IP SPOTLIGHT DEC 18

In the recent decision of the Federal Court in Pfizer Ireland Pharmaceuticals v Sandoz Pty Ltd [2020] FCA 1648, Pfizer has been unsuccessful in its application for preliminary discovery from Sandoz in respect of Sandoz’s biosimilar etanercept product “ERELZI”, which is used in the treatment of rheumatoid arthritis. BACKGROUND Pfizer is the patentee of three Australian process patents which it suspected would be infringed by Sandoz in the manufacture of ERELZI. Pfizer is also owner of its own etanercept product, “ENBREL”. Pfizer sought preliminary discovery for information about Sandoz’s manufacturing process to understand its infringement position. Sandoz resisted the application on the basis that it had not made a decision to launch its ELREZI products in Australia, had no commercial stock of ERELZI in Australia, and had not taken any steps to progress the listing of ERELZI in Australia since 2018. Further, Sandoz had offered to provide an undertaking to Pfizer that while the relevant patents were in force, Sandoz would not exploit its ERELZI products in Australia or proceed with any PBS listing before providing Pfizer notice of a certain period (amongst other confidential terms). Pfizer argued that it was nevertheless entitled to preliminary discovery because the notice period offered by Sandoz would be insufficient for Pfizer to protect itself and obtain an interlocutory injunction. Pfizer therefore sought orders that anticipated the reception of notice from Sandoz, and that would require the production of process documents within 7 days of this notice date. ARGUMENTS Federal Court Rule 7.23(1)(a) provides that a prospective applicant may apply to the Court for an order for preliminary discovery if the prospective applicant “reasonably believes that the prospective applicant may have the right to obtain relief in the Court from a prospective respondent…” Pfizer argued that it met this requirement because it reasonably believed that it may have the right to obtain interlocutory relief from Sandoz for threatened patent infringement if Sandoz decided to launch an ERELZI product in Australia. However, Pfizer did not contest the fact that Sandoz had actually not yet made a decision whether to launch ERELZI in Australia, and it was possible that Sandoz may not launch in Australia at all. Justice Burley confirmed that the “reasonable belief” referred to in FCR 7.23(1)(a) must be current as at the date

on which the application is being assessed. Justice Burley provided that FCR 7.23 “does not provide that, in the event that sometime in the future a prospective applicant reasonably believes that it may have the right to obtain relief, the Court may make such an order.” As Pfizer’s reasonable belief that it may have the right to obtain relief against Sandoz was contingent on Sandoz actually deciding to launch ERELZI in Australia, Sandoz was effectively asking the Court to consider a hypothetical question of the type Courts do not typically decide. Justice Burley noted that a number of difficulties would arise if the course proposed by Pfizer was followed. In particular, Sandoz may make admissions as to infringement when it provides notice in due course. This would affect the scope of preliminary discovery that should be awarded, as the scope of preliminary discovery is necessarily limited by reference to the information required for the prospective applicant to decide whether to commence proceedings. Justice Burley considered that it was not appropriate that preliminary discovery should not be awarded now of a scope that assumed that no such admissions would be made. Further, Sandoz argued that the documents to be discovered were highly confidential and access should be limited to certain in-house legal personnel of Pfizer. It was possible that such personnel would no longer be involved in the decision-making process for the present matter when Sandoz eventually gave notice, so it did not make sense for such orders to be made now. On this basis, Justice Burley considered that the requirements of 7.23(1)(a) were not met. Justice Burley also noted that FCR 7.23(2) provides a broad discretion to the Court as to whether and to what extent discovery should be granted. As there did not appear to be an imminent threat of launch from Sandoz, and because the scope of preliminary discovery that is justified could not be determined at this stage (without knowing what Sandoz may admit to), Justice Burley considered that it would not be appropriate to exercise the discretion in Pfizer’s favour. KEY TAKEAWAYS Justice Burley’s decision makes it clear that preliminary discovery will not be awarded on the mere speculation that a prospective defendant may engage in potentially infringing conduct. The prospective applicant’s “reasonable belief” must be based on the circumstances as they exist at the time of consideration of the application, not based on a hypothetical scenario that may or may not arise in the future.

PFIZER DENIED SPECULATIVE DISCOVERY APPLICATION AGAINST SANDOZ’S BIOSIMILAR ETANERCEPT

BINDHU HOLAVANAHALLI Associate

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AUSTRALIAN TRADE MARKS UPDATE Holdings of IP Pty Ltd AFT Intelligent Assets Trust v Joseph Buttita [2020] ATMO 169

OPPOS I T ION TO TRADE MARK REG I STRAT ION UNDER SECT ION 44 The Opponent tried to argue that the Applicant’s trade mark was deceptively similar to the Opponent’s trade mark registrations. To succeed in this ground of opposition, the Opponent had to establish that the trade mark was substantially identical with, or deceptively similar to, another trade mark with an earlier priority date, in the name of a person other than the Applicant, in respect of similar services or closely related goods. For the purpose of this discussion, we will be focusing on whether coffee beans and ground coffee are “closely related” to café services. CLOSELY RELATED GOODS AND SERV I CES The Hearing Officer in his decision referred to Registrar of Trade Marks v Woolworths [1999] FCA 1020 at [37] where French J provided some guidance regarding the concept “closely related”: The term “closely related” recognises that goods and services are different things…So there must be some other form of relationship between the services covered by one mark and the goods covered by another to enable the goods or services in question to be described as “closely related”... the ‘relationship may and in perhaps most cases will be defined by the function of the service with respect to the goods’. For the purpose of this case, the question we need to ask ourselves is whether coffee products are closely related to cafes, coffee shop services and services relating to the provision of food and drink. The Hearing Officer referred to past decisions, which, at times, provided differing outcomes. For example, in Aroma Coffee & Tea Co Pty Ltd v Aromas Pty Ltd [1997] ATMO 82 goods, including coffee, were considered closely related to, amongst other services, café and coffee shop services. In McDonald’s Inc v Future Enterprises Pte Ltd [2007] ATMO 22 coffee products were found not to be closely related to restaurant and café services. More recently in Kicking House Coffee Co Ltd [2018] ATMO 193 the delegate of the Registrar found coffee, coffee beans and other coffee goods specified in Class 30 to be closely related to café services.

The Hearing Officer made a comment regarding the change in the industry over the last few decades, in particular, it is now commonplace for consumers to source coffee products from the cafes and the cafes increasingly offer coffee beans for sale. The Hearing Officer also said that it would be reasonable for consumers to be aware of the brand of coffee a café is using to make their beverages. This would also suggest that consumers can reasonably expect that these goods and services often originate from the same source. I myself know this to be true as we purchase our coffee beans from our local café who also provides café and coffee shop services. We purchased the coffee beans after purchasing take away coffees and simply liking the beans they used. Some well-known examples of other brands doing the same thing include Starbucks and Gloria Jean’s Coffee. Some well- known cafes in Melbourne who roast and sell their coffee under the same brand name as the care include Duke’s Coffee, Seven Seeds, AXIL Coffee Roasters Café and ST. Ali to name a few. As a result, the Hearing Officer was satisfied that the various coffee goods specified in the Trade Mark Registrations are closely related to café and coffee shop services. In the end, the Opponent failed to establish Section 44 as the Hearing Officer found that as a whole the combination of visual, aural and conceptual differences between the marks were too great for there to be a real or tangible danger of confusion between the trade marks. KEY TAKEAWAYS – – It is commonplace for consumers to expect that the café industry coffee goods are often provided alongside café and coffee shop services, therefore, originating from the same source and weighing in favour of the goods and services being closely related. – – There is an ever-increasing likelihood that you will be aware of the brand of coffee beans that the café uses to make your morning flat white, latte or cappuccino. Cafes will generally only sell and use one brand of coffee beans. This increases the likelihood of a consumer assuming a connection between the source of the goods and services.

This article discusses the recent trade marks office decision of Holdings of IP Pty Ltd AFT Intelligent Assets Trust v Joseph Buttita [2020] ATMO 169. During Melbourne’s strict lockdown, my partner and I being avid coffee lovers, purchased a new coffee machine. Every couple of weeks we venture down to our local café around the corner and purchase some coffee beans so we can have our morning coffee. What does that have to do with trade marks? Well, a recent decision handed down by the Australian Trade Marks Office referred to this commonplace behaviour when discussing the concept of closely related goods and services.

BACKGROUND Joseph Buttita (the Applicant) applied to register the word mark ‘PRIMAL JOES COFFEE CO’ (the Trade Mark) in respect of “Cafe services; Coffee shop services” in Class 43. Holder of IP Pty Ltd ATF Intelligent Assets Trust (the Opponent) unsuccessfully opposed the application before a Delegate of the Trade Marks Office pursuant to sections 42(b), 44, 58, 60 and 62A.

The Opponent is the registered owner of the following trade marks:

– – Trade Mark Registration No. 1629917

– – Trade Mark Registration No. 1678128

JESSICA MURPHY Trade Marks Attorney

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Mining has often been considered slow in implementing innovation and technological transformations compared to other fields - such as the automotive industry. However, the number of patent applications being filed by mining companies and those in the Mining Equipment, Technology and Services sector (METS) in Australia is significant, both in numbers and in its diversity.

– – separating each segment of the crushed ore on the basis of grade of the segment into a category that is at or above a first-grade threshold or a category that is below the first-grade threshold by dry sorting the segment – – processing separated segments in a downstream processing plant and producing upgraded material. The patent application was opposed at acceptance, ultimately proceeding to a Patent Office hearing and in turn an appeal of that Patent Office decision before the Australian Federal Court (Technological Resources Pty Limited v Tettman [2019] FCA 1889). In summary, theopponent advancedargument asserting that the invention was a ‘mere scheme’ and/or ‘mere working directions’. These arguments were unsuccessful. It was held that the invention is a functionally integrated series of steps wherein each subsequent step depends on the creation of a new state of affairs by the preceding step, highlighting that “…the invention involves physical steps carried out on a physical product using physical apparatus, to produce a physical and tangible result”. This decision certainly supports the view that no ‘good idea’ should be dismissed, despite suggestions that it may not be ground-breaking. AUTONOMOUS VEH I CLES One of the most talked-about topics in mining is automation, including the increasing use of autonomous trucks and driverless trains. These ideas are familiar here in Western Australia, particularly in the Pilbara, where autonomous vehicle operations have expanded over the last 10 years as miners push for improved productivity and safety. Automation is fertile ground for patents, despite what might appear to be the routine application of known technology. In many instances the patentability of autonomous vehicle inventions resides in the control systems, typically achieved through an algorithm working in collaboration with on-board sensors and networks, to propel the vehicle without colliding.

INNOVATION IN MINING – NOT ALL SO GROUND-BREAKING?

We will explore the different types of patents used at various stages of mining – from primary ore to target metal.

MI NERAL PROCESS I NG FLOWSHEET Unsurprisingly, patents originating from Australia are heavily focused on extracting as much value from the mined ore. A typical mineral processing patent consists of a step by step method of various operations in a particular order. The key subject matter of the invention may be that the novel flowsheet achieves the extraction of a higher-grade ore with additional benefits, such as less impact on the environment or one without extensive (expensive) operations. Patent AU 2011261171 filed by Rio Tinto’s subsidiary - Technological Resources Pty Ltd, is one example. This patent discloses a method of mining titled “Separating Mined Material” that includes the following steps: – – mining ore – – reducing the size of mined ore in a crushing step and producing a crushed ore having a primary crushed ore particular size – – assessing the grade of successive segments of the crushed ore by direct assessment of grade as the crushed ore is transported along a pathway

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“ …the invention involves physical steps carried out on a physical product using physical apparatus, to produce a physical and tangible result. ”

An example of an autonomous vehicle patent is Australian Patent 2012337399 titled “Method and system for driving a mining and/or construction machine”. This invention, from the Swedish company Epiroc, prevents a machine (eg. a mine truck) from colliding by retarding the machine before the machine collides. Below is an exemplary method:

Briefly, the laddertube® is made of rigid plastics material with the interior side wall of the tubes moulded to form a ladder extending the full length of the tube. As an enclosed product, the laddertube® is not as vulnerable to water, salt or other mineral deposits, achieving both efficiency and safety. The patent is owned by theAustralian companyHiram(WA)Pty Ltd, and has already been installed in 21 countries. MI NE OPERAT ION MON I TOR I NG SYSTEM Another innovation from Technological Resources Pty Ltd, is embodied in Australian Patent 2010305329 and relates to a mine operation monitoring system. The remote operation of mines is a field that has gone hand in hand with the development of autonomous mining technology, unsurprisingly. The inventors of this particular patent realised that there were challenges with identifying real-time information of a mine operation, specifically the vehicles, for someone viewing/ monitoring it from a remote location. The core subject matter of the patent is that the identifier (mine vehicle)hastheappearanceofaminevehicleandsimultaneously displays the status information within that identifier by its appearances. Accordingly, one can discern whether the vehicle is empty or partially full, whether it is travelling (is it travelling TO a pick-up location or FROM) and the speed that it is travelling (by different colours).

CONCLUS ION These Australian patents are just a few examples of what might at first blush be thought of as simply ‘a good idea’ and that have become innovative and practical solutions for the mining industry. It reminds us to never dismiss a good idea as ‘not patentable’ or ‘not worth protecting’. These patents also highlight the broad range of subject matter that can be patented in the areas of mining and mineral processing.Remember,when indoubt,pleaseaskyouradvisorat Wrays. Never assume that something that provides you with a competitive advantage is not patentable.

The method comprises determining and estimating various factors (e.g. distance and/or speed) in respect of an ‘obstacle’, by means of a control system, activating steering commands and retardation. UNDERGROUND MI N I NG Due to the harsh conditions of underground mining, the equipment used underground is particularly vulnerable to corrosion, requiring frequent maintenance. For example, conventional ladderways in the form of a steel ladder surrounded with a steel mash caging are constantly exposed to groundwater and seepage. Australian Patent 2014225271 titled “Laddertube for Underground Raises” provides a ladderway in the form of a tube used for, amongst other things, an emergency escape through which underground miners can access the surface in a protected manner in the event of an accident.

ELLEN CHA Technical Assistant

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