Bayer Bioscience NV v Deltapine Australia Pty Ltd

FEDERAL COURT OF AUSTRALIA

Bayer Bioscience NV v Deltapine Australia Pty Ltd

[2006] FCA 68

PATENTS – confidentiality regime – disclosure of confidential documents to proposed witness who is competitor of applicant

EVIDENCE – expert evidence – more than one expert per discipline – cost and delay – English practice preferrable

Civil Procedure Rules (Eng) Pts 35.1, 35.4

Mobil Oil Australia Pty Ltd v Guina Developments Pty Ltd [1996] 2 VR 34 at 38 cited

BAYER BIOSCIENCE NV & ANOR v DELTAPINE AUSTRALIA PTY LTD & ANOR
NO VID 1105 OF 2003

HEEREY J
10 FEBRUARY 2006
MELBOURNE

IN THE FEDERAL COURT OF AUSTRALIA
VICTORIA DISTRICT REGISTRY	VID 1105 OF 2003

BETWEEN:

BAYER BIOSCIENCE N.V.
FIRST APPLICANT

BAYER CROPSCIENCE GmbH
SECOND APPLICANT

AND:

DELTAPINE AUSTRALIA PTY LTD (ACN 051 082 958)
FIRST RESPONDENT

DELTAPINE AUSTRALIA PTY LTD (ACN 051 082 958) CROSS-CLAIMANT

BAYER BIOSCIENCE N.V.
FIRST CROSS-RESPONDENT

BAYER CROPSCIENCE GmbH
SECOND CROSS-RESPONDENT

JUDGE:

HEEREY J

DATE:

10 FEBRUARY 2006

PLACE:

MELBOURNE

THE COURT ORDERS THAT:

The applicant bring in proposed minutes to give effect to these reasons.

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	VID 1105 OF 2003

BETWEEN:

BAYER BIOSCIENCE N.V.
FIRST APPLICANT

BAYER CROPSCIENCE GmbH
SECOND APPLICANT

AND:

DELTAPINE AUSTRALIA PTY LTD (ACN 051 082 958)
FIRST RESPONDENT

DELTAPINE AUSTRALIA PTY LTD (ACN 051 082 958) CROSS-CLAIMANT

BAYER BIOSCIENCE N.V.
FIRST CROSS-RESPONDENT

BAYER CROPSCIENCE GmbH
SECOND CROSS-RESPONDENT

JUDGE:	HEEREY J
DATE:	10 FEBRUARY 2006
PLACE:	MELBOURNE

REASONS FOR JUDGMENT

1. The applicant Bayer BioScience NV (Bayer) claims that the respondent Deltapine Australia Pty Ltd (Deltapine) has infringed Bayer’s Australian patent No 89401499 (the Patent) entitled “Prevention of Bt Resistance Development”.  Deltapine denies infringement and has cross-claimed alleging invalidity. 

2. On 3 May 2005 I made by consent orders which had the effect of establishing a confidentiality regime in relation to inspection of documents discovered by the parties.  Under this regime the parties may designate certain documents to be “confidential” or “confidential – outside counsel only”.  Documents with the latter designation may only be shown to outside counsel or an independent expert retained by the receiving party upon those persons giving undertakings not to use confidential information for any purpose other than in connection with the proceeding or to disclose such information to other persons other than as permitted by the order.  However, upon the receiving party nominating an expert for this purpose the producing party may object to disclosure.  In the event of objection, no disclosure is to be made without an order of the Court.

3. The invention the subject of the Patent relates to plant cells and plants, the genomes of which are transformed to contain at least two genes, each coding for a different non-competitively binding bacillus thuringiensis (Bt) insecticidal crystal protein (ICP) for a specific target insect species.  Bayer alleges that Deltapine’s exploitation of its Bollgard II variety of cotton, which contains Bt ICP genes coding for Cry1Ac…