Novartis AG v Agvantage Pty Ltd [2012] FCA 160

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 Applicant

NOVARTIS ANIMAL HEALTH AUSTRALASIA PTY LIMITED (ACN 076 745 198)

Second Applicant

AND: 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 1 month of receiving the sample of the Formulation from the prospective respondent. 2. The prospective applicants, within 1 month of receipt of the Nominated Expert's report: (a) inform the prospective respondent of their intention to commence proceedings for infringement of Australian Patent No 743515 (Novartis Patent) against the prospective respondent should the prospective respondent seek to commercially exploit a product in Australia made by use of the Formulation; or (b) inform the prospective respondent that in their opinion a product made by use of the Formulation will not infringe the Novartis Patent and that accordingly no proceedings will be commenced against the prospective respondent in respect of the commercial exploitation of a product made in accordance with the Formulation. THE COURT: 3. Notes and accepts the undertaking of the prospective respondent to the Court not to advertise, offer for sale and sell a product made by use of the Formulation in Australia prior to the expiration of the one month period referred to in Order 1(b) above. 4. Subject to orders 1, 2 and 3 above, notes that notwithstanding these orders including the undertaking given by the prospective respondent in order 3 above, the prospective applicants reserve their rights to commence proceedings against the prospective respondent, including by seeking preliminary discovery, interlocutory relief including injunctive relief and/or final relief, in the event that the prospective applicants believe that: (a) The prospective respondent intends to launch a product which infringes the Novartis Patent; and/or (b) The Dicyclanil Product infringes the Novartis Patent. THE COURT ORDERS THAT: 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.