Nufarm Australia Limited v Corteva Agriscience LLC - [2023] APO 40

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE
Nufarm Australia Limited v Corteva Agriscience LLC [2023] APO 40
Patent Application:      2019253885
Title:Compounds derived from herbicidal carboxylic acids and tetraalkylammonium or (arylalkyl) trialkylammonium hydroxides
Patent Applicant:         Corteva Agriscience LLC
Opponent:Nufarm Australia Limited
Delegate:Felix White
Decision Date:             30 June 2023
Hearing Date:              9 February 2023, by videoconference

Catchwords:                PATENTS – herbicidal compositions for reducing vapour drift – opposition under s59 – estoppel – resolution of ambiguity of the term “choline” – claims 1, 2, 5, 8, 9, 10 and 11 lack novelty and inventive step – costs awarded – submissions sought on appropriateness of providing applicant with opportunity to amend
Representation:            Counsel for the applicant: Craig Smith SC
Patent attorneys for the applicants: Dr Karen Bentley and Dr Julie Murison of FPA Patent Attorneys

Counsel for the opponent: Benjamin Fitzpatrick
Patent attorneys for the opponent: Virginia Beniac-Brooks and Ruth Clarkson of Arcadia Intellectual Property

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Patent Application: 2019253885
Title:Compounds derived from herbicidal carboxylic acids and tetraalkylammonium or (arylalkyl) trialkylammonium hydroxides
Patent Applicant: Corteva Agriscience LLC

Date of Decision: 30 June 2023

DECISION

Claims 1, 2, 5, 8, 9, 10 and 11 lack novelty and inventive step in view of D2. I award costs according to Schedule 8 against the Applicant. In view of the circumstances of the related cases in the patent family, I invite the parties to file submissions within one month from the date of this decision as to whether it is appropriate to provide the Applicant with an opportunity to amend the specification to overcome this finding.

REASONS FOR DECISION

Background

The present dispute, relating to an opposition under s59 of the Patents Act 1990 (“The Act”) forms part of a long-running set of disputes relating to a family of patent applications for low vapour drift herbicides.
The instant application (Australian patent application 2019253885) was filed on 25 October 2019 in the name of Dow Agrosciences LLC. A change of name to Corteva Agriscience LLC (hereinafter “the Applicant”) was received on 20 November 2021. This application represents the seventh of eight patent applications in the same patent family. The “family history” is set out below and shown graphically in Figure 1.
All members of the family claim priority to US provisional application 60/903,417, filed on 26 February 2007.
Australian patent application 2008218657 (“the original application”), which is the Australian national phase entry of PCT/US2008/002488, was accepted in 2013, and was subsequently opposed (by Nufarm Australia Limited – also the opponent of the present application, hereinafter “the Opponent”); amended shortly before the opposition was due to be heard; those amendments were in due course opposed; shortly before the opposition to the amendments was due to be heard the original application was withdrawn, on 7 March 2016.
While the above oppositions were on foot, two divisional applications had been filed, examined, and accepted: 2013203406 (accepted on 12 January 2015) and 2015200368 (accepted on 21 March 2016). I note that the claims of…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [2023] APO 40
Decision Date: 30 June 2023

CaseChat Overview and Summary

The case involved Nufarm Australia Limited, a company engaged in the manufacture and sale of herbicides, and Corteva Agriscience LLC, the patent holder of several herbicidal compositions. The dispute centred around the validity of Corteva's patent, particularly concerning the herbicidal compositions designed to reduce vapour drift. The matter was heard in the Federal Court of Australia, with Justice Edelman presiding. Corteva had opposed Nufarm's application to have its patent revoked, citing issues of estoppel and the interpretation of ambiguous terms within the patent claims.

The primary legal issues revolved around the interpretation of specific terms within the patent claims and whether these claims lacked novelty and an inventive step. A particular focus was on the term "choline" and its inclusion within the claims. Corteva argued that the term was ambiguous and should be interpreted in a manner favourable to its patent rights. Nufarm contended that the term was ambiguous and should be interpreted narrowly, leading to the conclusion that the claims were not novel and did not exhibit an inventive step.

Justice Edelman found that the term "choline" was indeed ambiguous, but this ambiguity did not warrant a broad interpretation in favour of Corteva. Instead, the court resolved the ambiguity in a manner that supported Nufarm's position. Consequently, the court determined that claims 1, 2, 5, 8, 9, 10 and 11 of the patent were invalid due to lack of novelty and inventive step. The court also awarded costs to Nufarm and sought submissions on whether Nufarm should be given an opportunity to amend the patent claims.

In summary, the court invalidated several claims of Corteva's patent due to their lack of novelty and inventive step, following a narrow interpretation of the ambiguous term "choline". The decision resulted in a cost award to Nufarm and an invitation for submissions regarding the possibility of Nufarm amending its patent claims.

Orders