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

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

The respondents were not entitled to an order requiring the applicant to proffer its preferred construction of each disputed expression in claim 1, because such an order could amount to a paraphrase or overly minute dissection of the claim. However, because the applicant accepted that its infringement case depended on the respondents' gene sequence or sequences and could state with greater particularity what about those sequences was alleged to infringe claim 1, efficient case management required the applicant to provide a statement of the facts relied on, including the basis and method of comparative measurement, with corresponding statements from the respondents thereafter.

Jurisdiction
Australia
Judgment Date
26 February 2001
Procedural Posture
Patent Infringement Proceeding / Interlocutory Motions by the Respondents for Further and Better Particulars of Infringement
Outcome
The respondents' motions were allowed in part by directing statements of facts concerning comparison of the respondents' gene sequence or sequences with claim 1 of the Second Patent, and were otherwise dismissed.
Legal Topics
['further and Better Particulars' 'particulars of Infringement' 'construction of Patent Claims' 'synthetic Insecticidal Crystal Protein Gene' 'case Management']
['intellectual Property' 'patents' 'civil Procedure'] ['further and Better Particulars' 'particulars of Infringement' 'construction of Patent Claims' 'synthetic Insecticidal Crystal Protein Gene' 'case Management']

Case Brief

Summary, issues, holding and outcome

More case intelligence is available

Unlock the full research layer for this judgment.

Full judgment text Downloadable case file Legal principles 1 Authorities cited 2 Party arguments 2 Amounts and remedies 1
Sign in to unlock

Procedural Posture

Patent Infringement Proceeding / Interlocutory Motions by the Respondents for Further and Better Particulars of Infringement

Legal Issues

  1. 1 ['Whether the applicant should be directed to provide further and better particulars of the manner in which claim 1 of Australian Patent no. 623429 is alleged to be infringed.' 'Whether the applicant should be required at this stage to identify its construction of alleged critical elements of claim 1, including expressions such as "comprising", "comprises", "codons preferred", "highly expressed plant genes", and "A+T content in nucleotide base composition substantially that found in plants".' "Whether the applicant should provide a statement of facts explaining how the respondents' gene sequence or sequences infringe claim 1, including the basis for comparative measurement."]

Ratio Decidendi

The respondents were not entitled to an order requiring the applicant to proffer its preferred construction of each disputed expression in claim 1, because such an order could amount to a paraphrase or overly minute dissection of the claim. However, because the applicant accepted that its infringement case depended on the respondents' gene sequence or sequences and could state with greater particularity what about those sequences was alleged to infringe claim 1, efficient case management required the applicant to provide a statement of the facts relied on, including the basis and method of comparative measurement, with corresponding statements from the respondents thereafter.

Court Disposition

The respondents' motions were allowed in part by directing statements of facts concerning comparison of the respondents' gene sequence or sequences with claim 1 of the Second Patent, and were otherwise dismissed.

Orders

  • ["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...