Award of special costs in Isabelle case

In a decision handed down on 4 May 2017, Bayer has been successful in obtaining special costs in the long running Isabelle case.  This follows a previous decision, handed down 16 March 2017, in which the Court ordered Generic Health to pay damages to Bayer in respect of Bayer’s claims for infringement of claims 3 and 11 of Australian patent 780330.   The damages bill was in excess of $30 mil (AUD).  This is a significant decision for the Australian pharmaceutical industry, as actions of this nature are rarely pursued to a judicial decision.  Of particular interest is how the Court arrived at the final damages figure.

In calculating damages to be awarded, Bayer proposed that, not only was each sale of Generic Health’s Isabelle a lost sale to Yasmin, but also each sale of its own generic Petibelle should be considered a lost sale. Bayer argued that Petibelle (Bayer’s own generic version of Isabelle) would not have been introduced into the market if the generic Isabelle had not been launched.  Based on this model, the total claim for damages was $25,751,336 plus interest.

Generic Health argued that this amount would be an over-compensation on the basis that, inter alia, at least some, and perhaps a substantial number, of sales of Isabelle were not in substitution for Yasmin.   It was also argued that Bayer was precluded from any award of damages for infringement before 14 December 2012 (the date of which the patent was amended) because ‘Bayer had not satisfied that Court that its original specification, before amendment, was framed in good faith and with reasonable skill and knowledge’.   The Court found these arguments unconvincing and found in favour of Bayer.

Generic Health now has until 11 May 2017 in which to file an appeal.

This article was written by Ellen Reid and Benjamin Cleary.

If you have any specific enquiries about this case, please contact Paul Jones or Debra Tulloch.