought by Interpharma. The documents cited in InterPharma's Notice to Produce included affidavits and their exhibits, admissions and unsworn witness statements ("Delta West documents").

The applicants contended that the Delta West documents attracted legal professional privilege, and this privilege had not been waived. Registrar Bardsley rejected this argument and ordered the applicants produce the Delta West documents under a confidentiality regime where access to the confidential documents was limited to InterPharma's lawyers, counsel, independent expert witnesses and other persons the applicants consented to in writing.

Pharmacia Italia SPA v InterPharma Pty Ltd [2005] FCA 1675.

In these proceedings, Pharmacia Italia and Pfizer (Perth) ("the applicants"), alleged infringement by InterPharma of the Australian Patent No. 598197 entitled "Injectable ready-to-use solutions containing anti-tumour anthracycline glycoside" ("the patent"). The applicants alleged that InterPharma intended to import, sell and distribute ready-to-use solutions containing doxorubicin hydrochloride and epirubicin hydrochloride ("RTU solutions") being anthracycline glycosides within the scope of the patent. InterPharma had obtained approval from the Therapeutic Goods Administration to market RTU solutions and a listing on the Schedule of Pharmaceutical Benefits ("PBS").

InterPharma issued proceedings seeking to revoke the patent on various grounds claiming that the patent was invalid. The applicants then sought interlocutory relief to restrain InterPharma from importing, selling and distributing RTU solutions and to order that Interpharma procure the withdrawal of the PBS listing.

Justice Sundberg held that the applicants should be granted an interim injunction as they had established that there was a serious question to be tried on the alleged infringement of the patent; the applicants would suffer irreparable harm if the injunction was not granted and the balance of convenience favours the granting of the injunction. Justice Sundberg granted an interim injunction restraining InterPharma only from importing RTU solutions into Australia until the hearing and determination of the matter. The interim injunction restraining InterPharma from importing RTU solutions was discharged in June 2006.

Pharmacia Italia SPA & Pfizer (Perth) Pty Ltd v Mayne Pharma Pty Ltd,InterPharma Pty Ltd v the Commissioner of Patents and Pharmacia Italia SPA [2006] FCA 305.

Two separate proceedings brought by InterPharma and Mayne Pharma Pty Ltd were heard together before Justice Weinberg in the Federal Court in March 2006. InterPharma claimed that the decision by the Commissioner of Patents to grant an extension to Australian Patent No. 598197, "Injectable ready-to-use solutions containing an anti-tumour anthracycline glycoside", ("the patent") was not lawfully made under section 70(2)(a) of the Patents Act (Cth) 1990. The issue raised by Mayne Pharma concerned the rights a patentee has during the term of the patent extension. Justice Weinberg stated that both issues could be resolved by determining if claim 1 of the patent was correctly characterised as a "pharmaceutical substance per se" or if it involved elements of a process or method which take it outside the scope of that phrase. Justice Weinberg held that when claim 1 is read as a whole it claims a new and inventive substance not a method or process. Therefore InterPharma's challenge of the Commissioner of Patents' decision to grant an extension to the patent was dismissed.

Victoria University of Technology v Wilson & Ors (2004) VSC 33 (Supreme Court of Victoria).

These proceedings involved a dispute concerning the ownership of an invention the subject of patent applications and the resulting software developed. The court found that the employees were in breach of their fiduciary duties to the University not to exploit, for their personal benefit, an opportunity to develop an invention presented during the term of their employment. As a result the University was successful against the employees and was entitled to a constructive trust over the shares in IP3 Systems, the company that the employees had set up and had transferred ownership of the invention to.
Victoria University of Technology v Wilson & Ors (2003) VSC 299 (Supreme Court of Victoria).

Victoria University brought proceedings claiming ownership in an invention made by the Defendants. This matter relates to the consideration of Mareva Orders and the principles and standard of proof required in assessing the risk of dissipation of the assets, the balance of convenience and the potential damage suffered by the Defendants. The Defendants' application to discharge the Mareva Orders was denied.

Data Access Corporation v Powerflex Services Pty Ltd & Ors (1999) 45 IPR 353.

This High Court decision dealt with the use of what constitutes a computer program, in particular, whether "macros" or reserved words in themselves can constitute computer programs. The High Court held that if an item is not an "expression of a set of instructions" in a particular language, it is not a computer program. The words in question were not part of a set of instructions within the definition of a "computer program".

Powerflex Services Pty Ltd v Data Access Corporation (1997) 37 IPR 436 (1997) AIPC 91-325 Full Court of the Federal Court.

The Full Court of the Federal Court overturned the majority of the judgement of the trial Judge Mr Justice Jenkinson. In December 1997 Data Access was granted Special Leave to Appeal to the High Court.

Powerflex Services Pty Ltd v Data Access Corporation (1996) 137 ALR 498.

The Full Court of the Federal Court held that in granting a stay of certain orders of a trial Judge: "Order 52, r17 does not require "special" circumstances to be demonstrated before a stay may be granted; the language of the rule suggests no limitation on the broad discretion inherent in the court".

Data Access Corporation v Powerflex Services Pty Ltd (1996) 33 IPR 194.

This was the first case where an Australian court considered whether copyright protection extends to programming languages and whether the non-literal elements of a program are protected. Data Access was successful.

Data Access Corporation v Powerflex Services Pty Ltd & Ors (1994) AIPC 91-112.

This case concerned professional privilege in relation to an action for breach of copyright. The Court held that the documents had to be produced because of the issue of flagrancy and implied waiver.

Hotline Communications Limited & Ors v Hinkley & Ors (1994) 44 IPL 445.

This was an interlocutory hearing before the Supreme Court of Victoria and the case involved the following issues:

(a) injunction where a serious matter to be tried

(b) Anton Piller Order application to dissolve

(c) injunction - security for damages and security for costs.

Autodesk Inc. & Anor v Dyason & Ors (1994) 30 IPR 469.

Autodesk was given leave to use information contained in the Respondents' Affidavits for the purpose of pursuing its rights under the Copyright Act.

Autodesk Inc. & Anor v Dyason & Ors (No. 2) (1993) 24 IPR 33, (1995) 176 CLR 300 (104) ALR 563, (1993) RPC, 25 UK.

This was an application by Dyason and Others to rehear the case. The High Court did not re-open the case but the case is the most significant Australian authority on the power to do so.

Autodesk Inv. & Anor v Dyason & Ors (Autodesk No. 1) (1992) 22 IPR 163, (1991-2) 173 CLR 300 (104) ALR 563, (1992) RPC 575 UK (High Court of Australia).

The High Court reserved the decision of the Full Court of the Federal Court.

Autodesk Australia Pty Ltd v Cheung (1990) 17 IPR 69 (Federal Court of Australia).

This was the first case to deal with damages for infringement of copyright in computer software and is often referred to in computer software and related damages hearings.

Autodesk Inc. & Anor v Dyason & Ors (1990) 18 IPR 109 (Full Court of the Federal Court of Australia).

The Full Court of the Federal Court reversed the decisions of the trial Judge, Mr Justice Northrop. These proceedings concerning the Autodesk Hardware Lock, was the first decision in relation to copyright in computer programs since the Apple Case, and the first judgement relating to the 1984 amendments to the Copyright Act. Autodesk was successful.

Star Micronics Pty Ltd v Five Star Computers Pty Ltd (1990) 18 IPR 224, (1990) ATPR 41-056 (Federal Court of Australia).

The Court found that object code was protected under the Copyright Act as a literary work which it had not been prior to the 1984 amendment. This case was the first to test the 1984 amendments to the Copyright Act.

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