Patents - Life Sciences

  • Advised and acted for Wyeth in one of the largest and most complex life sciences patent litigations ever in Australia, involving three separate proceedings against eight separate parties (including the Commonwealth of Australia) in respect of their claims on undertakings as to damages ordered in return for interlocutory injunctions preventing the launch of generic extended release venlafaxine products. These three cases, which involved a six week trial, were the first cases in Australia to address claims on undertakings as to damages in pharmaceutical patent litigation by generic pharmaceutical companies, their suppliers and the Commonwealth of Australia.
  • Advising and acting for Pfizer in Australia’s first biologic / biosimilar patent dispute, as well as several other patent disputes, involving six adverse parties, relating to Pfizer’s patents covering the process for producing etanercept, the active ingredient in Pfizer's blockbuster biological medicine Enbrel®. We have already achieved success in this ongoing matter before Australia’s highest court.
  • Advising and acting for Israeli innovator pharmaceutical company, Neurim Pharmaceuticals 1991 (Ltd), in patent amendment, infringement and revocation proceedings against two generic pharmaceutical companies in relation to Neurim’s patent covering Neurim’s prolonged release melatonin medication for the treatment of primary insomnia characterised by non-restorative sleep. This ongoing case has already established new law in several areas, including in relation to patent amendment. We worked as part of a global team, managing and coordinating strategy across numerous jurisdictions.
  • Advising and acting for Pfizer and Pharmacia in patent infringement and revocation proceedings in relation to Pharmacia’s patent covering the parecoxib reconstitutable powder injectable formulation for Pfizer's Dynastat® pain medicine.
  • Advised and acted for Warner-Lambert in patent infringement and revocation proceedings in relation to Warner-Lambert’s patents relating to pregabalin, the active ingredient in the blockbuster pain medicine Lyrica®. We worked as a part of a global team in this multi-jurisdictional patent dispute.
  • Advised and acted for Pfizer in patent infringement and revocation proceedings with respect to Pfizer’s patents relating to sildenafil, the active ingredient in its blockbuster erectile dysfunction medication Viagra®. We worked as a part of a global team in this multi-jurisdictional patent dispute.
  • Advised and acted for an American global pharmaceutical company in relation to patent issues relating to a number of the company's products. This included acting for the company in multiple proceedings in Australia, and co-ordinating proceedings in other Asia-Pacific jurisdictions, as part of a global team involved in multi-jurisdictional patent infringement and revocation proceedings with respect to a family of patents relating to the company's successful anti-cancer treatment product. In the main Australian proceedings, the company successfully resisted a challenge to the patent term extension of one of the patents-in-suit, successfully amended the claims of that patent in the course of litigation and successfully obtained an interlocutory (preliminary) injunction enjoining the marketing of two generic competitors' products. The proceedings established an important set of guiding principles in Australia for determining when an interlocutory injunction will be granted in pharmaceutical patent infringement cases.
  • Advising and acting for Neurim in the Australian Patent Office in patent opposition proceedings relating to Neurim’s application for a patent for a novel prolonged release mini-tablet melatonin formulation.
  • Advising and acting for many of the world's top multinational innovator pharmaceutical companies on patent issues and disputes relating to a wide variety of their products including anti-cancer medications, proton pump inhibitors, selective serotonin reuptake inhibitors, calcium channel blockers, selective 5-HT3 receptor antagonists, JAK inhibitors, statins, pain medications, atypical antipsychotics, antihistamines, arthritis medications, anti-fungal medications, smoking cessation medications, vaccines, antibiotics, and insulin.
  • Acted for many of the world's top multinational innovator pharmaceutical companies in patent disputes against almost 40 generic pharmaceutical companies, including almost every generic pharmaceutical company in Australia.
  • Advising and acting for many of the world’s top multinational innovator pharmaceutical companies on patent - including patent term extension, patent portfolio management and patent litigation - and non-patent (including data exclusivity) strategies to maximise the commercial life of their product portfolio.
  • Advised the world leader in implantable hearing solutions on a number of patent issues regarding a family of electrical and mechanical engineering patents in the field of hearing aids and hearing implants.
  • Advised and negotiated on behalf of a leading biotechnology company in relation to the licensing of a family of RNAi patents.
  • Advised and acted for a leading biotechnology company in a Federal Court appeal of a patent office opposition regarding a patent for the perfusion culturing of cells.
  • Acted for one of the world's premier veterinary pharmaceutical companies in an appeal from the decision of the Australian Patent Office relating to a patent directed to an equine anthelmintic formulation.

Patents - Technology

  • Acted for eight of the world's leading manufacturers of bar code scanning technology and one of the world's leading manufacturers of computer vision technology in a patent infringement action brought by a US inventor in relation to a family of patents directed to bar code scanning and machine vision technology. The case, which was appealed to the United States Supreme Court, established an important new defence to patent infringement.
  • Advised several leading telecommunication companies on a number of patent issues relating to a variety of telecommunication technologies.
  • Acted in patent infringement proceedings of an innovation patent directed to a real time pre-paid call access system.

Copyright / Technology

  • Acted in one of Australia’s largest copyright and software licensing disputes, involving one of Australia’s largest computer networks and spanning several decades of computer and network technology.

Regulatory - Life Sciences

  • Advising numerous life sciences companies on a broad range of regulatory issues including registration of pharmaceuticals and medical devices and technologies, promotion of products, compliance with industry codes, and clinical trials.