Ian is also an accredited mediator with extensive involvement in mediations in relation to Intellectual Property disputes.

Recently Ian’s practice has involved major national and multi-jurisdictional patent litigation in the pharmaceutical, life sciences, and resources/metallurgical sectors.

Ian is part of an outstanding legal and technical team that works with clients to:

• initially ascertain the client’s commercial objectives;
• develop an agreed strategy best designed to achieve those objectives; and
• thereafter work within agreed legal costs budgets to achieve those agreed objectives.

A selection of recent and current cases in which Ian has acted, or is continuing to act, both at first instance and at the appellate level, together with Ian’s recent awards, professional memberships, recent client comments, professional qualifications and contributions to the continued development of intellectual property law and practice are set out below.

SOME RECENT AND CURRENT CASES

PHARMACEUTICAL INDUSTRY

Bayer Pharma Aktiengesellschaft v Generic Health Pty Ltd and Lupin Australia

Ian lead a team who acted successfully on behalf of Bayer in an infringement suit against a number of generic companies asserting a patent covering Bayer’s oral high selling contraceptive products Yasmin and Yaz and in defending the relevant Bayer patent covering these products.

Ian’s team was successful in firstly amending the patent after institution of proceedings (a novel strategy now being adopted by other firms),

Bayer amendment: http://www.austlii.edu.au/au/cases/cth/FCA/2012/1510.html at trial in establishing infringement and validity,

Bayer trial (experiments): http://www.austlii.edu.au/au/cases/cth/FCA/2013/226.html

Bayer trial: http://www.austlii.edu.au/au/cases/cth/FCA/2013/279.html in defeating a Full Federal Court Appeal (roughly equivalent to the US Federal Circuit) on both infringement and validity,

Bayer Full Court: http://www.austlii.edu.au/au/cases/cth/FCAFC/2014/73.html in defeating a High Court Special Leave Application (equivalent to a US Supreme Court leave application),

Bayer High Court: http://www.austlii.edu.au/au/cases/cth/HCATrans/2014/261.html in a damages trial in recovering damages of approximately AU$32m plus substantial legal costs,

Bayer damages:  http://www.austlii.edu.au/au/cases/cth/FCA/2017/250.html in defending the damages award in a Full Federal Court Appeal (the respondents achieved only a very small deduction on appeal),

Bayer damages appeal:  http://www.austlii.edu.au/cgi-bin/viewdoc/au/cases/cth/FCAFC/2018/183.html

GSK v Apotex and Generic Partners – Federal Court of Australia Proceeding No. VID 638/2014

Ian lead a team who were successful on 43 out of 44 points in an infringement proceeding on behalf of GSK in which GSK asserted a patent covering its Panadol Osteo product and was met with a patent revocation cross-claim.

The team firstly obtained an interlocutory injunction (equivalent to a US preliminary injunction) in December 2014,

GSK PI: http://www.austlii.edu.au/au/cases/cth/FCA/2014/1398.html was successful at trial in defeating all of the respondents’ many grounds of invalidity and all the infringement points except 1 (construction point),

GSK trial: http://www.austlii.edu.au/au/cases/cth/FCA/2016/608.html was successful in the Federal Appeal Court holding all of the 43 of 44 points that were established at trial but not the construction point.

The team then successfully amended the patent against opposition from two generics to address the one construction point that was lost at trial.

Sequenom Inc v Ariosa Diagnostics & Ors – Federal Court of Australia Proceeding No. VID 611/2016

Ian lead a team who represented Sequenom Inc in proceedings against Ariosa Diagnostics, Inc, Clinical Laboratories Pty Ltd and Sonic Healthcare Limited in an infringement proceeding with a revocation cross claim heard in the Federal Court in August/September 2018.  The patent covered the areas of fetal medicine and molecular genetics with the technology being a non-invasive pre-natal test kit for detection of sex, aneuploidies, pre-eclampsia and Rhesus D.  Justice Beach delivered his decision in June 2019, finding Sequenom’s patent to be both valid and infringed.  The decision of Justice Beach was significant as it made it clear that claims directed to practical applications of naturally-occurring phenomena, including gene sequences, used in methods of diagnoses and prognosis are patent eligible subject matter in Australia.

The decision was appealed to the Full Federal Court (equivalent of the US Federal Circuit) where Sequenom were again successful with the decision of Justice Beach upheld on all validity and infringement grounds except one financially immaterial ground of infringement.

Mainrain Pty Ltd v. Austworld Commodities Pty Ltd & Anor Federal Court Proceeding No VID 414 of 2019

Ian led a team who successfully defended allegations against our client Austworld of breach of supply contracts, patent infringement, copyright infringement, breach of barcodes and product codes, breach of Australian Consumer Law, all relating to the manufacture and supply of plumbing stop cock valves in Australia.

Sandoz AG and Anor v Bayer Intellectual Property GmbH – Federal Court of Australia Proceeding No. VID 683 of 2021

Ian participated as part of the DCCL team that successfully prosecuted infringement proceedings on behalf of Bayer AG against Sandoz in relation to Bayer’s rivaroxaban anticoagulant (Xarelto) at first instance (Sandoz AG v Bayer Intellectual Property GmbH [2023] FCA 1321 (2 November 2023))

The same team unsuccessfully defended the appeal against the Rofe J decision that invalidated the dosage patent in suit (Sandoz AG v Bayer Intellectual Property GmbH [2024] FCAFC 135 (23 October 2024))

Regeneron Pharmaceuticals, Inc., Bayer Australia Limited and Bayer Consumer Care AG v Sandoz Pty Ltd – Federal Court Proceeding No. VID 715 of 2025

Ian is currently involved in patent proceedings as part of the DCCL team in the Federal Court of Australia relating to Eylea, a drug used to treat wet age-related macular degeneration (AMD) that is protected by a number of Regeneron and Bayer formulation, dosing and manufacturing patents.  The proceedings commenced with an application for a PI (awaiting decision) and a preliminary discovery application will be heard in September 2025.

RESOURCES INDUSTRY

Dyno Nobel Inc v Orica Explosives Technology Pty Ltd

Ian has lead a team since 2009 representing Orica, one of the world’s largest suppliers of explosives (ammonium nitrate) and electronic blasting services, in defending their mining blast technology first in a contested hearing before the Australian Patent Office.

http://www.austlii.edu.au/au/cases/cth/APO/2016/36.html

Secondly, by forcing the withdrawal of a Federal Court appeal from the above decision and thereafter defending a patent revocation proceeding and instituting a cross-claim asserting substantial infringements.  The proceeding was settled in late September 2019 after 7 days of trial with the patent in suit remaining extant.

http://www.austlii.edu.au/cgi-bin/viewdoc/au/cases/cth/FCA/2019/258.html

Ian is currently involved in patent proceedings in the Federal Court of Australia relating to 4 patents covering mining products including detonators and mining methods. The trial concluded on 1 November 2024 and the parties are awaiting judgment due June 2025.

Dyno Nobel Asia Pacific Pty Ltd v Orica Explosives Technology Pty Ltd & Ors – Federal Court of Australia Proceeding NSD 345 of 2022

Ian participated as part of the DCCL team that successfully defended the validity of four Orica patents covering mining products and methods and established infringement of 3 of those patents.  This decision is currently under appeal.

Dyno Nobel Asia Pacific Pty Ltd v Orica Explosives Technology Pty Ltd [2025] FCA 767 (14 July 2025)

POLICY AND LEGAL DEVELOPMENT CONTRIBUTIONS

Ian was Chairman of the Intellectual Property Committee of the Law Council of Australia for 5 years during which Ian contributed significantly to a large number of submissions to Intellectual Property Australia (Patent, Trade Mark and Designs Office), Law Reform Bodies including the Australian Law Reform Commission, the Productivity Commission, Government Ministries such as the Attorney General’s Department Science Technology and the Department of Foreign Affairs and Trade.

Ian continues to serve on the Intellectual Property Committee of the Law Council of Australia and has made significant contributions to the Committee’s recent submissions on Investor State Dispute Settlement (ISDS) clauses, Safe Harbor Provisions, contained in the Competition and Consumer Act and the Patents Act for Intellectual Property Agreements, and proposed further amendments to Australian law on Inventive Step, Compulsory Licensing, Crown Use and IP litigation process and practice with the latter including a recent address to the Federal Court Justices on the technologies they will likely be required to confront in the coming decade.