Boehringer Ingelheim Animal Health USA Inc. v Intervet International B.V.

1. The appellant and the respondent each bear their own costs of the respondent's interlocutory applications filed on 10 December 2018 and 31 May 2019. Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.

MOSHINSKY J: 1 On 17 September 2020, I published reasons for judgment in this matter and ordered that the parties provide minutes of proposed orders to give effect to the Court's reasons: Boehringer Ingelheim Animal Health USA Inc. v Intervet International B.V. [2020] FCA 1333. These reasons should be read together with the 17 September 2020 reasons. I adopt the abbreviations used in those reasons. 2 The parties subsequently provided proposed orders that were agreed except in one respect, namely as regards the costs of two interlocutory applications filed by Intervet by which it sought to amend the Patent Application. Accordingly, on 24 September 2020 I made orders that: (a) the appeal be dismissed; (b) Australian patent application number 2011268899 proceed to grant; (c) Boehringer pay Intervet's costs of the proceeding (apart from the costs of Intervet's interlocutory applications filed on 10 December 2018 and 31 May 2019, which are to be the subject of submissions on costs), as agreed or assessed; and (d) by 4.00 pm on 30 September 2020, each party file and serve a written submission (of no more than two pages) on the issue of the costs of Intervet's interlocutory applications filed on 10 December 2018 and 31 May 2019; that issue will then be determined on the papers. 3 Each party has now filed a written submission on the costs of Intervet's interlocutory applications filed on 10 December 2018 and 31 May 2019. The parties' positions are as follows: (a) Intervet does not seek its costs of preparing and filing the interlocutory applications. However, it submits that there is no proper basis for excluding any other costs of the interlocutory applications from the general order as to costs in Intervet's favour. (b) Boehringer submits that the appropriate order is that Boehringer and Intervet each bear their own costs of the interlocutory applications. 4 The following matters are noted in relation to the two interlocutory applications. By the interlocutory application filed on 10 December 2018, Intervet sought to amend the Patent Application to limit the references to "levamisole" in each of claims 1, 11, 14 and 16 to "levamisole salt" (so as to exclude levamisole in its free base form). Corresponding amendments were sought at page 2 (lines 8, 9 and 23) and page 2a (lines 2 and 3) of the specification. On 5 March 2019, an order was made by consent that, pursuant to s 105(1A) of the Patents Act 1990 (Cth), the complete specification of the Patent Application be amended as set out in Annexure 1 to the interlocutory application. The orders made on 5 March 2019 did not reserve or otherwise refer to the costs of the interlocutory application. 5 By the interlocutory application filed on 31 May 2019, Intervet sought to amend the Patent Application to delete the concluding words, "and wherein the formulation does not contain water" from claim 11. A corresponding deletion was sought at page 2 (line 26) of the specification. Boehringer initially opposed this amendment on discretionary grounds, but ultimately consented to it. On 18 February 2020, an order was made by consent that, pursuant to s 105(1A) of the Patents Act, the complete specification of the Patent Application be amended as set out in Annexure A to the interlocutory application. It was also ordered that the hearing of the interlocutory application (listed for 16 March 2020, the first day of the hearing of the proceeding) be vacated, and that the costs of the interlocutory application be reserved. 6 I consider it appropriate to deal with the costs of the interlocutory applications separately from the overall costs of the proceeding. They were discrete applications. 7 In my view, the appropriate order in the circumstances is that Boehringer and Intervet each bear their own costs of the interlocutory applications. In respect of each interlocutory application to amend, Intervet sought something in the nature of an indulgence: see Les Laboratoires Servier v Apotex Pty Ltd (2010) 273 ALR 630 at [59]; cf Eli Lilly and Co v Pfizer Research and Development Co NV/SA (2003) 59 IPR 234. For this reason, the patentee may be ordered to pay the costs of the amendment application, regardless of the outcome. In this case, however, Boehringer does not seek a costs order in its favour, but only an order that each party bear its own costs. I consider that to be appropriate, particularly in circumstances where there was no adjudication on the merits of either application. Although Intervet may have incurred some costs in considering and responding to Boehringer's initial opposition to the second application to amend, I consider it appropriate for these costs to lie where they fall. Boehringer had a proper interest in considering the proposed amendments, and any such costs incurred by Intervet were occasioned by Boehringer's proper consideration of the proposed amendments. Accordingly, I will make an order that Boehringer and Intervet each bear their own costs of the interlocutory applications. I certify that the preceding seven (7) numbered paragraphs are a true copy of the Reasons for Judgment of the Honourable Justice Moshinsky.