On 25 August 2009 Justice Kenny handed down her decision in Medrad Inc v Alpine Medical Pty Ltd  FCA 949. Her Honour granted an injunction to the applicant (represented by Mallesons) restraining the respondents from selling certain disposable syringes in Australia. In doing so, Justice Kenny refuted that it was the practice of the court to refuse an interlocutory injunction where the validity of a patent is being challenged.
Justice Kenny found there was a serious question to be tried in relation to infringement. However, her Honour held that the respondent had not made out a prima facie case of obviousness, because the evidence it relied upon, provided by the respondent’s patent attorney and a Director of the respondent (previously a radiologist), could not be shown to constitute evidence of persons skilled in the art.
On the balance of convenience, her Honour held that damages would not be an adequate remedy, and therefore the injunction should be granted. In reaching that decision, her Honour placed significant weight on the evidence of the Managing Director of the second applicant (the exclusive licensee of the patent). In particular, the Managing Director had given evidence that, due to the competitive nature of the market, if the respondents conduct remained unrestrained, there might well be a potential price war leading to the permanent lowering of syringe prices. Her Honour’s approach was consistent with the decisions in some recent patent infringement cases concerning pharmaceuticals (such as Sigma Pharmaceuticals (Australia) Pty Ltd v Wyeth  FCA 595).
The respondent had also failed to provide any evidence that it would be able to meet an award for damages.
The decision helps clarify the Court’s stance on the onus of proof for injunctions in patent cases, particularly where the sale is outside the PBS.