FEDERAL COURT OF AUSTRALIA
Novartis AG v Agvantage Pty Ltd [2012] FCA 160
Citation: Novartis AG v Agvantage Pty Ltd [2012] FCA 160 Parties: NOVARTIS AG and NOVARTIS ANIMAL HEALTH AUSTRALASIA PTY LIMITED (ACN 076 745 198) v AGVANTAGE PTY LTD (ACN 097 970 280) File number(s): NSD 135 of 2012 Judge: JAGOT J Date of judgment: 28 February 2012 Catchwords: COSTS – application for preliminary discovery – where parties made consent orders save as to costs – determination of costs Cases cited: Re Minister for Immigration and Ethnic Affairs of the Commonwealth of Australia; Ex parte Lai Qin (1997) 186 CLR 622; [1997] HCA 6 Date of hearing: 28 February 2012 Place: Sydney Division: GENERAL DIVISION Category: Catchwords Number of paragraphs: 7 Counsel for the Applicants: Mr JS Cooke Solicitor for the Applicants: Clayton Utz Counsel for the Respondent: Ms C Champion Solicitor for the Respondent: Bowen Legal
IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY
GENERAL DIVISION
NSD 135 of 2012
BETWEEN: NOVARTIS AG
First ApplicantNOVARTIS ANIMAL HEALTH AUSTRALASIA PTY LIMITED (ACN 076 745 198)
Second ApplicantAND: AGVANTAGE PTY LTD (ACN 097 970 280)
Respondent
JUDGE:
JAGOT J
DATE OF ORDER:
28 FEBRUARY 2012
WHERE MADE:
SYDNEY
BY CONSENT, THE COURT ORDERS THAT:
1.In the event that the prospective respondent decides to market in Australia a product having the active constituent dicyclanil (Dicyclanil Product), the prospective respondent shall make a sample of the final dosage formulation of the Dicyclanil Product in liquid form (Formulation) (being not less than 250ml) available to Professor Brendan Kennedy or, if he is not available at the relevant time, an expert as agreed between the parties, but at the sole expense of the prospective applicants (Nominated Expert) for the sole purpose of testing the sample of the Formulation, in order to identify the polymorph crystal form of dicyclanil used as the active constituent of the Dicyclanil Product and for the Nominated Expert to provide a written report in respect of his or her findings simultaneously to each party. A copy of the prospective applicants’ letter of instructions to the Nominated Expert shall be provided to the solicitor and counsel of the prospective respondent, on a confidential basis at the same time as it is provided to the Nominated Expert. This order is subject to:
(a)The agreement of the prospective applicants and the Nominated Expert to a confidentiality regime in the form set out in Annexure A to these orders that protects the confidentiality of the Formulation and, in particular, limits access to the Formulation and the test results to the Nominated Expert, solicitors, counsel and patent attorney retained by the prospective applicants in Australia and to Dr Christine Bohmann, Dr Bernd Liphardt and Mr Walter Oechslein of Novartis Animal Health Inc and Ms Anjali Kallianpur of Novartis Animal Health Australasia Pty Limited and the Court; and
(b)the Nominated Expert undertaking to perform the necessary test and to provide his report within…
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- Case
- [2012] FCA 160
- Decision Date
CaseChat Overview and Summary
In determining the appropriate allocation of costs, the court considered the nature of the dispute and the terms of the consent orders. The court found that the parties had agreed to bear their own costs in relation to the originating application, and as such, neither party was entitled to recover costs from the other. The court also dismissed the originating application on other grounds, finding that the application did not meet the necessary criteria for preliminary discovery.
The court's decision was based on the terms of the consent orders and the principles of cost allocation in litigation. The court held that since the parties had agreed to bear their own costs, there was no basis for one party to recover costs from the other. The court also found that the application for preliminary discovery did not meet the necessary criteria, and as such, the application was dismissed.
The final orders of the court provided that each party was to bear its own costs in relation to the originating application filed on 27 January 2012, and that the originating application was to be dismissed. The court's decision provided clarity on the issue of costs in the dispute between the parties, and resolved the remaining issue in the litigation.
Orders
Orders of the court
5. Each party is to bear its own costs in respect of the originating application filed on 27 January 2012.
6. The originating application filed on 27 January 2012 be otherwise dismissed.
Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.
Form 3
Rule 2.13(4)
Annexure "A"
Confidential Undertaking in relation to
Agvantage's Information
Federal Court of Australia
District Registry: New South Wales
Division: General
No. NSD 135 of 2012
Novartis AG and another
Prospective Applicants
Agvantage Pty Ltd (ACN 097 970 280)
Prospective Respondent
1. I, ____________________________ of ___________________________________________,
(insert name) (insert address)
give this undertaking in relation to the documents and sample contained in Schedule 1 to these confidentiality undertakings which incorporate information alleged by Agvantage Pty Ltd (Agvantage) to be confidential information (Confidential Information).
2. I hereby agree and undertake to Agvantage :
(a) not to use the Confidential Information other than for the purpose of determining whether Australian patent 743515 entitled "Dicyclanil polymorphs and hydrates and their preparation" dated 25 August 1998 (the Patent) owned by Novartis AG may be infringed by the proposed Agvantage Dicyclanil Product in Australia and/or any proceeding brought by Novartis AG and any of its subsidiaries against Agvantage for infringement of the Patent, (collectively, the Purposes); and
(b) not to disclose, discuss or otherwise distribute the Confidential Information with or to (as applicable) any person other than:
(i) the Federal Court of Australia;
(ii) legal advisors external to Novartis AG and Novartis Animal Health Australasia Pty Ltd (NAH) (which shall mean Australian solicitors and/or Australian Counsel instructed by Novartis AG and NAH, and their support staff);
(iii) any independent expert retained by Clayton Utz on behalf of Novartis AG and NAH in relation to the Purposes, who has provided a confidentiality undertaking identical or similar hereto;
(iv) Dr Christine Bohmann, Head of Intellectual Property, Animal Health, Novartis Animal Health Inc, who has provided a confidentiality undertaking identical or similar hereto;
(v) Dr Bernd Liphardt, Senior Patent Attorney, Novartis Animal Health Inc, who has provided a confidentiality undertaking identical or similar hereto;
(vi) Mr Walter Oechslein, Fellow Formulation Manager, Novartis Animal Health Inc, who has provided a confidentiality undertaking identical or similar hereto; and
(vii) Ms Anjali Kallianpur, Senior Regulatory Affairs Manager, NAH, who has provided a confidentiality undertaking identical or similar hereto;
(c) any other individuals approved by Agvantage that have provided confidentiality undertakings identical or similar hereto in relation to the Purposes;
(d) as agreed by Agvantage, and
without limitation to the provisions of this undertaking, I understand and agree not to disclose, discuss or otherwise distribute the Confidential Information with or to any other person at Novartis AG or NAH who has not provided confidentiality undertakings identical or similar hereto in relation to the Purposes;
(e) on request to return all the Confidential Information provided to me to Agvantage or its solicitors and to destroy all copies which I may have of any documents, notes or other records (including computer records) containing the Confidential Information and to confirm such destruction upon oath if requested by Agvantage; and
(f) in the event that I become aware of any use or disclosure of the Confidential Information which occurs as a result of any breach of the foregoing undertakings (a)-(e) (or any of them) to notify Agvantage immediately with full details of that use or disclosure.
3. The above undertakings do not apply to any information that I can demonstrate to the reasonable satisfaction of Agvantage:
(a) was in my possession and at my free disposal prior to the date of this undertaking;
(b) is hereafter received from a third party without any obligations of confidence;
(c) is or has become generally available to the public through no act or default on my part.
4. The obligations pursuant to this undertaking may be removed or modified only with the prior written consent of Agvantage or by order of the Court.
5. By giving this undertaking, I do not concede that the Confidential Information is confidential in equity, but nevertheless, agree to be bound by the obligations set out in this undertaking.
6. This undertaking shall be governed by Australian law and any disputes arising from this undertaking shall be referred exclusively to the Courts of Australia.
Signed: _____________________________
Dated: ______________________________
SCHEDULE 1
1. The sample of the Formulation of the Agvantage Dicyclanil Product referred to in paragraph 1 of the Orders.
2. Results of the tests conducted by the independent expert in relation to the Formulation.
Background
Background to the litigation
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Evidence
Evidence Before The Court
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Decision
Reasons for decision
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Ratio Decidendi
Legal Principle Established
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