The Full Court of the Federal Court of Australia has overturned a decision granting Reckitt Benckiser (Reckitt) an interlocutory injunction over the threatened supply by GlaxoSmithKline (GSK) of a syringe dispensing system with Children’s Panadol 1-5 years.1 The injunction had been granted based on alleged infringement by GSK of a patent owned by Reckitt.

Commercial significance

The key points from this decision are:

  • For businesses seeking an urgent interlocutory injunction (for example, to stop the sale of a competitor’s product), consider the merits of the case carefully before seeking interlocutory injunctive relief. This decision demonstrates the continuing trend of the Court in interlocutory injunction applications to go much further in assessing the strength of the case before granting an injunction.
  • An interlocutory injunction can be a powerful legal and commercial remedy. In this case, GSK was successful before the Full Court in overturning an injunction against them, and can now sell this form of its Children’s Panadol. However, GSK’s product was kept off the market for approximately 6 weeks between the date of the trial judge’s decision and the date of the Full Court’s decision overturning the trial judgment. Those 6 weeks included weeks during the 2013 winter flu season. Given the extreme commercial significance of having a product taken off the market, the applicant for an interlocutory injunction must undertake to recompense the enjoined party if the applicant does not ultimately succeed at trial.
  • For businesses facing an urgent interlocutory injunction, one option to carefully consider is a ‘design-around’ to seek to get a product on the market quickly. In this case GSK had created a design-around to seek to avoid infringement of Reckitt’s patent, following an initial injunction against an earlier version of GSK’s syringe dispensing system.
  • This decision also demonstrates the importance of drawing to the Court’s attention any public health and safety issues relevant to the continued supply of a product in an application for interlocutory injunctive relief.

Facts of the case

In May 2013, Reckitt commenced patent infringement proceedings against GSK over GSK’s supply of a syringe dispenser with Children’s Panadol 1-5 years (Original Syringe). Reckitt alleged that GSK’s product infringed a patent owned by Reckitt for a syringe dispensing system for liquids. Reckitt successfully obtained an interlocutory injunction restraining GSK’s supply of the Original Syringe pending the determination of the proceeding (First Injunction).

Soon after the grant of the First Injunction, GSK informed Reckitt that it proposed to go to market with an Alternative Syringe. The Alternative Syringe was a ‘design-around’ the relevant claim of Reckitt’s patent. Reckitt again successfully obtained an interlocutory injunction restraining the supply of the Alternative Syringe (Second Injunction).

GSK sought leave to appeal the Second Injunction to the Full Court of Australia on a number of grounds.

Full Court’s decision

The Full Court overturned the Second Injunction on the basis that the trial judge Justice Rares misconstrued the patent and incorrectly excluded evidence from GSK.

Construction of the patent

Both the trial judge and the Full Court considered the merits of the parties’ positions on the patent issues in some detail. The Full Court emphasised that the question for infringement is not generally whether the substance of the invention has been taken but whether each of the essential integers of the claim has been taken. While the trial judge had considered Reckitt to have a sufficiently strong prima facie case, the Full Court disagreed. The Full Court considered that Reckitt had only an arguable case on infringement and that GSK had the stronger case.

Excluding GSK’s evidence

One of the reasons given by the trial judge for granting the First Injunction was that it would have been “relatively easy” for GSK to supply Children’s Panadol with minor modifications to the syringe dispensing system. For example, the trial judge suggested that GSK could modify the packaging by simply removing the bottle neck liner in order to avoid infringement of Reckitt’s patent.

In relation to the Second Injunction, the trial judge prevented GSK from relying on new evidence. The new evidence addressed why the trial judge’s suggested design-around would not work (as it may have resulted in incorrect dosages being given to children), as well as justifying GSK’s design-around on the basis of health and safety concerns. The Full Court considered that the trial judge should not have excluded that evidence, which the Full Court considered important and relevant.

Full Court’s conclusion

The Full Court considered that this was not an appropriate case to grant interlocutory relief because of the relative weakness of Reckitt’s case and the fact that the balance of convenience (once GSK’s additional evidence was taken into account) lay in favour of GSK.