MERIAL LIMITED v BAYER NZ LTD [2013] NZHC 2197

MERIAL LIMITED v BAYER NZ LTD [2013] NZHC 2197

The fourth cause of action was struck out because it sought to invoke the High Court's original jurisdiction to determine entitlement, novelty and inventive step in respect of a patent application where the Patents Act provides a comprehensive statutory scheme (opposition to the Commissioner and revocation...

Source-derived case information.

Citation
[2013] NZHC 2197
Parties
First Plaintiff: Merial Limited; Second Plaintiff: Merial New Zealand Limited; First Defendant: Bayer New Zealand Limited; Second Defendant: The University of Otago
Court
High Court
Jurisdiction
New Zealand
Judgment Date
28 August 2013
Procedural Posture
Patent / Intellectual Property Civil / Interlocutory (strike Out Application); Pre Trial
Outcome
Fourth cause of action struck out; confidentiality disclosure directions made; costs awarded to first defendant
Legal Topics
Patent Entitlement, Opposition to Grant, Revocation, Breach of Confidence, Breach of Contract, Proprietary Constructive Trust, Strike Out / Abuse of Process
Intellectual Property Patents Contract Equity Civil Procedure Confidentiality Patent Entitlement Opposition to Grant +5 more

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Summary, issues, holding and outcome

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Parties

Merial Limited

First Plaintiff

Merial New Zealand Limited

Second Plaintiff

Bayer New Zealand Limited

First Defendant

The University of Otago

Second Defendant

Procedural Posture

Patent / Intellectual Property Civil / Interlocutory (strike Out Application); Pre Trial

Legal Issues

  1. 1 Whether the fourth cause of action challenging Bayer's entitlement to apply for and obtain the MRC patent applications is an abuse of process and discloses no proper cause of action because it duplicates the statutory Patents Act procedure
  2. 2 Whether the High Court should exercise original jurisdiction to determine patent entitlement, novelty and inventive step when those matters are provided for under the Patents Act (opposition and revocation procedures)
  3. 3 Whether certain confidential documents should be disclosed to Bayer executive Mr Wayne Leech given the plaintiffs' claim those documents or their contents were already imparted to Bayer

Ratio Decidendi

The fourth cause of action was struck out because it sought to invoke the High Court's original jurisdiction to determine entitlement, novelty and inventive step in respect of a patent application where the Patents Act provides a comprehensive statutory scheme (opposition to the Commissioner and revocation proceedings) for those issues; permitting the claim would be an abuse of process and a strike out is the appropriate remedy.

Court Disposition

Fourth cause of action struck out; confidentiality disclosure directions made; costs awarded to first defendant

Orders

  • Fourth cause of action struck out
  • Plaintiffs to file and serve a further amended statement of claim deleting the fourth cause of action by 13 September 2013