Case: Beecham Group Ltd v Bristol Laboratories Pty Ltd [1968] HCA 1 ; (1968) 118 CLR 618
Outcome: discussed
respondent's submission that, in a patent infringement case such as this, where the validity of the patent is challenged, the practice of the court is to refuse an interlocutory injunction depended on Beecham Group Ltd v Bristol Laboratories Pty Ltd [1968] HCA 1 ; (1968) 118 CLR 618 at 623-624. In Beecham , Kitto, Taylor, Menzies and Owen JJ referred (at 623) to "the special considerations which generally arise in a patent action where there is a substantial issue to be tried as to the validity of the patent". Their Honours (at 623-624) said: [T]he plaintiff's prima facie case must be a strong one so far as the question of validity is concerned, for he asserts a monopoly and must give more proof of the right he claims than is afforded by the mere granting of the patent ... The general practice in that kind of case has long been to refuse an interlocutory injunction unless either the patent has already been judicially held to be valid or it has stood unchallenged for a long period ... In Genrx (73 IPR at 503-504 [2]-[6]), Gyles J again considered the ongoing significance of Beecham for the grant of interlocutory injunctions in cases of alleged patent infringement. As his Honour observed, after American-Cyanamid Co v Ethicon Ltd [1975] UKHL 1 ; [1975] AC 396 , there was a good deal of discussion about the importance of apparent differences between American-Cyanamid and Beecham . His Honour continued (at 503 [4]): The most influential consideration of the issue in relation to patents was that by Gummow J in Martin Engineering Co v Trison Holdings Pty Ltd (1988) 81 ALR 543 ; 11 IPR 611. In the course of that judgment his Honour pointed out that the authorities referred to by the High Court in Beecham Group for not attributing great significance to the grant of a patent were old cases from England based upon a different system for grant than that which had developed in Australia by that time. The system of examination of patents prior to grant in Australia was more stringent than had been the case in England the century before. The practical effect of this decision was to give greater weight to the grant of a patent thereafter than might have been deduced from Beecham Group . Gyles J rejected a submission to the effect that the decision of the High Court in Australian Broadcasting Corporation v O'Neill [2006] HCA 46 ; (2006) 227 CLR 57 had restored the authority of Beecham in this regard. His Honour noted, correctly in my view, that the reaffirmation of Beecham by the High Court in O'Neill concerned the elucidation of what is required for a prima facie case (or serious question to be tried). The applicants submitted that the respondent got itself into this situation with its eyes wide open. As noted above, Ms Evans' evidence was that representatives of Shenzhen Ant had said that there were no patents that would cause any issue for the respondent in selling syringes in Australia. The applicants argued that the respondent ought to have checked the position for itself. That is, the respondent has offered for sale or sold the syringes in the knowledge that they were the subject of a patent, or in circumstances where the respondent should have known of the patent. A consideration of this kind has been weighed in the balance of convenience from time to time: see Beecham 118 CLR at 626; Tidy Tea Ltd v Unilever Australia Ltd (1995) 32 IPR 405 at 415; Pharmacia Italia SpA v Interpharma Pty Ltd (2005) 67 IPR 397 at 408 [52]; Interpharma 79 IPR at 282 [77]; and Sigma Pharmaceuticals [2009] FCA 595 at [61] - [62] . There would indeed appear to be some force in the applicants' criticism of the respondent's conduct in this regard. The evidence on this point is slight, however, and I would not therefore be inclined to give this factor much weight in determining the outcome of the applicants' interlocutory injunction application.