Apotex Pty Ltd v Les Laboratoires Servier (No 2) [2009] FCA 1019 (11 September 2009)

Last Updated: 16 September 2009

FEDERAL COURT OF AUSTRALIA

Apotex Pty Ltd v Les Laboratoires Servier (No 2) [2009] FCA 1019

PATENTS – application to amend patent – whether amendments allowable under s 102(1) and s 102(2) of the Patents Act 1990 (Cth) – claimed invention relates to the form of the compound – whether a real and reasonably clear disclosure of the feature of “individual needles” in the patent specification – discretion under s 105 of the Act – whether Court should exercise discretion to refuse amendments – whether full and frank disclosure of reasons for amendment – amendments add new claims but do not delete existing claims

Patents Act 1990 (Cth) ss 40(2), 40(3), 102(1), 102(2), 105

Apotex Pty Ltd v Les Laboratoires Servier [2008] FCA 1466; (2008) 79 IPR 100
Gambro Pty Ltd v Fresenius Medical Care South East Asia Pty Ltd [1999] FCA 1848; (1999) 48 IPR 625
Gambro Pty Ltd v Fresenius Medical Care South East Asia Pty Ltd (2000) 49 IPR 321
ICI Chemicals & Polymers Ltd v Lubrizol Corp [1999] AIPC ¶91-521
ICI Chemicals & Polymers Ltd v Lubrizol Corporation Inc [2000] FCA 1349; (2000) 106 FCR 214
Les Laboratoires Servier v Apotex Inc [2008] EWCA Civ 445
Lockwood Security Products Pty Limited v Doric Products Pty Limited [2004] HCA 58; (2004) 217 CLR 274
Novartis AG v Bausch & Lomb (Australia) Pty Ltd [2004] FCA 835; (2004) 62 IPR 71
Olin Corporation v Super Cartridge Co Pty Ltd [1977] HCA 23; (1977) 180 CLR 236
Oxford Gene Technology Ltd v Affymetrix Inc (No 2) [2000] EWCA Civ 519; [2001] RPC 310
Palmer v Dunlop Perdriau Rubber Company Limited [1937] HCA 43; (1937) 59 CLR 30
Pfizer Inc v Commissioner of Patents [2005] FCA 137; (2005) 141 FCR 413
Re Hsiung’s Patent [1992] RPC 497
RGC Mineral Sands Pty Ltd v Wimmera Industrial Minerals Pty Ltd (1998) 89 FCR 458
Smith Kline & French Laboratories Limited v Evans Medical Limited [1989] 1 FSR 561
Vector Corp v Glatt Air Techniques Ltd [2007] RPC 12
Wimmera Industrial Minerals Pty Ltd v RGC Mineral Sands Ltd (No 2) (1997) 40 IPR 110
Wimmera Industrial Minerals Pty Ltd v RGC Mineral Sands Ltd (No 3) (1997) AIPC ¶91-366

C Bodkin, Patent Law in Australia (Lawbook Co, 2008)
D Bucknell, K Beattie, A Goatcher and H Rofe, Australian Patent Law (LexisNexis Butterworths, 2004)
S Thorley, R Miller, G Burkill and C Birss, Terrell on the Law of Patents (16th ed, Sweet & Maxwell, 2006)

APOTEX PTY LTD (ACN 096 916 148) v LES LABORATOIRES SERVIER; LES LABORATOIRES SERVIER and SERVIER LABORATORIES (AUST) PTY LTD (ACN 004 838 500) v APOTEX PTY LTD (ACN 096 916 148), SYMBION PHARMACY SERVICES PTY LTD (ACN 000 875 034), CHEM MART PTY LIMITED (ACN 001 235 374), PHARMACOR LIMITED (ACN 121 020 835), GENEPHARM LIMITED (ARBN 003 854 626) and SIGMA PHARMACEUTICALS (AUSTRALIA) PTY LTD (ACN 004 118 594)

NSD 657 of 2008

BENNETT J
11 SEPTEMBER 2009
SYDNEY

IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY
GENERAL DIVISION	NSD 657 of 2008

BETWEEN:	APOTEX PTY LTD (ACN 096 916 148) Applicant
AND:	LES LABORATOIRES SERVIER Respondent
AND BETWEEN:	LES LABORATOIRES SERVIER First Cross-Claimant SERVIER LABORATORIES (AUST) PTY LTD (ACN 004 838 500) Second Cross-Claimant
AND:	APOTEX PTY LTD (ACN 096 916 148) First Cross-Respondent SYMBION PHARMACY SERVICES PTY LTD (ACN 000 875 034) Second Cross-Respondent CHEM MART PTY LIMITED (ACN 001 235 374) Third Cross-Respondent PHARMACOR LIMITED (ACN 121 020 835) Fourth Cross-Respondent GENEPHARM LIMITED (ARBN 003 854 626) Fifth Cross-Respondent SIGMA PHARMACEUTICALS (AUSTRALIA) PTY LTD (ACN 004 118 594) Sixth Cross-Respondent

JUDGE:	BENNETT J
DATE OF ORDER:	11 SEPTEMBER 2009
WHERE MADE:	SYDNEY

THE COURT ORDERS THAT:

1. The notice of motion filed by the respondent on 26 May 2008 be dismissed.
2. The respondent pay the applicant’s costs of the notice of motion.
3. Order 2 be stayed until 12:00pm on 17 September 2009.
   

Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.
The text of entered orders can be located using eSearch on the Court’s website.

IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY
GENERAL DIVISION	NSD 657 of 2008

BETWEEN:	APOTEX PTY LTD (ACN 096 916 148) Applicant
AND:	LES LABORATOIRES SERVIER Respondent
AND BETWEEN:	LES LABORATOIRES SERVIER First Cross-Claimant SERVIER LABORATORIES (AUST) PTY LTD (ACN 004 838 500) Second Cross-Claimant
AND:	APOTEX PTY LTD (ACN 096 916 148) First Cross-Respondent SYMBION PHARMACY SERVICES PTY LTD (ACN 000 875 034) Second Cross-Respondent CHEM MART PTY LIMITED (ACN 001 235 374) Third Cross-Respondent PHARMACOR LIMITED (ACN 121 020 835) Fourth Cross-Respondent GENEPHARM LIMITED (ARBN 003 854 626) Fifth Cross-Respondent SIGMA PHARMACEUTICALS (AUSTRALIA) PTY LTD (ACN 004 118 594) Sixth Cross-Respondent

JUDGE:	BENNETT J
DATE:	11 SEPTEMBER 2009
PLACE:	SYDNEY

REASONS FOR JUDGMENT

1. Apotex Pty Ltd (‘Apotex’) has commenced proceedings against Les Laboratoires Servier (‘Servier’), seeking a declaration that claims 1 to 18 of Australian Patent No 2001276418 (‘the AC Patent’) are invalid and an order that those claims be revoked.
2. Servier seeks to amend the AC Patent under s 105(1) of the Patents Act 1990 (Cth) (‘the Act’) to add an additional set of claims. Apotex opposes the application.

THE AC PATENT

3. The AC Patent is entitled: “New α crystalline form of perindopril tert-butylamine salt, a process for its preparation and pharmaceutical compositions containing it”.
4. The specification states that: ‘Perindopril and its pharmaceutically acceptable salts, and more especially its tert-butylamine salt, have valuable pharmacological properties’. The specification describes two actions of perindopril which ‘contribute to the beneficial effects of perindopril in cardiovascular diseases, more especially in arterial hypertension and heart failure’. The specification also states:

The Applicant has now found that a particular salt of perindopril, the tert-butylamine salt, can be obtained in a well defined, perfectly reproducible crystalline form that especially exhibits valuable characteristics of filtration, drying and ease of formulation.

(Emphasis added)

5. The AC Patent describes the invention. The emphasis is mine:
   • The invention relates to a new α crystalline form of the perindopril salt.
   • The invention relates to a new α crystalline form of the perindopril salt, characterised by a specific X-ray diffraction diagram.
   • The invention relates to a process for the preparation of that salt and to pharmaceutical compositions comprising the salt together with one or more appropriate, inert, non-toxic excipients.
   • It is of prime importance to obtain perindopril with excellent purity.
   • It is important to be able to synthesise it in a form that allows rapid filtration and drying.
   • That form has to be perfectly reproducible, easily formulated and sufficiently stable.
   • The prior art does not specify the conditions for obtaining perindopril in a form that exhibits those characteristics in a reproducible manner.
   • Servier has now found that a particular salt of perindopril can be obtained in a well defined, perfectly reproducible crystalline form that especially exhibits valuable characteristics of filtration, drying and ease of formulation.
   • The process for the preparation of the α crystalline form of the compound is characterised in that a solution of perindopril tert-butylamine salt in ethyl acetate is heated at reflux and is cooled gradually until crystallisation is complete.
   • The salt that is thereby obtained is in the form of individual needles about 0.2mm long.
   • That homogeneous distribution has the advantage of allowing especially rapid and efficient filtration and drying, as well as allowing the preparation of pharmaceutical formulations having a uniform and reproducible composition, which is especially advantageous when those formulations are intended for oral administration.
   • The form thereby obtained is sufficiently stable to allow its storage for long periods without particular requirements for temperature, light, humidity and oxygen level.
   • Claim 1 is to the α crystalline form of the compound of formula (I) (ie. the perindopril tert-butylamine salt) characterised by a particular X-ray diffraction diagram.
   • Claim 2 is to the process for the preparation of the α crystalline form of the compound of formula (I).
   • Claim 7 of the specification as accepted (claim 8 of the specification as filed) is the process according to claims including claim 2, characterised in that the perindopril salt that is thereby obtained is in the form of readily filterable individual needles.

References to individual needles in the AC Patent

6. The specification as filed and as accepted refers to “individual needles” in two places:
   1. Page 3, in the body of the specification, describes the process for the preparation of the α crystalline form of the compound of formula (I) and includes:

The perindopril tert-butylamine salt that is thereby obtained is in the form of individual needles about 0.2 mm long. That homogeneous distribution has the advantage of allowing especially rapid and efficient filtration and drying, as well as allowing the preparation of pharmaceutical formulations having a uniform and reproducible composition, which is especially advantageous when those formulations are intended for oral administration.
(Emphasis added)

2. Claim 7 of the AC Patent (which is claim 8 of the specification as filed and claim 7 of the specification as accepted) states:

Process according to any one of claims 2 to 6, characterised in that the perindopril tert-butylamine salt that is thereby obtained is in the form of readily filterable individual needles.
(Emphasis added)

The grant of the AC Patent

7. Servier filed an application for the AC Patent on 6 July 2001. The application was published in November 2001. The Examiner rejected the original set of claims on the basis that they lacked an inventive step in light of European Patent No 0308341 (‘EP 0308341’). Of these claims, claim 2 was to a process for the preparation of the α crystalline form of the perindopril tert-butylamine salt, characterised in that a solution of the salt in ethyl acetate is heated at reflux and then cooled gradually until crystallisation is complete. Claim 5 was to a process according to any one of claims 2 to 4, characterised in that the solution of the salt in ethyl acetate at reflux is first cooled to a temperature of from 55 to 65°C at a rate of from 5 to 10°C/hour, and then to ambient temperature.
8. On 24 January 2005, Servier sought to amend the AC Patent application to incorporate the feature of (then) claim 5 into claim 2. Servier submitted that the specific crystallisation steps produced an unexpected result and would not have been obvious to a person skilled in the relevant art in light of EP 0308341. The Examiner initially rejected the proposed amended claims on the basis that the ‘invention as claimed lacks an inventive step in light of US 4914214 (family equivalent of EP 308341)’. The Examiner stated that there ‘does not appear to be any surprising and unexpected advantage in the solution offered’.
9. In response to the Examiner’s rejection of the proposed amended claims, Servier submitted that:
   • The very specific temperature gradient used in the crystallisation process could not be considered as standard and was therefore not obvious to a person skilled in the art.
   • The specific crystallisation process provides the α crystalline form of perindopril tert-butylamine having specific physical characteristics such as individual needle size of about 0.2mm long, which are especially advantageous for a number of reasons, including especially rapid and efficient filtration and drying.
10. On 19 July 2005, IP Australia accepted the AC Patent application and amendment. The accepted AC Patent application was advertised as accepted on 28 July 2005.
11. On 9 March 2007, Apotex filed a notice of opposition to the grant of the AC Patent. The notice of opposition was accompanied by a request for an extension of time in which to file the notice, from 28 October 2005 to 28 March 2007. A Delegate of the Commissioner of Patents refused the request for an extension of time. Apotex appealed that decision to the Administrative Appeals Tribunal (‘the AAT’). On 19 March 2008, the AAT affirmed the decision not to grant Apotex an extension of time in which to oppose the grant of the AC Patent.
12. On 2 March 2007, Servier applied to amend the AC Patent application further under s 104 of the Act. On 2 August 2007, leave to amend the application was granted by a Delegate of the Commissioner of Patents. The amendments were advertised in the Australian Official Journal of Patents (Supplement) on 16 August 2007. Apotex opposed the s 104 amendments sought by Servier but its opposition was dismissed by IP Australia on 11 April 2008. Apotex appealed that decision to the AAT on 22 April 2008. On the same date, Servier instructed its solicitors, Allens Arthur Robinson (‘AAR’), to have the AC Patent sealed immediately.
13. On 1 May 2008, the AC Patent was sealed, without incorporation of the s 104 amendments.
14. On 9 May 2008 Apotex commenced proceedings to revoke the AC Patent and on 26 May 2008 Servier filed its notice of motion to amend the AC Patent under s 105 of the Act. The proposed amendments are in the same terms as the s 104 amendments sought and abandoned and are the subject of this application.

The proposed amendments under s 105 of the Act

15. In essence, the amendments which Servier seeks to make to the AC Patent introduce a specific characteristic of the α crystalline form of the perindopril tert-butylamine salt into the claims, namely, the compound in the form of “individual needles”. The proposed amendments seek to introduce an additional set of claims (set out in Annexure A to these reasons).
16. Claim 1 of the existing specification is:

α crystalline form of the compound of formula (I):

characterised by the following powder X-ray diffraction diagram, measured using a diffractometer (copper anticathode) and expressed in terms of inter-planar distance d, Bragg’s angle 2 theta, intensity and relative intensity (expressed as a percentage with respect to the most intense ray):

17. Claim 19, the first of the new claims which Servier seeks to insert, takes claim 1 of the existing specification, and then adds to it the words ‘and further characterized by being in the form of individual needles’. All of the proposed new claims import the needle requirement in one way or another.
18. Apotex submits that its grounds of opposition identify deficiencies, all of which arise “as a result of the amendment” (s 102 of the Act). In particular, it argues that all of the proposed claims are different in scope from the only existing needle claim, namely, claim 7.

The form of the compound of the invention

19. A question that arises is: what is the form of the compound that constitutes the invention? Is it the perindopril tert-butylamine salt in the α crystalline form, so that any crystals of the perindopril salt will infringe claim 1 if in the α crystalline form, or must the crystals be in the form of individual needles? This is considered below.

THE LEGISLATION

20. Servier is seeking to amend the AC Patent pursuant to s 105 of the Act. That section relevantly provides:

(1) In any relevant proceedings in relation to a patent, the court may, on the application of the patentee, by order direct the amendment of the patent, the patent request or the complete specification in the manner specified in the order.

(2) An order may be made subject to such terms (if any) as to costs, advertisements or otherwise, as the court thinks fit.

(3) The patentee must give notice of an application for an order to the Commissioner, who is entitled to appear and be heard, and must appear if the court directs.

(4) A court is not to direct an amendment that is not allowable under section 102.

...

21. The Commissioner has not appeared.
22. Section 102 of the Act relevantly provides:

(1) An amendment of a complete specification is not allowable if, as a result of the amendment, the specification would claim matter not in substance disclosed in the specification as filed.

(2) An amendment of a complete specification is not allowable after the relevant time if, as a result of the amendment:

(a) a claim of the specification would not in substance fall within the scope of the claims of the specification before amendment; or

(b) the specification would not comply with subsection 40(2) or (3).

23. The relevant time for a standard patent is defined in s 102(2A)(a) of the Act as ‘after the specification has been accepted’.
24. Sections 40(2) and (3) of the Act relevantly provide:

(2) A complete specification must:

(a) describe the invention fully, including the best method known to the applicant of performing the invention; and

(b) where it relates to an application for a standard patent – end with a claim or claims defining the invention; ...

...

(3) The claim or claims must be clear and succinct and fairly based on the matter described in the specification.

25. It is not in dispute that, when considering a proposed amendment under s 102(1), the Court is required to compare: (1) the specification, as a whole, as filed; and (2) the specification, as a whole, as proposed to be amended. However, the parties disagree as to whether or not the specification as a whole is to be looked at when considering a proposed amendment under s 102(2)(b).
26. Apotex argues that, for the purposes of s 102(2)(b), when considering whether or not the proposed new claims are fairly based on matter described in the specification, the necessary comparison is between the proposed new claims and the body of the specification.
27. Servier submits that, for the purposes of s 102(2)(b), when considering whether or not the proposed new claims are fairly based, the Court is required notionally to add the proposed amendments and then to consider the whole of the proposed amended specification to determine if it complies with s 40(3).

As a result of the amendment

28. There are no proposed amendments to the body of the specification. Both s 102(1) and 102(2) require consideration of consequences that follow as a result of the amendment. The proposed amendments are to the claims. There may be deficiencies in the (existing) complete specification or lack of compliance with s 40 which do not fall for consideration at this time. The question is whether, as a result of the introduction of the proposed new claims, the amendments are not allowable because of the requirements of s 102.

Section 102(1)

29. The focus of s 102(1) is what is proposed to be claimed as a result of the amendment. Section 102(1) requires consideration of whether the proposed claims claim matter not in substance disclosed in the specification as filed. The specification as filed includes the claims. Section 102(1) requires (RGC Mineral Sands Pty Ltd v Wimmera Industrial Minerals Pty Ltd (1998) 89 FCR 458 (‘RGC Mineral Sands’) (at 466)):
    1. Identification of the proposed amendment by identifying the difference between the specification as filed (or the specification as accepted if different from the specification as filed) and the specification as proposed to be amended; and
    2. Reading the proposed amended specification as a whole to determine whether, as a result of the amendments sought, the specification would claim matter not in substance disclosed in the specification as filed.

Section 102(2)

30. Section 102(2)(a) requires a comparison between the proposed new claims and the claims of the specification before amendment.
31. In relation to s 102(2), which requires compliance with ss 40(2) and (3), I note the following statement of the High Court in Lockwood Security Products Pty Limited v Doric Products Pty Limited [2004] HCA 58; (2004) 217 CLR 274 (‘Lockwood’) at [49]:

Section 40(2) deals with the “complete specification”, that is, with a document which concludes with the claims defining the invention (s 40(2)(b)), and in which the material preceding the claims is commonly called the “body of the specification”, or the “specification” for short. In assessing whether a patent complies with the requirement of s 40(2)(a) that the complete specification must describe the invention fully, it is necessary to take into account the whole of the complete specification – both the body of the specification and the claims. On the other hand, when assessing whether there is fair basing within the meaning of s 40(3), it is necessary to split the patent into the claims and the body of the specification, in order to see whether the former are fairly based on the matter described in the latter.

32. To the extent that s 102(2)(b) requires compliance with s 40(2), the whole of the specification falls for consideration, including the claims.
33. To the extent that s 102(2)(b) requires compliance with s 40(3), the relevant comparative inquiry is whether each proposed new claim is fairly based on the body of the specification as proposed to be amended. As there is no proposed amendment to the body of the specification in this case, the question is whether each proposed new claim is fairly based on the present specification. If, as a result of the amendment, a new claim is inserted, then from the language of s 102(2)(b) when read with s 40(3), that claim must comply with s 40(3) and it is no answer that an existing claim does not comply with s 40(3).
34. That is, s 102(2)(b) requires:
    1. Identification of the precise amendment sought by identifying the difference between the specification as it stood immediately before the amendment and the specification as proposed to be amended; and
    2. Determination whether, as a result of the amendment, the specification would not comply with s 40(2) or s 40(3).
35. The High Court emphasised in Lockwood (at [43]) that it is important to consider each ground of invalidity and each of the requirements of s 40 of the Act separately. It is wrong to employ the reasoning of one ground in considering another. Further, questions of “inventiveness” and “meritoriousness” do not impinge on the consideration of s 40 issues (at [46]).
36. Fair basing requires a consideration of whether the claims are fairly based on the matter in the specification that describes the invention. The “invention” means the embodiment which is described and around which the claims are drawn (Lockwood at [53]). That, in turn, involves considering whether a claim as expressed ‘travels beyond the matter disclosed in the specification’ (Olin Corporation v Super Cartridge Co Pty Ltd [1977] HCA 23; (1977) 180 CLR 236 endorsed in Lockwood at [57]). For example, an unconditional claim may travel beyond conditional matter in the specification (Palmer v Dunlop Perdriau Rubber Company Limited [1937] HCA 43; (1937) 59 CLR 30 discussed in Lockwood at [62]).
37. The High Court noted in Lockwood at [68] that fair basis is not tested by isolating in the body of the specification “essential integers” or “essential features” of an alleged invention and then asking whether they correspond with the essential integers of the claim in question. The question is whether the subject matter of the claims is broadly described in the body of the specification. However, while the High Court pointed out that it was necessary to consider the whole of the specification, it warned against including ‘loose or stray remarks’ in determining the “real” disclosure in the body of the specification. Coincidence of language, such as in a consistory clause, is insufficient, on its own, to provide fair basis if that is inconsistent with the description of the invention when considering the specification as a whole (Lockwood at [87], [91]). The inquiry is into what the body of the specification, read as a whole, discloses as the invention (Lockwood at [99]).
38. A consistory clause may not be sufficient to provide fair basis. In a passage from Lahore, Patents, Trade Marks and Related Rights, (2001), vol 1, para 15,345 approved by the High Court in Lockwood at [100], the author pointed out that:

A statement implying that the invention has a limited field of application or requires as an essential feature something which is not required by the claims may result in a finding that the claims are wider than the invention disclosed in the specification, and are accordingly invalid for lack of fair basis on the matter described in the specification.

APOTEX’S OPPOSITION TO THE PROPOSED AMENDMENTS

39. Apotex opposes Servier’s application to amend the AC Patent on two broad bases:
    1. The amendments are not allowable under s 102 of the Act and hence, by s 105(4), the Court must not direct them; and
    2. The Court should refuse to exercise its discretion under s 105 of the Act to direct the amendments.
40. Servier submits that grounds of opposition 1, 2, 3, 4, 5, 6, 7, 9, 10 and 11 do not arise “as a result of the amendment”. It accepts that, on some constructions, the matters raised in grounds 8, 12, 13 and 14 may arise “as a result of the amendment”, but says that, on a proper analysis of the evidence and the specification, these grounds should also fail.

SECTION 102 OF THE ACT

41. As presently pressed, Apotex’s grounds of opposition under s 102 of the Act are as follows.

“Not in substance disclosed” (s 102(1)) and “fair basis” (s 102(2)(b) and s 40(3)) – grounds 1 and 2

42. Apotex contends that all of the proposed new claims (ie. claims 19 to 39):

(a) claim matter that is not “in substance disclosed” in the specification as filed and are therefore not allowable under s 102(1) of the Act; and

(b) are not fairly based and are therefore not allowable under s 102(2)(b) of the Act.

43. It is common ground that s 102(1) and s 102(2)(b) (coupled with s 40(3)) require that the specification provide “a real and reasonably clear disclosure” of that which is claimed.
44. It is common ground that the tests for substantial disclosure and fair basis are similar (Gambro Pty Ltd v Fresenius Medical Care South East Asia Pty Ltd (2000) 49 IPR 321 (‘Gambro’) at [18]). The Full Court in Gambro said that there must be ‘a real and reasonably clear disclosure’. Similarly, in ICI Chemicals & Polymers Ltd v Lubrizol Corporation Inc [2000] FCA 1349; (2000) 106 FCR 214 at [118], the Full Court observed, in obiter dicta, that it would be a rare case where satisfaction of the test for substantial disclosure would not also satisfy the test for fair basis. If there is a difference, the requirement for “in substance” disclosure is a lesser requirement than for a “real and reasonably clear disclosure” or description; “in substance disclosure” does not require express disclosure (Pfizer Inc v Commissioner of Patents [2005] FCA 137; (2005) 141 FCR 413 at [75]).

Apotex’s submissions

45. The proposed new claims, claims 19 to 39, claim a product, the α crystalline form of the perindopril tert-butylamine salt, a process for the preparation of that product and pharmaceutical compositions containing it. The product is characterised by reference to an X-ray diffraction table of values and further defined as being in the form of “individual needles”. Apotex submits that there is no real and reasonably clear disclosure of individual needles as part of the invention. Apotex submits that the patent specification does not disclose the purported limitation of the crystals being in the form of “individual needles” as part of the invention and that claims 19 to 39 are not fairly based on the matter described in the body of the specification.
46. Apotex relies on the evidence of Dr Brendan Kennedy, Associate Professor in Inorganic Chemistry at the School of Chemistry, University of Sydney, to support its contention that a skilled addressee reading the AC Patent would not understand from the patent specification that the presence of “individual needles” formed part of the invention. Dr Kennedy’s evidence is that it is essentially inevitable that any sample of the α crystalline form of perindopril tert-butylamine will contain at least some individual needles.
47. Apotex emphasises that the only reference to needles in the body of the specification of the AC Patent connects the ‘especially rapid and efficient filtration and drying’ and a homogeneous distribution of individual needles about 0.2mm long. Apotex contends that the skilled addressee would understand that it is the homogeneous distribution of crystals of about 0.2mm in size, and not their shape, that gives good filtration characteristics. The reference to needles in existing claim 7 refers not to “individual needles” but to “readily filterable individual needles” thereby, Apotex says, attempting to link that claim with the passage in the body of the specification.
48. Apotex submits that the product of the invention is the α crystalline form of the perindopril tert-butylamine salt and that nowhere in the specification are “individual needles” described or disclosed as part of the invention, nor do they define the process of the invention. Apotex points out that the consistory clause relating to the product of the invention on pages 2-3 of the specification makes no reference to needles.
49. Claim 7, a process claim, refers to needles but, Apotex submits, that cannot be relevant to whether the proposed new claims are fairly based as required by s 102(2)(b) read with s 40(3); those sections require a comparison between the claims added by the amendment and the body of the specification. In addition, Apotex argues that, when assessing “in substance disclosure” for the purposes of s 102(1), claim 7 does not assist Servier because, on an intelligent reading of that claim, needles do not characterise the process and because, in any event, the claim highlights “readily filterable individual needles”.
50. Apotex’s primary argument is that the addition of the limitation of “individual needles” is not disclosed as part of the invention, either of the product or of the process of the invention, with the consequence that the proposed new claims claim matter not in substance disclosed in the specification as filed and are not fairly based on the body of the specification.
51. In summary, Apotex’s submissions in relation to whether the proposed new claims are fairly based are:
    • For something to be part of the invention, it has to be an integer that helps define or limit the invention, rather than a mere description of a result.
    • Individual needles are disclosed simply as an advantage or benefit of the invention.
    • Individual needles are not described as part of the invention – they are a product or result or an advantage of the process of the invention but cannot define the process.
    • The reference to needles does not characterise the process of the invention, because the process described in the AC Patent is not changed in any way in order to obtain the needles; that is, the claims to the process cannot be limited in any way by the reference to the needles within the claim.
    • If individual needles are not described as part of the invention, then claims with that purported integer are not fairly based.
    • If individual needles are part of the invention, either as part of the process or as a limitation defining the product, then the claims must be limited by reference to the stated size and homogeneity in addition to the reference to “individual needles”.
    • If individual needles are part of the invention, then the new claims (which lack the integers of homogeneous distribution of needles 0.2mm long) are not fairly based because they are broader than the invention described in the body of the specification.
    • The advantage of “rapid and efficient filtration and drying”, said to occur as a result of the homogeneous distribution of individual needles, is also not part of the invention described and claims that include this as a purported narrowing integer are not fairly based.
    • If “rapid and efficient filtration and drying” is somehow part of the invention described, then claims without that limitation are too broad and not fairly based.
52. For similar reasons, Apotex argues that s 102(1) operates to disallow the insertion of the new claims, although it accepts that, for the purposes of the test of substantial disclosure, Servier is entitled to rely on the presence of existing claim 7 and that this makes the position less clear. Apotex contends that even though existing claim 7 refers to needles, this is analogous to a “stray phrase” as discussed in Lockwood and should be disregarded.

Servier’s submissions

53. Servier does not agree with Apotex that there must be a real and reasonably clear disclosure of the individual needles as part of the invention. Servier submits that this approach was expressly rejected by the Full Court in RGC Mineral Sands. It contends that Apotex’s approach requires more than “a real and reasonably clear disclosure” and involves isolating in the body of the specification “essential integers” of the alleged invention and then asking whether they correspond to integers of the claims in question. The High Court has stated that s 40(3) does not require an over meticulous verbal analysis, nor specific disclosure of features as “essential” (Lockwood at [68]-[69]).
54. While Servier rejects the need for a real and reasonably clear disclosure as part of the invention it submits that, even if there were such a requirement, there is a real and reasonably clear disclosure of individual needles as part of the invention.
55. Put simply, Servier argues that the feature of individual needles is disclosed in the body of the specification as filed and accepted and in existing claim 7 of the AC Patent and that the needle habit of the α crystalline form of the compound of formula (I) is part of the invention described and expressly disclosed. Servier argues that the ‘valuable characteristics of filtration, drying and ease of formulation’ is a consequence of the needle habit of the salt and that existing claim 7 confirms that needles form part of the invention. Servier concedes that, at its broadest, the invention is for the α crystalline form of the compound of formula (I) but says that a patentee is not confined to the broadest form of the invention and that one form of its invention involves individual needles.
56. Servier disputes Apotex’s contention that the evidence of Dr Kennedy ‘shows that a skilled addressee reading the AC Patent would not understand from the patent specification that the mere presence of “individual needles” formed part of the invention’. Servier submits that Dr Kennedy’s evidence, taken as a whole, does not suggest that it is inevitable that any sample of the α crystalline form of the compound of formula (I) will contain at least some needles, as crystal habits can be altered by the addition of a surface modifying substance.
57. Servier also disputes Apotex’s contention that, unless the individual needle claims are limited by size and homogeneity or by the requirement that the individual needles be readily filterable, they are not “in substance disclosed” or fairly based. Servier points to the evidence of Professor Christopher Easton of the Research School of Chemistry, Australian National University, who says that the characteristics of size and shape are separately and independently advantageous and that there are particular ways in which shape, and not size, is beneficial in a pharmaceutical context.

Consideration of grounds 1 and 2

58. The construction of the specification is for the Court, taking account of evidence, where relevant, of the skilled addressee. In my view, there is a real and reasonably clear disclosure of the feature of “individual needles” in the AC Patent specification. That feature is specifically referred to in the body of the specification in the context of the process part of the invention, where the patentee states:

The perindopril tert-butylamine salt that is thereby obtained is in the form of individual needles about 0.2 mm long. That homogeneous distribution has the advantage of allowing especially rapid and efficient filtration and drying, as well as allowing the preparation of pharmaceutical formulations having a uniform and reproducible composition, which is especially advantageous when those formulations are intended for oral administration.

59. The reference to ‘rapid and efficient filtration and drying’, which is said to result from the ‘homogeneous distribution’ of individual needles about 0.2mm long, links back to the previous statement in the body of the specification that it ‘has been important to be able to synthesise [perindopril] by means of a process that can readily be converted to the industrial scale, especially in a form that allows rapid filtration and drying’ (emphasis added). That form is not simply the α crystalline form of the perindopril salt, but rather, the α crystalline compound in the form of individual needles.
60. In addition, existing claim 7 (claim 8 in the specification as filed) claims a process according to any one of claims 2 to 6, characterised in that the perindopril tert-butylamine salt that is thereby obtained is in the form of readily filterable individual needles. This strengthens the conclusion that there is a real and reasonably clear disclosure of the feature of individual needles and this is relevant to the consideration under s 102(1), where the whole of the specification is to be taken into account.
61. It is not necessary for me to decide whether or not there must be a real and reasonably clear disclosure of individual needles as part of the invention, the approach for which Apotex contends. The specification provides that the α crystalline form of the perindopril salt obtained by the process of the invention is in the form of individual needles. The whole of the specification indicates that the invention is the α crystalline form of the perindopril salt that exists in the form of individual needles, characterised by an X-ray diffraction diagram and obtained through carrying out the process of the invention.

“Not in substance disclosed” (s 102(1)) and “fair basis” (s 102(2)(b) and s 40(3)) – grounds 3, 4 and 5

62. In addition to its primary submission that none of the proposed new claims are in substance disclosed in the specification as filed and are not fairly based, Apotex contends that the same can be said in respect of certain specific claims. In that regard, Apotex raises further specific complaints.

Claims 27 and 28

63. Apotex contends that claims 27 and 28 claim a pharmaceutical composition comprising α crystalline perindopril tert-butylamine according to claim 25 and further limited to particular dosage forms such as tablets and lozenges. It says that the specification as filed does not disclose the particular dosage form as being part of the invention and that claims 27 and 28 are not fairly based.
64. The specification states that formulations are intended for oral administration. Among the pharmaceutical compositions specified are those suitable for oral, parenteral (intravenous or subcutaneous) or nasal administration and each of the forms specified in proposed claim 27. The original claims include claims to pharmaceutical compositions for use in the manufacture of medicaments. Claim 28 is to a pharmaceutical composition according to claim 27 in the form of a tablet. Example 2 is to the formulation for a tablet.
65. The invention in claims 27 and 28 is in substance disclosed and the claims are fairly based.

Claims 29 and 30

66. Apotex says that claims 29 and 30 claim a pharmaceutical composition comprising a particular dosage of α crystalline perindopril tert-butylamine but that the specification as filed does not disclose the particular dosage as being part of the invention and that claims 29 and 30 are not fairly based.
67. The dosage range of 1 to 500mg per day in one or more administrations is described in the body of the specification. Example 2 is for tablets containing 4mg of active ingredient.
68. The invention in claims 29 and 30 is in substance disclosed and the claims are fairly based.

Claims 31 and 32

69. Apotex submits that claims 31 and 32 claim the combination of perindopril tert-butylamine, defined by reference to an X-ray diffraction table of values and referred to as being in the form of individual needles, and a diuretic. It says that the specification as filed does not disclose such a combination as being part of the invention and that claims 31 and 32 are not fairly based.
70. The specification describes a pharmaceutical composition which includes a diuretic. Claims 11 and 12 are to a pharmaceutical composition that also comprises a diuretic, specified in claim 12 as indapamide.
71. The invention in claims 31 and 32 is in substance disclosed and the claims are fairly based.

“Full description and best method” (s 102(2)(b) and s 40(2)(a)) – grounds 7 and 8

72. As outlined above, Apotex submits that the new claims do not describe the invention fully and that no “best method” is disclosed. Specifically, Apotex argues that the specification does not disclose any method or any best method of producing individual needles. In addition, in relation to claims 20, 26, 36 and 39, Apotex argues that the specification does not disclose how “rapid and efficient filtration and drying” is to be achieved; nor does it disclose how the skilled addressee can know whether or not it has been achieved. Accordingly, Apotex says, as a result of the introduction of claims 20, 26, 36 and 39 and their dependent claims, the specification, as a result of the proposed amendments, does not describe the invention fully.
73. The specification states that the process disclosed in the specification produces the salt described in the form of “individual needles”. Professor Easton’s evidence is that a crystalline substance in the form of individual needles will allow rapid and efficient filtration and drying. The specification states that the homogeneous distribution of individual needles of about 0.2mm in length allows especially rapid and efficient filtration and drying. The challenge is to the requirement to describe the best method not to utility. The method is described in the specification, including in example 1. Apotex has not established that the specification fails to describe the best method for producing the perindopril tert-butylamine salt in the form of individual needles which will then result in rapid and efficient filtration and drying.

“Claims not defining the invention” (s 102(2)(b) and s 40(2)(b)) and “clarity” (s 102(2)(b) and s 40(3)) – ground 10 to 14

Individual needles

74. Apotex argues that, in context, the term “individual needles” is unclear and is not capable of defining the scope of the claimed invention as claimed in proposed claims 19 to 39. Apotex points to the evidence of Dr Kennedy in support of this contention. In particular, it argues that as the length-to-width ratio of a crystal increases, the crystal will change from having a shape described as a “rod” to having a shape described as a “needle”, but that there is no clear cut-off point.
75. During oral submissions, counsel for Apotex conceded that, while this ground of opposition has not been abandoned, it is not particularly strong in the light of Dr Kennedy’s statement during cross-examination that the term “needle” and the term “rod” are both suitable to describe an elongated crystal shape and may be used interchangeably to define an elongated crystal shape.
76. The concession is well made. The term does not lack clarity or render the claims indefinite.

Rapid and efficient filtration and drying

77. Apotex also submits that claims 20, 26, 36 and 39 are not clear because the term “rapid and efficient filtration and drying” does not have a sufficiently clear meaning in the context of those claims. Dr Kennedy’s evidence was that he did not know what the patentee meant by this term, because it is not something that is capable of quantification. Apotex argues that the term cannot simply mean “not difficult”, as this avoids the natural meaning of the words “rapid” and “efficient”. In addition, Apotex submits that the phrase cannot mean that the relevant filtration and drying is quicker than it would be if the compound took another form, because that is also incapable of quantification.
78. Servier accepts that “rapid and efficient filtration and drying” is a relative phrase but submits that evaluating such a phrase requires a practical approach rather than exact quantification. Servier cites a number of cases in which terms such as “rapid” and “efficient” have been held to be clear and says that, in any event, the meaning of the phrase is sufficiently clear when the specification as a whole is considered. Servier contends that the evidence of Dr Kennedy and Professor Easton does not support any lack of clarity in relation to the phrase “rapid and efficient filtration and drying” and that their evidence indicates that the phrase is clear without a specific reference point.
79. I am not satisfied that the phrase lacks clarity, in context, to the skilled reader.

Isolated in the form of individual needles

80. In respect of claims 25, 35 and 38, Apotex says that they are not clear because, for each of these claims, it is a requirement that the α crystalline form of perindopril tert-butylamine “has been isolated in the form of individual needles” and that this term does not have a sufficiently clear meaning in the context of the claims. Apotex submits that the skilled addressee would not know what is being claimed by these claims. For example, it says that, with respect to claim 25, it is unclear whether the pharmaceutical composition must contain the compound in the form of individual needles or whether it is sufficient for the compound to have been in the form of individual needles at some point during the manufacturing process.
81. Apotex also submits that claims 26, 36 and 39, which are dependent on claims 25, 35 and 38, are not clear because for each of these claims it is a requirement that the “individual needles allow rapid and efficient filtration and drying”. However, the claim integer in claims 26, 36 and 39 involving “individual needles” is one that does not relate to the final product the subject of that claim.
82. Servier disputes Apotex’s argument that the phrase “has been isolated in the form of individual needles”, which appears in claims 25, 35 and 38 and upon which claims 26, 36 and 39 are dependent, is not clear. It submits that the phrase simply means that at the time of isolation, the crystals are in the form of individual needles, regardless of what occurs after the process of isolation is complete and that a skilled addressee would have no difficulty understanding this concept.
83. I accept Servier’s submission. Claims 25, 35 and 38 do not lack clarity for this reason. This submission also answers Apotex’s complaints about claims 26, 36 and 39.

Conclusion on s 102 of the Act

84. The amendments proposed by Servier are allowable under s 102(1) and s 102(2) of the Act.
85. It is now necessary to consider the exercise of the discretion under s 105 to determine whether the amendments should be allowed to be made.

DISCRETION

86. Section 105 of the Act confers a discretion on the Court in relation to an application to amend a patent. That is, even if proposed amendments are otherwise allowable under s 102 of the Act, the Court may still refuse to direct the amendments on discretionary grounds. The Court should consider all relevant factors in deciding the exercise of that discretion. The considerations adverted to in other cases may be of assistance as guidelines but they are not to be elevated to principles or fixed rules to be applied inexorably to every case (Wimmera Industrial Minerals Pty Ltd v RGC Mineral Sands Ltd (No 3) (1997) AIPC ¶91-366 (‘Wimmera (No 3)’) at 39,790 per Sundberg J).
87. Bodkin, Patent Law in Australia (Lawbook Co, 2008) at [13510] summarises the guidelines identified in Smith Kline & French Laboratories Limited v Evans Medical Limited [1989] 1 FSR 561 (‘Smith Kline’) and cited with approval by Sundberg J in Wimmera Industrial Minerals Pty Ltd v RGC Mineral Sands Ltd (No 2) (1997) 40 IPR 110 (‘Wimmera (No 2)’) (and also in Wimmera (No 3)), as relevant to the exercise of discretion:
    • Whether there has been a full disclosure of all relevant matters;
    • Whether the patentee has sought to obtain an unfair advantage from the unamended patent;
    • Whether there has been any unreasonable delay in seeking amendment; and
    • Whether any circumstances arise that would lead the Court to refuse the amendment.
88. The Court does not approach the exercise of its discretion in a manner hostile or antipathetic to amendment. However, the onus is on the patentee to satisfy the Court that the amendments should be allowed. The Court is concerned with the conduct of the patentee and not with the merit of the invention (Smith Kline at 569). Bodkin at [13520]ff conveniently summarises some of the matters that have been considered relevant. They include:
    • Mere delay does not warrant refusal although the patentee must explain any delay, which should be reasonable;
    • If a patentee becomes aware of the undue breadth of its claims, it must act to amend them without undue delay.
89. The issues raised by Apotex’s submissions as to why the Court should exercise its discretion under s 105 of the Act to refuse the amendments sought by Servier are:
    • An applicant seeking to amend a patent has an obligation to state the reason for the amendment and Servier failed to do so;
    • Servier’s approach to this application with respect to evidence and discovery;
    • Servier unreasonably delayed its application to amend;
    • Servier repeatedly asserted or relied upon its unamended patent (or the innovation patent of similar scope) against third parties.
90. Apotex’s submissions focussed primarily on dot points 1 and 2 above.

Disclosure of reasons for amendment

91. The obligation of good faith requires a patentee to disclose correct reasons for the amendments which it seeks. In Oxford Gene Technology Ltd v Affymetrix Inc (No 2) [2000] EWCA Civ 519; [2001] RPC 310 (‘Oxford Gene’), Aldous LJ stated (at [20]) that the ‘obligation of good faith requires the patentee to put forward correct reasons for the amendment. If there be facts relevant to the exercise of the discretion ... then those facts need to be put before the court’.
92. Servier’s solicitor, Mr Richard Hamer, swore two affidavits relating to Servier’s application for amendment. No affidavits were provided by any officers or employees of Servier.

Mr Hamer’s first affidavit

93. At [7] of his first affidavit, Mr Hamer stated that:

Following the receipt of instructions and between December 2006 and early February 2007, I reviewed the Alpha Crystalline Patent and formed the view that the specifications disclosed matter which could be the basis of additional claims. In particular, that matter related to the crystal habit and filterability of the crystals described in the specification.

94. This was the only reason given for the proposed amendments in that affidavit. All of the exhibits to the affidavit were publicly available documents.
95. Mr Hamer accepted during cross-examination that his first affidavit did not provide a complete statement of Servier’s reasons for the proposed amendments.

Mr Hamer’s second affidavit

96. Relevantly, Mr Hamer’s second affidavit provided as follows:
    4. It is, and has at all relevant times been, my understanding that the purpose of including narrower or dependant claims is to reduce invalidity risk. That is because the narrower or dependant claim may be valid even if a broader claim is invalid, for example on grounds such as lack of novelty or obviousness.
       

Innovation Patent

5. Innovation patent application number AU2006101079 (the Innovation Patent) ... was drafted in December 2006 ... and filed on 22 December 2006.
   
6. My review of the Innovation Patent caused me to consider the scope of the claims of the Alpha Crystalline Patent. I realised that subject matter was described in the Alpha Crystalline Patent, which was not the subject of relevant claims. ...
   

7. ...

8. In that context, it appeared to me that there was basis to amend the Alpha Crystalline Patent to include claims directed to the needle crystal habit, which were not limited by the matters specified in claim 2. Because more than 3 months had passed since the patent application had been accepted, however, new claims would have to be within the scope of existing claims of the patent before amendment.
   

9. ...

The Apotex Process

10. On 28 December 2006, AAR received Apotex’s confidential process description ... . I read that document in the course of January 2007. The document disclosed to me that, according to Apotex, the cooling conditions under which its perindopril erbumine product was crystallised did not fall within the process parameters set out in claim 2 of the Alpha Crystalline Patent. The reference to needles, in the existing claims, forms part of claim 7. Claim 7 is dependant on existing claim 2 so that, if claim 1 were invalid, the Alpha Crystalline Patent would not be infringed by the Apotex product made in accordance with Apotex’s confidential process description.
    

The Coquerel Report

11. In the course of January 2007, I also read two reports of Professor Coquerel (the Cocquerel [sic] Reports) ... .
    
12. The Cocquerel Reports identified to me that crystallisation conditions impacted in a substantial way on the crystal habit, impurity profile and crystalline form of the resulting product. These in turn impacted on the filterability of the crystals, it being much more difficult to filter crystals obtained under alternative conditions. I concluded that there was additional and underlying factual support for the statements in the specification about the importance of producing crystals in the form of individual needles and as to the impact that this had on filterability in particular.
    

The UK Proceedings

13. On 16 February 2007, I received copies of Les Laboratoires Servier’s redacted evidence in the English High Court Proceedings No EWHC 1538 (Pat) ... . I also spoke to the UK lawyers for Servier, Bristows. Subsequently, on 23 July 2007, I received the English first instance decision ... and on 14 May 2008 I received the English Court of Appeal decision ... . Both of these decisions post dated the filing for s 104 amendments on 2 March 2007, although I did appreciate, as at 2 March 2007 that there was a risk that the UK equivalent might be held to be invalid. ...
97. Apotex argues that, while Mr Hamer’s second affidavit put forward further reasons for Servier’s proposed amendments, it still did not constitute full and frank disclosure by Servier on this issue.
98. Like his first affidavit, Mr Hamer’s second affidavit indicates that at least one of the reasons for the proposed amendments was the presence of additional claimable matter within the specification of the AC Patent. However, Apotex emphasises that [4] of Mr Hamer’s second affidavit suggests that another purpose of the proposed amendments was to reduce the invalidity risk associated with the AC Patent, a reason that was not disclosed in Mr Hamer’s first affidavit. It is a reason expressly contemplated in s 104 of the Act. Counsel for Servier explained during oral submissions that, with the benefit of hindsight, the reason for the amendments could have been expressed more clearly within Mr Hamer’s first affidavit. However, he submitted, this concession does not mean that there was not full and frank disclosure in the second affidavit and, a fortiori, by the time the case was opened.
99. On 2 September 2008, Apotex’s solicitors, Freehills, wrote to Servier’s solicitors, AAR, and referred to the invalidity risk associated with the unamended claims of the AC Patent. AAR’s response, dated 5 September 2008, stated that ‘the reference to invalidity risks in paragraph 4 of Mr Hamer’s second affidavit is general and does not relate in particular to the Alpha Crystalline Patent’. In cross-examination, Mr Hamer stated that it is implicit in any application to amend that the amendments are made to introduce narrower claims, thereby reducing the invalidity risk.
100. While Mr Hamer referred in his affidavit and oral evidence to a general purpose of introducing narrower claims within a patent, he stated in cross-examination that one of the purposes of Servier’s proposed amendments was to increase the chances of having a valid claim which would be infringed by Apotex. Servier states in its written submissions that the ‘amendment is sought because there is additional claimable matter identified in the Specification. This is not a case where a narrowing amendment is made to avoid a specific piece of prior art’.

Discovery

101. Servier’s initial position was that discovery was not necessary.
102. Following the Court’s orders of 9 July 2008 for discovery limited by categories, Apotex proposed categories of documents for discovery but, Apotex says, Servier refused to give discovery in relation to many of the categories sought. Servier submits that Apotex’s proposed categories of discovery were extremely broad and did not appear to be targeted to the matters in issue. Servier did not agree to discovery on the basis of Apotex’s proposed categories.
103. Servier gave discovery in tranches. It served an unverified list of documents on 22 August 2008 and then a supplementary list on 29 August 2008. Subsequently, on 8 September 2008, it served a consolidated list of documents verified by the Head of the Patent Department at Servier. Apotex says that many of the documents listed were either publicly available or already in Apotex’s possession.
104. Servier’s list of documents referred to privileged documents in five broad categories. Servier does not dispute that it provided discovery in tranches and that it did not individually list privileged documents in its list of documents but submits that this is a common approach to take. On 2 September 2008, Apotex wrote to Servier requesting a further list of documents containing a subset of privileged documents relating to the matters set out in Mr Hamer’s affidavit evidence.
105. Servier submits that the parties’ exchanges regarding the production of documents and the issue of discovery demonstrates that Servier was ‘taking its obligations seriously but at the same time resisting the wasteful and enormously expensive exercise encouraged by Apotex of trawling through its documents and throwing everything at the court and of unnecessarily revealing privileged communications unrelated to the amendment’.
106. On 10 September 2008, Servier provided an unverified list of some of the documents over which it claimed privilege. That list did not include any correspondence from Servier, other than one letter, which predated the amendment application by two years.

Documents produced by Servier following the Court’s orders of 14 October 2008

107. In reasons given on 30 September 2008, I concluded that Servier had waived privilege on the issue of Mr Hamer’s reasons for seeking to amend the AC Patent and advice to and instructions from Servier on that subject (Apotex Pty Ltd v Les Laboratoires Servier [2008] FCA 1466; (2008) 79 IPR 100).
108. On 14 October 2008, I ordered that Servier serve on Apotex communications or records of communications between Servier and AAR relating to, inter alia, the application for amendment and the reasons for seeking the amendments. Apotex tendered a bundle of these documents on 1 December 2008, which documents are covered by an inter partes confidentiality order made on 13 October 2008.
109. Apotex submits that it is these documents, and not the evidence given by Mr Hamer, which disclose Servier’s reasons for making the amendment application. In particular, Apotex points to correspondence between Servier and AAR in 2007 in which AAR states that the amendments to the AC Patent were designed to overcome potential validity issues raised by the UK proceedings. I note that the content of that correspondence was confidential, but this aspect was discussed in open Court.

Delay

110. Servier submits that delay is only relevant to the exercise of the Court’s discretion under s 105 of the Act in cases where the delay has been unreasonable (citing ICI Chemicals & Polymers Ltd v Lubrizol Corp (1999) AIPC ¶91-521).
111. Mr Hamer’s evidence is that he first thought of the amendments in January to February 2007. An application to amend the AC Patent was made to IP Australia under s 104 of the Act on 2 March 2007. Servier contends that any delay which has occurred is the result of Apotex’s actions, first in unsuccessfully seeking to oppose the patent application out of time, then reviewing the decision to refuse the extension of time and lastly seeking a review of the decision to dismiss Apotex’s opposition to the s 104 amendments.
112. After the AC Patent was granted on 1 May 2008, the present motion was filed on 26 May 2008.

Consideration

113. While Mr Hamer may only have become aware in early 2007 that the specification of the AC Patent disclosed matter which could be the subject of additional claims, there is no evidence of Servier’s knowledge or awareness other than, tangentially, in correspondence with AAR. Servier was clearly aware of the contents of the specification of the AC Patent, its own prior patent (held to anticipate the equivalent patent in the UK and in the Netherlands), the Coquerel reports written by the inventor of the AC Patent and its own prior product. Servier submits that these matters formed no part of its reasons to amend or to pursue amendment. I find that difficult to accept.
114. Even if the relevant period is from the time when the patentee knows or ought to know of the need to amend the patent until the time when the application for amendment is made (Novartis AG v Bausch & Lomb (Australia) Pty Ltd [2004] FCA 835; (2004) 62 IPR 71), Servier must have been aware of the issues surrounding needles, crystal size, filtration and drying for some time prior to the application to amend. The time at which Mr Hamer became aware of these matters cannot explain Servier’s delay in seeking the amendments.
115. Mr Hamer’s first affidavit did not clearly state that Servier was seeking to amend the AC Patent to address the validity issues raised in the UK proceedings. AAR’s letter of 5 September 2008 stated that invalidity risks referred to in Mr Hamer’s second affidavit were “general” and did not relate particularly to the AC Patent. That is inconsistent with the statement that the amendments were specifically designed to overcome potential validity issues raised in the UK proceedings over the AC Patent.
116. Even in its written closing submissions at [86], Servier stated:

Mr Hamer’s first affidavit accurately states the reason for the amendment in general terms. Mr Hamer’s second affidavit elaborates on each of the relevant factors having regard, in particular, to the issues released by Apotex. The amendment is sought because there is additional claimable matter identified in the Specification. This is not a case where a narrowing amendment is made to avoid a specific piece of prior art.

117. On one hand Mr Hamer stated that he did not intend his first affidavit to be the only mechanism by which Servier would provide full and frank disclosure of its reasons for seeking amendment of the AC Patent. He said that he expected that there would be an exchange of pleadings and further evidence, as well as the production of documents and discovery and the presentation of oral submissions to the Court. On the other hand, Servier maintains that Mr Hamer’s first affidavit accurately states the reason for the amendments in general terms and that his second affidavit elaborates on each of the relevant factors. That is not the case. Servier accepts that inserting the additional claims would also serve to distinguish the AC Patent from the prior art and therefore overcome the invalidity risk. While there is no requirement for an officer of the patentee to give evidence, the onus is on the patentee to provide its reasons.
118. Servier did not disclose the reasons for seeking the amendments until the end of a long process. I do not accept Servier’s suggestion that the disclosure of its reasons was part of an iterative process. A process of ongoing disclosure can be sufficient. In Gambro Pty Ltd v Fresenius Medical Care South East Asia Pty Ltd [1999] FCA 1848; (1999) 48 IPR 625, documents relevant to an investigation of Gambro’s motives were produced directly to the Court, rather than in discovery or affidavit evidence, and this was held to be sufficient disclosure. However, for its own reasons, Servier declined to disclose the reasons for the proposed amendments at the time of making its application until, in effect, compelled to do so.
119. The proposed amendments to the claims are not deletions of wider claims with the maintenance of narrower claims. Servier proposes to maintain the existing claims and to add a new set of claims with a purportedly narrowing element. From the information ultimately provided by Servier, the purpose of the proposed amendments seems to be to validate the claims in case none of the corresponding existing claims are valid or are infringed by Apotex.
120. Courts have traditionally refused amendment if it was considered that the patentee’s conduct had been such that, as a matter of discretion, the amendment should be refused. Following a period of strictness, this rule was relaxed so that it was not applied adversely unless the patentee had deliberately elected to maintain invalid claims which he or she knew or ought to have known required amendment (Thorley et al, Terrell on the Law of Patents (16th ed, Sweet & Maxwell, 2006) at 9-37). Delay likely to be of some detriment to respondents or to the general public was also considered a factor, although mere delay was not (Terrell at 9-38).
121. There is no obligation on a patentee to disclose privileged documents, although there may be a need to do so to satisfy the obligation for full and frank disclosure. Failure to disclose documents in those circumstances may result in the exercise of discretion to refuse the amendments unless a reasonable explanation is given (Wimmera (No 2) at 115). The disclosure of privileged documents is not contingent on a request for discovery by the respondent (Re Hsiung’s Patent [1992] RPC 497).
122. Servier commenced proceedings for infringement on the existing claims. It has moved with reasonable expedition to apply to amend the claims since the commencement of these proceedings. However, Servier says that the presence of the compound in the form of individual needles is part of the invention. Indeed, Servier’s analysis of the AC Patent makes it apparent that it is a necessary part of the invention. Yet Servier does not seek to amend the AC Patent by deleting those claims that do not possess this limiting integer. It wishes to maintain both the broad, unlimited claims and the new proposed limited claims. That of itself is not unusual – it is the way in which independent and dependent claims are often drafted. Further, it is not impermissible for a patentee to amend to attempt to “catch” an infringer or to remove a lawful ground of objection. The latter is specifically provided for in s 104(1) of the Act, so long as the amendment is allowable under s 102. However, maintenance of the existing claims that are wider than the invention together with the proposed narrowing claims that define the described invention may give to Servier an unfair advantage. One of the considerations that has been discussed is whether the patentee has knowingly taken advantage of wide claims. The issue is not whether Servier commenced proceedings on the unamended claims. That itself would not disentitle Servier from obtaining a grant of the proposed new claims. However, Servier advances the proposed new claims as reflecting the invention. That is, the invention is the form of the compound in individual needles, yet Servier maintains the existing, wider claims which are not limited by that form. In other words, Servier intends knowingly to take advantage of the wider claims which do not reflect the invention described in the AC Patent, while at the same time seeking amendment better to defend the validity of the AC Patent and prove infringement by Apotex.
123. Servier is entitled to seek amendments to remove valid objections to validity, as it is to improve its prospects of establishing infringement. It is relevant, however, that after the comprehensive rejection of the corresponding unamended claims in the UK decisions, Servier still wishes to maintain those claims while at the same time seeking to overcome attacks on their validity by inserting the proposed new claims. As the same claims are maintained, the grounds of invalidity asserted in respect of those claims are not removed by the amendments.
124. The equivalent patent in the UK was held invalid for lack of novelty and for obviousness. That decision was upheld by the Court of Appeal in a judgment of 9 May 2008 (see: Les Laboratoires Servier v Apotex Inc [2008] EWCA Civ 445). Lord Justice Jacob, with whom the Lord Chief Justice and Lloyd LJ agreed, was scathing in his analysis of the patent, saying that the application for it was “specious”, that the patent was a “type of undesirable patent” and a “try-on”. His Lordship then dealt with the questions of novelty and obviousness of the claimed invention and comprehensively dismissed the appeal as being “without merit” on the basis that claim 1 and the process claim lacked novelty. I mention this, not because his Lordship’s characterisation and opinion are relevant to this application, but to put in context the decision by Servier to seek to add the new claims and its decision to continue the proceedings for infringement of the existing claims against Apotex. Servier did not say that the UK proceedings were a reason it sought the amendments. However, a document produced following the Court’s orders of 14 October 2008 showed that invalidity concerns raised in the UK were a reason.
125. Section 105(2) specifically provides that the Court may make an order for amendment subject to such terms as it thinks fit. Such a term may include an order excluding the right to commence proceedings with respect to any infringement of those claims prior to amendment, even if s 115 does not apply (Bucknell et al, Australian Patent Law (LexisNexis Butterworths, 2004) at 105.9 citing Pracdes Pty Ltd v Stanilite Electronics Pty Ltd (1995) 35 IPR 227).
126. In my view, it is appropriate to exercise the discretion afforded by s 105 to refuse the proposed amendments. I do not accept that there was an “iterative process” in Servier’s reasons for amendment. It may well be that Mr Hamer had his own reasons for proposing amendment but I do not accept that those reasons were those of Servier’s at the relevant time. The UK proceedings exposed the arguments relied upon to establish invalidity of the AC Patent. Servier was entitled to seek to amend the Australian patent to strengthen it but was then obliged to inform the Court of that reason. To the contrary, Servier put forward other reasons or permitted other reasons to be advanced. It was only when Servier produced documents pursuant to the Court’s order of 14 October 2008 that the correspondence between Servier and its solicitors demonstrated that the reasons for the application to amend were not limited or based upon those set out in Mr Hamer’s first affidavit. Further, as noted above, the reference in Mr Hamer’s second affidavit to the reduction of invalidity risk was said by Servier to be a “general” statement, rather than being of particular relevance to the AC Patent. Servier failed voluntarily to disclose all relevant matters until they were exposed by Apotex. That failure to disclose was not of some minor, though strictly relevant, matter. It was a failure to disclose Servier’s reason for the amendments.
127. Full and frank disclosure on Servier’s part did not require Servier to trawl through all of its documents to see whether there were any relevant to the exercise of the discretion to permit amendment. Nor did it require Servier to provide all of its documents to the Court as a policy of caution (cf Oxford Gene at [19]-[21]). Servier should have given its reason for the amendments voluntarily and at the time it sought the amendments. It knew the grounds of Apotex’s opposition to the amendments and it knew of Apotex’s challenge to the validity of the corresponding patent in the UK and its defence to infringement. That clearly raised the scope of the claims and the reasons to amend them (Vector Corp v Glatt Air Techniques Ltd [2007] RPC 12).
128. Servier had ample opportunity to amend the AC Patent application if it was of the view that it contained additional claimable matter. It litigated the unamended patent in the UK and pursued the grant of the unamended patent in Australia, abandoning the s 104 amendments. Servier has not sufficiently explained why it took this course. At the time of abandoning the s 104 amendments, Servier was aware of the first instance decision in the UK. Servier’s conduct in relation to the amendments disentitles it from presently amending the AC Patent in circumstances where litigation over the validity of that patent with Apotex was in clear prospect and the contest over the patent had already commenced. The lack of forthrightness in providing Servier’s reasons to amend reinforces that conclusion.

CONCLUSION

129. While the amendments proposed by Servier are allowable under s 102 of the Act, I consider that, for the reasons given above, the discretion under s 105 should be exercised to refuse the amendments.
130. It follows that Servier’s notice of motion seeking to amend the AC Patent should be dismissed. I see no reason why costs should not follow the event. I will make an order that Servier pay Apotex’s costs of the motion but stay that order until midday on 17 September 2009 to allow the parties to consider these reasons and to make any submissions as to costs by 4:00pm on 16 September 2009.
     

I certify that the preceding one hundred and thirty (130) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Bennett.

Associate:

Dated: 11 September 2009

Counsel for the Applicant:	Mr D K Catterns QC and Mr N R Murray
Solicitor for the Applicant:	Freehills
Counsel for the Respondent:	Mr A Ryan SC
Solicitor for the Respondent:	Allens Arthur Robinson

Date of Hearing:	17 and 18 September 2008, 1 December 2008
Date of Judgment:	11 September 2009

ANNEXURE A

Servier’s proposed new claims for the AC Patent

19. α crystalline form of the compound of formula (I):

characterised by having the following powder X-ray diffraction diagram, measured using a diffractometer (copper anticathode) and expressed in terms of inter-planar distance d, Bragg's angle 2 theta, intensity and relative intensity (expressed as a percentage with respect to the most intense ray)

Angle 2 theta (°)	Inter-planar distance d (Å)	Intensity	Relative intensity (%)
7.680	11.50	390	8.8
8.144	10.85	230	5.2
9.037	9.78	4410	100
10.947	8.08	182	4.1
13.150	6.73	82	1.9
13.687	6.46	83	1.9
14.627	6.05	582	13.2
15.412	5.74	770	17.5
16.573	5.34	1115	25.3
17.357	5.10	340	7.7
18.109	4.89	193	4.4
19.922	4.45	306	6.9
20.609	4.31	375	8.5
21.412	4.15	226	5.1
21.832	4.07	217	4.9
22.158	4.01	483	11
22.588	3.93	386	8.8
23.323	3.81	107	2.4
24.200	3.67	448	10.2
24.727	3.60	137	3.1
25.957	3.43	125	2.8
26.932	3.31	75	1.7
27.836	3.20	197	4.5
28.966	3.08	129	2.9
29.213	3.05	117	2.7

and further characterized by being in the form of individual needles.

20. The α crystalline form of the compound according to claim 19, wherein the individual needles allow rapid and efficient filtration and drying of the compound.
    
21. A process for preparation of the α crystalline form of the compound of formula (I) according to claim 19 or 20, comprising heating a solution of perindopril tert-butylamine salt in ethyl acetate at reflux and gradually cooling the solution until crystallisation is complete forming individual needles, wherein the solution at reflux is first cooled to a temperature of from 55 to 65°C at a rate of from 5 to 10°C/hour, and then cooled to ambient temperature.
    
22. The process according to claim 21, wherein the concentration of the perindopril tert-butylamine salt in the ethyl acetate is from 70 to 90 g/litre.
    
23. The process according to claim 22, wherein the solution of perindopril tert-butylamine salt in ethyl acetate is seeded during the cooling step at a temperature of from 76 to 65°C.
    
24. The process according to claim 22 or 23, wherein the solution of the perindopril tert-butylamine salt in ethyl acetate at reflux is first cooled to a temperature of from 55 to 65°C at a rate of from 6 to 8°C/hour, and then to ambient temperature.
    
25. A pharmaceutical composition comprising, as active ingredient, α crystalline form of the compound of formula (I):

in combination with one or more pharmaceutically acceptable, inert, non-toxic carriers; wherein the α crystalline form of the compound of formula (I) being characterised by having the following powder X-ray diffraction diagram, measured using a diffractometer (copper anticathode) and expressed in terms of inter-planar distance d, Bragg's angle 2 theta, intensity and relative intensity (expressed as a percentage with respect to the most intense ray)

Angle 2 theta (°)	Inter-planar distance d (Å)	Intensity	Relative intensity (%)
7.680	11.50	390	8.8
8.144	10.85	230	5.2
9.037	9.78	4410	100
10.947	8.08	182	4.1
13.150	6.73	82	1.9
13.687	6.46	83	1.9
14.627	6.05	582	13.2
15.412	5.74	770	17.5
16.573	5.34	1115	25.3
17.357	5.10	340	7.7
18.109	4.89	193	4.4
19.922	4.45	306	6.9
20.609	4.31	375	8.5
21.412	4.15	226	5.1
21.832	4.07	217	4.9
22.158	4.01	483	11
22.588	3.93	386	8.8
23.323	3.81	107	2.4
24.200	3.67	448	10.2
24.727	3.60	137	3.1
25.957	3.43	125	2.8
26.932	3.31	75	1.7
27.836	3.20	197	4.5
28.966	3.08	129	2.9
29.213	3.05	117	2.7

and wherein the α crystalline form of compound of formula (I) has been isolated in the form of individual needles.

26. The pharmaceutical composition according to claim 25, wherein the individual needles allow rapid and efficient filtration and drying.
    
27. The pharmaceutical composition according to claim 25 or 26 in the form of tablets or dragées, sublingual tablets, gelatin capsules, lozenges, suppositories, creams, ointments, dermal gels, injectable preparations, or drinkable suspensions.
    
28. The pharmaceutical composition according to claim 27 in the form of a tablet.
    
29. The pharmaceutical composition according to any one of claims 25 to 28 comprising from 1 to 500 mg of the α crystalline form of the compound of formula (I).
    
30. The pharmaceutical composition according to claim 29 comprising 4 mg of the α crystalline form of the compound of formula (I).
    
31. The pharmaceutical composition according to any one of claims 25 to 30, further comprising a diuretic.
    
32. The pharmaceutical composition according to claim 31, wherein the diuretic is indapamide.
    
33. Use of the pharmaceutical composition according to any one of claims 25 to 32 as an inhibitor of angiotensin I converting enzyme.
    
34. The use according to claim 33 for treatment of cardiovascular disease.
    
35. A method of treatment of cardiovascular disease comprising administering to a patient in need of such treatment an efficacious amount of α crystalline form of the compound of formula (I):

characterised by having the following powder X-ray diffraction diagram, measured using a diffractometer (copper anticathode) and expressed in terms of inter-planar distance d, Bragg's angle 2 theta, intensity and relative intensity (expressed as a percentage with respect to the most intense ray)

Angle 2 theta (°)	Inter-planar distance d (Å)	Intensity	Relative intensity (%)
7.680	11.50	390	8.8
8.144	10.85	230	5.2
9.037	9.78	4410	100
10.947	8.08	182	4.1
13.150	6.73	82	1.9
13.687	6.46	83	1.9
14.627	6.05	582	13.2
15.412	5.74	770	17.5
16.573	5.34	1115	25.3
17.357	5.10	340	7.7
18.109	4.89	193	4.4
19.922	4.45	306	6.9
20.609	4.31	375	8.5
21.412	4.15	226	5.1
21.832	4.07	217	4.9
22.158	4.01	483	11
22.588	3.93	386	8.8
23.323	3.81	107	2.4
24.200	3.67	448	10.2
24.727	3.60	137	3.1
25.957	3.43	125	2.8
26.932	3.31	75	1.7
27.836	3.20	197	4.5
28.966	3.08	129	2.9
29.213	3.05	117	2.7

wherein the α crystalline form of the compound of formula (I) has been isolated in the form of individual needles.

36. The method of treatment according to claim 35, wherein the individual needles allow rapid and efficient filtration and drying of the compound.
    
37. A method of treatment of cardiovascular disease comprising administering to a patient in need of such treatment an efficacious amount of a pharmaceutical composition according to any one of claims 25 to 32.
    
38. Use of the α crystalline form of the compound of formula (I):

for the manufacture of a medicament for treatment of cardiovascular disease,

wherein the α crystalline form of the compound of formula (I) being characterised by having the following powder X-ray diffraction diagram, measured using a diffractometer (copper anticathode) and expressed in terms of inter-planar distance d, Bragg's angle 2 theta, intensity and relative intensity (expressed as a percentage with respect to the most intense ray)

Angle 2 theta (°)	Inter-planar distance d (Å)	Intensity	Relative intensity (%)
7.680	11.50	390	8.8
8.144	10.85	230	5.2
9.037	9.78	4410	100
10.947	8.08	182	4.1
13.150	6.73	82	1.9
13.687	6.46	83	1.9
14.627	6.05	582	13.2
15.412	5.74	770	17.5
16.573	5.34	1115	25.3
17.357	5.10	340	7.7
18.109	4.89	193	4.4
19.922	4.45	306	6.9
20.609	4.31	375	8.5
21.412	4.15	226	5.1
21.832	4.07	217	4.9
22.158	4.01	483	11
22.588	3.93	386	8.8
23.323	3.81	107	2.4
24.200	3.67	448	10.2
24.727	3.60	137	3.1
25.957	3.43	125	2.8
26.932	3.31	75	1.7
27.836	3.20	197	4.5
28.966	3.08	129	2.9
29.213	3.05	117	2.7

and wherein the α crystalline form of the compound of formula (I) has been isolated in the form of individual needles.

39. The use according to claim 38, wherein the individual needles allow rapid and efficient filtration and drying of the compound.