Mycogen Plant Science Inc v Monsanto Australia Ltd [2001] FCA 143 (26 February 2001)

Last Updated: 27 February 2001

FEDERAL COURT OF AUSTRALIA

Mycogen Plant Science Inc v Monsanto Australia Ltd [2001] FCA 143

INTELLECTUAL PROPERTY - Patents - whether further and better particulars of infringement should be directed

Federal Court Rules O 12, r 5

General Clutch Corporation v Sbriggs Pty Ltd (1997) 38 IPR 359 referred

NV Philips Gloeilampenfabrieken v Mirabella International Pty Ltd (1993) 26 IPR 513 referred

Abbott Laboratories v Corbridge Group Pty Ltd [2000] FCA 1713 referred

Decor Corporation Pty Ltd v Dart Industries Inc (1988) 13 IPR 385 referred

Caterpillar Inc v Sun Forward Pty Ltd (1996) 36 IPR 411 referred

Lenijamar Pty Ltd v AGC (Advances) Ltd (1990) 27 FCR 388 referred

MYCOGEN PLANT SCIENCE INC v MONSANTO AUSTRALIA LTD & ANOR

VG 746 of 1999

KENNY J

MELBOURNE

26 FEBRUARY 2001

IN THE FEDERAL COURT OF AUSTRALIA
VICTORIA DISTRICT REGISTRY	V 746 OF 1999

BETWEEN:	MYCOGEN PLANT SCIENCE, INC Applicant/Cross-Respondent
AND:	MONSANTO AUSTRALIA LIMITED (ACN 006 725 560) First Respondent/First Cross-Claimant DELTAPINE AUSTRALIA PTY LTD (ACN 051 082 958) Second Respondent/Second Cross-Claimant
JUDGE:	KENNY J
DATE OF ORDER:	26 FEBRUARY 2001
WHERE MADE:	MELBOURNE

THE COURT ORDERS THAT:

(1) On or before 30 April 2001, the applicant file and serve a statement of the facts relied on by it to show that when the respondents' gene sequence (or sequences) is (or are) compared with claim 1 of the Second Patent, infringement is shown, including an account of the basis for comparative measurement and how that measurement is made or calculated.

(2) On or before 29 June 2001, each of the respondents file and serve a statement of the facts relied on by it to show that the said gene sequence (or sequences) do not infringe claim 1 of the Second Patent, including an account of the basis for comparative measurement and how that measurement is made or calculated.

(3) The motions, notices of which are dated 27 September 2000 and 1 November 2000 respectively, be otherwise dismissed.

(4) The costs of the said motions be the respondents' costs in the cause.

Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.

IN THE FEDERAL COURT OF AUSTRALIA
VICTORIA DISTRICT REGISTRY	VG 746 OF 1999

BETWEEN:	MYCOGEN PLANT SCIENCE, INC Applicant/Cross-Respondent
AND:	MONSANTO AUSTRALIA LIMITED (ACN 006 725 560) First Respondent/First Cross-Claimant DELTAPINE AUSTRALIA PTY LTD (ACN 051 082 958) Second Respondent/Second Cross-Claimant

JUDGE:	KENNY J
DATE:	26 FEBRUARY 2001
PLACE:	MELBOURNE

REASONS FOR JUDGMENT

the applications

1 By motion, notice of which is dated 27 September 2000, the first respondent makes application for further and better particulars of "the manner in which it is to be alleged by the Applicant at the trial of this proceeding that claim 1 of Australian Patent no. 623429 (the `Second Patent') is infringed, including an identification by the Applicant of the construction of the critical elements of claim 1 for which the Applicant will contend at the trial of this proceeding". By motion, notice of which is dated 1 November 2000, the second respondent makes a like application. The two notices give further details of the particulars sought by the respondents, but I shall not set these details out since they were repeated in the respondents' contentions discussed below. The motions were supported by an affidavit sworn on 27 September 2000 by Catherine Marshall, solicitor for the first respondent, and an affidavit sworn on 1 November 2000 by Mary Padbury, solicitor for the second respondent.

the pleadings

2 In order to understand the respondents' applications, it is necessary to consider, first, the pleadings and, then, the terms of claim 1 of the Second Patent. By its statement of claim, the applicant alleges that the respondents have infringed two patents in its name and it seeks injunctive and other relief. These applications are concerned with only one of the patents, namely, the patent for an invention entitled "Synthetic Insecticidal Crystal Protein Gene". The applicant has already provided the respondents with some particulars of infringement. By way of particulars, it has said:

Subsequent to the publication of the complete specification of Australian Patent No. 623429 on 15 March 1990 but prior to the issue of the Application herein the Respondents and each of them have infringed and continue to infringe and/or threaten to infringe each of claims 1, 5, 6, 7, 8 and 12 to 15 of the complete specification of the said patent by, without the licence or authority of the Applicant:

(a) importing for the purposes of sale or supply;

(b) making or offering to make;

(c) selling and supplying and offering for sale and supply or keeping for sale and supply;

(d) using;

each of the following:

(i) a synthetic gene as claimed in each and all of claims 1, 5, 6, 7, 8 and 12 of the second patent;

(ii) a recombinant DNA cloning vector as claimed in claim 13 of the second patent; and

(iii) a plant cell as claimed in claim 14 of the second patent;

(e) using the method as claimed in claim 15 of the second patent or doing each of the acts referred to sub-paragraphs 8(a) to 8(d) (both inclusive) in respect of a product resulting from such use;

and/or threatening to engage in the conduct referred to in sub-paragraphs 8(a) to 8(d) (both inclusive).

3 In its particulars of infringement, the applicant also said that it relies on "the acts of infringement" referred to in pars 2 to 6. These paragraphs identify the acts of infringement as acts relating to "transgenic cotton of the type referred to as INGARD and described in the Public Information Sheets published by [the Genetic Manipulation Advisory Council]". The applicant concluded by saying that it is "unable before discovery and inspection ... to give precise particulars of all of the acts of infringement ...".

4 Each respondent has filed a defence and cross-claim. Amongst other things, the infringements are denied. At the applicant's request, the first respondent has provided further and better particulars of its defence and cross-claim. It appears that the second respondent has not yet done so, although nothing turns on this at present. The parties have also exchanged lists of categories of proposed discoverable documents, although the respondents say that they are still considering their position regarding the applicant's list.

the patent and claim 1

5 The respondents submit that since the applicant's particulars of infringement are very general in terms and the language of claim 1 is capable of a number of interpretations, then, in the absence of further and better particulars,

(a) [they] do not know the nature of the case which they have to meet;

(b) [they] do not know what evidence they need to collect including any consideration of experiments which might be relevant and probative;

(c) because there is no limit to the generality of the Applicant's case, [they are] susceptible to being taken by surprise at the trial.

6 In written submissions, the first respondent said:

The Second Patent relates to genetic engineering of plants to impart insect resistance through the use of a gene obtained from a naturally produced soil bacteria Bacillus thuringiensis ("Bt").

Bt contains a gene that produces a crystal protein that is toxic to certain insect pests but is not harmful to humans, animals and other insects such as bees. ...

With the development of plant genetic engineering scientists believed that if they could transfer the Bt gene into plant cells, the plant could naturally produce the toxic protein and have built-in insect protection.

As I presently understand the matter, the applicant contends that it is the innovator of a "chemically synthesized gene encoding an insecticidal protein which is functionally equivalent to a native insecticidal protein of Bt. This synthetic gene is designed to be expressed in plants at a level higher than a native Bt gene" (Second Patent, p8). The applicant's position is that it first solved the problem of how to make the Bt gene work well in plants by the invention which is the subject of the Second Patent.

7 There are fifteen claims said to define the invention. Claim 1 is in the following terms:

A synthetic gene designed to be highly expressed in plants comprising a DNA sequence encoding an insecticidal protein which is functionally equivalent to a native insecticidal protein of Bt wherein said DNA sequence comprises codons preferred by highly expressed plant genes and an A+T content in nucleotide base composition substantially that found in plants.

The respondents submit that the claim contains terms which "by reason of their ambiguity, need to be particularized in order to make clear the scope of the claim". The words or expressions said to create the need for the particulars sought are "comprising", "comprises", "codons preferred", "highly expressed plant genes", and "A+T content in nucleotide base composition substantially that found in plants".

"Comprising" and "comprises"

8 In General Clutch Corporation v Sbriggs Pty Ltd (1997) 38 IPR 359, Lindgren J noted, at 372, that the word "comprising"

can signify `consisting of', `constituted by', `made up of' or `composed of'. But it can also signify `encompassing', `containing', or `including'.

After considering books on English usage and a number of authorities, his Honour held that the word "comprising" in the expression "[a] spring clutch comprising" in a patent for "improvements in spring clutches" meant "consisting of", "constituted by", "made up of" or "composed of". Compare NV Philips Gloeilampenfabrieken v Mirabella International Pty Ltd (1993) 26 IPR 513 at 531 and contrast Abbott Laboratories v Corbridge Group Pty Ltd [2000] FCA 1713 at [7]. The respondents refer to these authorities and submit that the meaning attributed by the applicant to the words "comprising" and "comprises" in claim 1 would "critically alter" the nature of the case that they would be required to meet at trial. In written submissions, the first respondent says:

For example, if the phrase `comprises codons preferred ...' is to be read as an `inclusive' reference, not only will the scope of the claim be significantly widened, but also the evidence as to infringement will be significantly different to that which would be adduced if the basis of the Applicant's claim for infringement is that the DNA sequence `consists' of codons preferred by ....

"Codons preferred by"

9 The respondents further submit that there are at least four possible meanings to be attributed to the word "preferred" in the expression "codons preferred by" as it appears in claim 1. These meanings are "only the most preferred", "all but the least preferred", "the same distribution of frequency as" and "something approximating the distribution of frequency of". They contend that these four different constructions are open "[a]s a matter both of plain English and from teachings within the body of the specification". They refer, in particular, to the terms of Table 1 in the Second Patent at pp 42-43. They submit that the meaning attributed by the applicant to the expression "codons preferred by" would also affect the scope of the claim alleged against them. The scope of the claim would, in turn, affect the nature of the evidence that the respondents would be required to adduce as a defence to the case of infringement.

"Highly expressed plant genes"

10 In relation to the expression "highly expressed plant genes", the first respondent says in written submissions:

The issue raised by this teaching in the specification is whether the case which the Respondents have to meet is that their allegedly infringing product consists of codons `preferred' ... by highly expressed genes:

(a) in plants generally;

(b) in the host plant into which the event has been inserted;

(c) in plants of the same taxonomic group or some other meaning.

Each of these three alternatives clearly raises different measures by which infringement would have to be tested and will impact significantly upon discovery and evidence including the question of any relevant experiments.

The second respondent adopts this position too.

"A+T content in nucleotide base composition substantially that found in plants"

11 The respondents submit that it is also unclear whether the applicant is basing its case for infringement on the foundation that the integer relating to "A+T content" is descriptive of the "codons preferred by highly expressed plant genes" or is entirely additional. They further submit that the use of the word "plants" in the expression "A+T content in nucleotide base composition substantially that found in plants" raises the question whether the word "plant" is to be construed by reference to its normal meaning (the "whole plant") or in a more restricted sense. In written submissions, the first respondent observes:

[I]t is critical to know whether the applicant's case which the respondents have to meet is that the A+T content of the allegedly infringing gene is that found in all plant genomes, or those of the host, or some other group of plants, or that found in something else, for example, the coding region of all or some limited group of plants ....

12 In summary, according to the respondents, the need for further and better particulars arises from the fact that they do not know what meaning or meanings the applicant attributes to a number of the expressions within claim 1, and the applicant's case of infringement depends upon its interpretation of the claim and the expressions within it. The respondents concede that the terms of the order sought by them are unusual. The first respondent justifies its application by reference to what it terms "an extraordinarily large number of possible permutations and combinations as to what the case is that we have to meet" (tpt 31). According to the second respondent, the need for the particulars sought arises from the fact that "the complexities are so cumulative" and "give rise to a potential indeterminate scope of claim" (tpt 36).

the applicant's opposition

13 The applicant opposes the respondents' applications upon a number of bases. First, the information sought is not, it submits, properly a matter for particulars. It says that what the respondents are seeking is a paraphrase of the claim. Secondly, it submits that the provision of the information sought would not clarify the issues in dispute. It says its position might well be that there is an infringement even on some construction propounded by the respondents (or the Court). Further, the applicant submits that the difficulties foreshadowed by the respondents with respect to experimental proofs may properly be met by an application for directions under O 58, r 31 of the Federal Court Rules.

14 For present purposes, I accept that it would not be appropriate to require the applicant to proffer a paraphrase of claim 1. I accept that there may be legitimate difficulties in formulating a specific interpretation for each of the expressions said by the respondents to require elucidation. The process of interpretation which the respondents' application invites may be inappropriate because the claim is to be read as a whole and to be construed according to its terms upon ordinary principles: see Decor Corporation Pty Ltd v Dart Industries Inc (1988) 13 IPR 385 at 400 per Sheppard J. I accept, as the applicant submits, that an "overly minute dissection of the claim ... may end up producing a result which fits [the applicant] into a strait jacket" (tpt 47), and that this may be unfair.

15 At least for someone without a specialised knowledge of bacterial molecular biology, the subject matter of the Second Patent is far from straightforward. This may well be a case, as the applicant submits, in which the language of the claims is to be construed as a whole and in light of the technology with which it is concerned. Leaving aside the words "comprising" and "comprises", it may be that many of the uncertainties said by the respondents to infect claim 1 would fade away when this technology is properly explained. Further, this may be a case in which the meaning of technical words used in the claim may be qualified or defined by what is said in the body of the specification, and the evidence of persons skilled in the art may well prove significant.

16 For the reasons stated above, I reject the respondents' submission that the applicant should on this application be required to proffer its preferred construction of each of the expressions identified by the respondents as giving rise to difficulties.

17 If these were the only considerations affecting the disposition of the respondents' applications, I should not at this stage be disposed to direct further and better particulars, although I might well entertain a further application for a statement of the applicant's case pursuant to O 12, r 5(1)(b) at a later date (e.g. after the applicant's affidavit material had been filed and served) if that proved appropriate.

18 There is, however, another consideration to which I now turn. It was a part of the applicant's submissions that the only real issue in the proceeding is the respondents' gene sequence. The applicant concedes that its case of infringement depends, at this stage at least, on a sequence or sequences appearing in published data. It is not unreasonable, it seems to me, to assume that the applicant is capable of stating with greater particularity than it has hitherto done what it is about the gene sequence of the respondents' products which it says infringes claim 1 of the Second Patent. Indeed, the applicant accepts that it could be appropriate to direct that it provide a statement of the nature of the case it makes about the respondents' gene sequence. It submits, however, that any such direction should await the completion of discovery and inspection, because it would only be then that all the offending sequences would be known by it. This would, so the applicant submits, be a more efficient course, since it would avoid any need to prepare a statement while carrying out the discovery process or to amend the statement upon completion of inspection.

19 I am not persuaded that a possible need to amend means that it would be more efficient to postpone the making of any statement until the completion of the discovery process. If the applicant has legitimate concerns that a statement of its case would improperly limit the discovery to be made by the respondents, those concerns are answered in large part by the fact that the respondents have already disclosed the seeds for transgenic INGARD cotton that have been made in Australia. The sequences for these seeds would, so the first respondent accepts, properly be the subject of discovery and inspection. Further, as the first respondent notes, there is a large body of material available to the applicant by virtue of its own and the first respondent's involvement in infringement proceedings in the United States of America. If, as a result of discovery, the applicant were to be made aware of other sequences infringing claim 1, then it could amend the statement of its case, providing it did so in a timely way. The case management practices in this Court contemplate that the nature of any case be identified clearly and precisely as early in a proceeding as is reasonably practicable: cf Caterpillar Inc v Sun Forward Pty Ltd (1996) 36 IPR 411 at 413 citing Lenijamar Pty Ltd v AGC (Advances) Ltd (1990) 27 FCR 388 at 394-5. Of course, I accept, as the second respondent observes, that it would be wrong to construe a claim by reference to an alleged infringement. This is not what is intended by granting part only of the respondents' application. The object of the orders proposed below is to identify as far as reasonably practicable at this stage the cases the parties are to meet at trial in order that their pre-trial preparation might be efficiently performed.

20 The applicant disputes that any statement of its case should include a statement of what the first respondent's counsel called "reference points" on the basis that this is not the language of claim 1. It is plain enough, however, what counsel intends by the expression "references points". They mean the thing, value, standard etc used as a basis for comparative measurement. For its statement to be useful, the applicant must provide some account (whether by words or diagram) of what it says is the basis for measuring the respondents' gene sequence against claim 1. For the reasons stated, the orders I propose are:

(1) within 28 days the applicant file and serve a statement of the facts relied on by it to show that when the respondents' gene sequence (or sequences) is (or are) compared with claim 1 of the Second Patent, infringement is shown, including an account of the basis for comparative measurement and how that measurement is made or calculated.

(2) within 28 days of the receipt of the applicant's statement, each of the respondents file and serve a statement of the facts relied on by it to show that the said gene sequence (or sequences) do not infringe claim 1 of the Second Patent, including an account of the basis for comparative measurement and how that measurement is made or calculated.

The parties will have an opportunity to be heard further upon the question whether the 28 day period proposed by me is a practicable one and upon the question of costs.

I certify that the preceding twenty (20) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Kenny.

Associate:

Dated: 26 February 2001

Counsel for the Applicant and Cross-Respondent:	Dr J Emmerson QC with Mr B Caine
Solicitor for the Applicant and Cross-Respondent:	Phillips Ormonde and Fitzpatrick Lawyers
Counsel for the First Respondent and First Cross-Claimant:	Mr D Shavin QC with Ms K Howard
Solicitor for the First Respondent and First Cross-Claimant:	Clayton Utz
Counsel for the Second Respondent and Second Cross-Claimant:	Dr A Bennett SC
Solicitor for the Second Respondent and Second Cross-Claimant:	Blake Dawson Waldron
Date of Hearing:	15 February 2001
Date of Judgment:	26 February 2001