Mycogen Plant Science Inc v Monsanto Australia Ltd

procedural background 7 The respondents have each filed a defence and cross-claim. Amongst other things, the respondents deny the alleged infringements and assert that the patents are invalid. At the applicant's request, the first respondent provided further and better particulars of its defence and cross-claim by a document dated 12 September 2000. 8 The applicant's statement of claim was accompanied by a document entitled "Particulars of Infringement", which included some particulars of the allegation that the respondents had infringed the Second Patent. By notices of motion dated 27 September 2000 and 1 November 2000, the respondents subsequently sought further and better particulars of "the manner in which it is to be alleged by the Applicant at the trial of this proceeding that claim 1 of [the Second Patent] is infringed, including an identification by the Applicant of the construction of the critical elements of claim 1 …". 9 At the hearing of the motions, the applicant contended that it was the innovator of a "chemically synthesized gene encoding an insecticidal protein which is functionally equivalent to a native insecticidal protein of Bt [Bacillus thuringiensis]. This synthetic gene is designed to be expressed in plants at a level higher than a native Bt gene" (Second Patent, p 8): see Mycogen Plant Science Inc v Monsanto Australia Ltd [2001] FCA 143 at [6]. On that occasion, the respondents submitted that claim 1, which was one of the fifteen claims said to define the invention which was the subject of the Second Patent, contained terms which "by reason of their ambiguity, need to be particularised in order to make clear the scope of the claim": [2001] FCA 143 at [7]. Claim 1 is in the following terms: A synthetic gene designed to be highly expressed in plants comprising a DNA sequence encoding an insecticidal protein which is functionally equivalent to a native insecticidal protein of Bt wherein said DNA sequence comprises codons preferred by highly expressed plant genes and an A+T content in nucleotide base composition substantially that found in plants. 10 Simply put, a consequence of the respondents' case was that, if the Court were to find that the respondents' gene sequence did not infringe claim 1 of the Second Patent, it would also find that the respondents' gene sequence did not infringe the remaining claims of the Second Patent, since they were dependent on claim 1. 11 Following the hearing of the motions, I made orders on 26 February 2001, including the following: (1) 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 measurement is made or calculated. (2) On or before 29 June 2001, each of the respondents file and serve a statement of the facts relied on by it to show that the said gene sequence (or sequences) do not infringe claim 1 of the Second Patent, including an account of the basis for comparative measurement and how that measurement is made or calculated. 12 Before making these orders, I said, at [18]-[19]: It is not unreasonable, it seems to me, to assume that the applicant is capable of stating with greater particularity than it has hitherto done what it is about the gene sequence of the respondents' products which it says infringes claim 1 of the Second Patent. Indeed, the applicant accepts that it could be appropriate to direct that it provide a statement of the nature of the case it makes about the respondents' gene sequence. It submits, however, that any such direction should await the completion of discovery and inspection, because it would only be then that all the offending sequences would be known by it. This would, so the applicant submits, be a more efficient course, since it would avoid any need to prepare a statement while carrying out the discovery process or to amend the statement upon completion of inspection. I am not persuaded that a possible need to amend means that it would be more efficient to postpone the making of any statement until the completion of the discovery process. If the applicant has legitimate concerns that a statement of its case would improperly limit the discovery to be made by the respondents, those concerns are answered in large part by the fact that the respondents have already disclosed the seeds for a transgenic ingard cotton that have been made in Australia. The sequences for these seeds would, so the first respondent accepts, properly be the subject of discovery and inspection. Further, as the first respondent notes, there is a large body of material available to the applicant by virtue of its own and the first respondent's involvement in infringement proceedings in the United States of America. If, as a result of discovery, the applicant were to be made aware of other sequences infringing claim 1, then it could amend the statement of its case, providing it did so in a timely way. On 30 April 2001, the applicant filed a "Statement of Facts" ("the Statement of Facts"), as it had been required to do. 13 The basis of the present motion is succinctly stated in the affidavit of Ms Marshall as follows: As a result of my consideration of the Statement [of Facts], and after obtaining the advice of the Counsel retained on behalf of the First Respondent in these proceedings and an independent expert, I have reached the conclusion that the facts referred to in the Statement [of Facts], even if proven by the Applicant (which is not admitted), are not sufficient to establish that the Respondents' gene sequence infringes claim 1 of [the Second Patent] and do not otherwise satisfy the terms of paragraph 1 of the [26 February 2001] orders for the reasons set forth in the affidavit of Joachim Messing sworn herein.

matters for consideration 14 In order to dispose of the motion, it is necessary to consider the following: (a) the Statement of Facts; (b) whether, as asserted by the first respondent, the facts contained in the Statement of Facts, even if proved by the applicant, are insufficient to establish that the respondents' gene sequence infringes claim 1 of the Second Patent and do not otherwise satisfy paragraph 1 of the orders made on 26 February 2001; and (c) whether, if that be so, the Court ought to exercise its discretion pursuant to Order 20, rule 2 of the Federal Court Rules ("the Rules") to make orders of the nature sought by the first respondent. The Statement of Facts 15 Given the complexity of the science underlying the Second Patent, it is useful to set out the Statement of Facts in some detail. The Statement of Facts provides as follows: 1. The [respondents' gene] is based on a fused gene made up of a portion of a native cry1A(b) gene from nucleotides 1 to 1398, and a native cry1A(c) gene from nucleotides 1399 to 3534 ('the native gene'). The applicant understands that the gene sequence of the native gene is as set out in schedule 1 hereto. The native gene encodes an insecticidal protein. 2. The respondents' gene is a synthetic gene in the sense explained on page 14 of Australian patent specification 623429. It encodes an insecticidal protein which is identical or substantially identical with the protein encoded by the native gene. It follows that it is functionally equivalent thereto in the sense explained on page 16 of the patent specification. 3. However, the respondents' gene itself is not the same as the native gene. Modifications have been made to the native gene which alter the codons used without altering the amino acids encoded by these codons. … [F]or many amino acids two or more codons encode the same amino acid. … . 4. … 5. It is clear from a comparison of the respondents' gene sequence with the gene sequence of the native gene that at many points in the gene the codons used have been changed, although the amino acids for which they code have not been changed (or have not been changed substantially). 6. The frequency of usage of a particular codon expressing a particular amino acid in a gene is obtained by counting the number of times in that gene that the particular codon is used for that amino acid and dividing the result by the total number of codons coding for that amino acid. … [S]ome codons are used more commonly than other codons. Thus, for genes of a particular plant cell or particular plant, it will be found that some codons are used more often than other codons encoding the same amino acid. 7. The average frequency of usage of particular codons for encoding each amino acid in highly expressed plant genes of dicotyledonous ('dicot') plants is set out in the [Second Patent]. … This gives a measure of the frequency of usage of individual codons in highly expressed plant genes of dicot plants. 8. The respondents' gene is designed to be used in cotton which is a dicot plant. 9. [The attached schedule lists] … for each amino acid the codons that can code for that amino acid and the number of times each codon is in fact used in the native gene. For each amino acid, the proportion of times that each codon is used in the native gene is calculated [and set out in the schedule]. 10. When a comparison is made between the proportion of times in which each particular codon is used for coding a particular amino acid in dicot genes generally … and in the native gene … very marked differences [are found]. Hence the codons more commonly found in highly expressed genes in dicot plants are different from the codons more commonly found in the native gene. 11. If a comparison is made between the frequency of codon usage in the native gene and the frequency of codon usage in dicot plants, it is found that where the usage rate of a particular codon is higher in dicot plants than in the native gene then the usage is also higher in the respondents' gene than in the native gene. The only exceptions occur where the usage rate is very low in both the native gene and in dicot plants and remains very low in the respondents' gene. 12. [The attached schedule also sets out] for each amino acid in the respondents' gene the number of times that each codon is used for coding thatamino acid [and] the proportion of times that each codon is used for coding that amino acid. This makes it possible to determine for each amino acid which codon is more commonly used or (in the case of amino acids for which there are more than two codons) which group of codons is more commonly used in dicot plants. When a comparison is made between the frequency of usage of particular codons for particular amino acids as between the native gene and the respondents' gene, it is generally found that the usage of the codons or groups of codons identified in this way is increased. 13. The A+T content of each gene can be determined by summing the number of A+T nucleotides in the gene and dividing by the total number of nucleotides in that gene. Similarly, it is possible to work out the A+T content in plants by a method analogous to that described above in the context of codon frequency. 14. In the case of the respondents' gene the A+T content can be worked out either by counting individual nucleotides in the respondents'gene … or by using the proportions … . Similarly, the A+T content in the native gene can be worked out using the information [in the schedule]. 15. When this exercise is carried out it is found that in the native gene the A+T content is higher than that found in plants. However, the A+T content of the respondents' gene has been reduced by the changes made … . As a result of that reduction, the respondents' gene has an A+T content substantially that found in plants. First Respondent's submissions on the motion 16 In written submissions, the first respondent contended that: (a) the Statement of Facts does not on its face disclose facts which can establish infringement by the First Respondent's gene of Claim 1 of the second patent when properly construed (see the Affidavit of Professor Messing sworn 5 June 2001 and filed herein); (b) in any event, the Affidavit of Dr Cardineau (assuming it has been sworn) does not support, by evidence, the facts asserted in the Statement of Facts; and (c) even if taken as an independent statement of the Applicant's case, the Affidavit of Dr Cardineau does not establish facts which, if accepted as true for the purpose of the First Respondent's Motion, demonstrate an arguable case for infringement by the First Respondent's gene of Claim 1 of the second patent as properly construed. 17 In his affidavit, Professor Messing (upon whose evidence the first respondent relied) expressed the view (at pars 14 to 20) that, to a person skilled in the art, the phrase "functionally equivalent to a native insecticidal protein of Bt" required "a comparison between the protein encoded by the First Respondent's synthetic gene and an insecticidal protein of Bt, which occurs in nature". Professor Messing observed, at pars 18 to 20, that: In paragraph 1 of the Statement [of Facts], the Applicant has defined as a 'native gene' (the 'native gene') a fused gene comprising a portion of a native cry1A(b) gene and a portion of a native cry1A(c) gene. This is not a native gene. It is 'man made' or recombinant gene comprised of two bacterial genes, that is, a chimeric gene. It will not encode for a native insecticidal protein of Bt. It will encode for a chimeric protein. The comparison which is undertaken in paragraphs 1, 2 and 3 of the Statement [of Facts], is a comparison between the First Respondent's gene and the recombinant gene defined by the Applicant as a 'native gene'. The recombinant gene will not encode a protein, which occurs in nature. Thus, although such a protein may itself be functionally equivalent (as that term is defined on page 16 of the specification of the second patent (the 'Specification')) to a native insecticidal protein of Bt, it will not be a native insecticidal protein of Bt. Thus, the facts described in paragraphs 1, 2 and 3 do not create a foundation for the comparison required in this first element of claim 1 because the Applicant does not compare the insecticidal protein encoded by the First Respondent's gene with a native insecticidal protein. What the Applicant does is compare the protein encoded by the First Respondent's gene with a chimeric protein. There is nothing in the second patent suggesting to a skilled person that this is the comparison to be undertaken in the context of claim 1. 18 Following a discussion of the element "codons preferred by highly expressed plant genes" (at pars 21 to 39), Professor Messing deposed (at par 40): In my opinion, at that priority date, I would have understood, and I believe that persons skilled in the art generally would have understood, this phrase in claim 1 of the second patent as meaning that an objective assessment had to be made of those codons 'preferred' by the First Respondent's gene and those 'preferred' by 'highly expressed plant genes'. Professor Messing concluded that an assessment of codon usage in the 'native' gene was irrelevant to an assessment of whether the first respondent's gene "comprised codons preferred by highly expressed plant genes", and that the comparison undertaken in the Statement of Facts (at pars 5 to 12) was therefore beside the point. 19 In considering what was said in pars 13 to 15 of the Statement of Facts to support the claim that the first respondent's synthetic gene comprises "an A+T content in nucleotide base composition substantially that found in plants", Professor Messing observed, at pars 46 and 47: Paragraph 13 of the Statement, in its first sentence suggests that the A+T content of each gene can be determined by 'summing the number of A+T nucleotides in the gene and dividing by the total number of nucleotides in that gene'. However the Applicant has not stated the A+T content notwithstanding that the determination of this number must be very important in the context of this element of claim 1. The second sentence is to a quite different effect. It states that 'similarly, it is possible to work out the A+T content in plants by a method analogous to that described above in the context of codon frequencies.' I cannot understand what is meant by this sentence. There is no information in Table 1 in the Specification as to A+T content, nor is there is any information in that table by reference to how the A+T content is calculated analogous to codon frequency. There is no statement in the Specification as to precisely what is said to be the A+T content of 'plants'. There is not information in Schedule 2 to the Statement of the A+T content of dicot plants or any other type of plant. Furthermore, neither the methodology contained in paragraphs 1 to 12 of the Statement nor the information in the Schedules provides any suggestion to me as to how the A+T content in plants, whatever meaning is given to the word 'plants', is to be calculated or ascertained. If a precise measurement had to be undertaken, I would have to know the sequence of an entire plant genome. So far only one plant genome is nearly completely sequenced. Professor Messing concluded, at par 56, that the Statement of Facts did not disclose the A+T content in plants nor did it provide a method by which the A+T content in plants could be calculated. 20 Relying on Professor Messing, the first respondent submitted that, for the reasons advanced by him, the applicant had failed to state the facts in its Statement of Facts which, if established at trial, would show that the first respondent's gene infringed claim 1 of the Second Patent. In oral argument, the first respondent relied particularly on what it urged were the obtuse terms of pars 12 and 13 of the Statement of Facts. The first respondent submitted that since the Court had the advantage of sworn expert evidence "as to the special meaning (if any) to skilled addressees of the words of claim 1", then it was in as good a position as it would be at trial to determine whether the applicant had an arguable case of infringement of claim 1 of the Second Patent. 21 In opposing the first respondent's motion, the applicant relied of the evidence of Dr Cardineau, who adopted a different approach to Professor Messing. In his affidavit, at pars 5 to 10, Dr Cardineau noted that, in a "Petition for determination of non-regulated status" lodged by the first respondent with the United States Department of Agriculture, the first respondent claimed that its genes (Bollgard and Ingard) are synthetic gene designed to be highly expressed in plants. According to Dr Cardineau, at pars 6 and 9, the first respondent's Bollgard gene encoded an insecticidal protein and could be regarded as Cry1A(c), notwithstanding that it is made up of parts of two different genes (Cry1A(b) and Cry1A(c)). The Ingard gene is almost identical to the Bollgard gene. At par 10, Dr Cardineau expressed the view that: [T]he Bollgard gene and the Ingard gene are each a 'synthetic gene designed to be highly expressed in plants comprising a DNA sequence encoding an insecticidal protein which is functionally equivalent to a native insecticidal protein of Bt'. 22 At pars 12 to 21 of his affidavit, Dr Cardineau deposed to his reasons for believing that the respondent's gene had "a DNA sequence which comprises codons preferred by highly expressed plant genes". Amongst other things, Dr Cardineau observed, at par 21: I refer to paragraph 32 of the Messing affidavit, in which Professor Messing says that the requirement in claim 1 is that the codon usage in the first respondent's gene is plant like. The basis for this view is not given and the Specification does not use such language. As stated above, I believe that the claim requires that the synthetic gene sequence have replacement codons which improve the frequency of codon usage with regard to the intended host. The statement explains the basis on which it is said that in this case the first Respondent's gene has those codons and therefore meets the requirement of the claim. 23 Dr Cardineau deposed, at par 22, that the claim, as he read it, "requires the synthetic gene to have a DNA sequence which has an A+T content substantially that found in plants". At pars 25 to 35 of his affidavit, he set out his reasons for believing why this integer is present in the first respondent's gene. In particular, he stated, at pars 22 and 23: The A+T value of the first Respondent's gene is 50.64%. This is calculated by adding the number of 'A' nucleotides to the number of 'T' nucleotides, dividing that by the total number of nucleotides (A+T+C+G) and multiplying by 100. The calculation of this is a simple matter and I would have expected it would have been apparent to anyone how to calculate it. In my view, this is a value that is substantially that found in plants. I refer to paragraphs 42 to 56 of the Messing Affidavit. I disagree with the statement at paragraph 45 that a person skilled in the art would understand "an A+T content in nucleotide base composition substantially that found in plants" in the context to mean the entire plant genome, including non-coding regions. The invention in this case is concerned with modifications made to the coding region of Bt toxin to be expressed in plants and their relationship to natural plant genes coding for plant proteins. … . 24 After disagreeing with Professor Messing's understanding of the expression "an A+T content in a nucleotide base composition substantially that found in plants", Dr Cardineau deposed, at par 33, that: I believe that a person skilled in the art would have appreciated that the A+T content of the coding regions of different plant genes is not a fixed number but ranges. I believe this was known as of the publication date of the Specification and is known now. The first respondent submitted that Dr Cardineau's approach was both internally inconsistent and inconsistent with the Statement of Facts. It also contended that his analysis contravened the well-accepted rules for construing patents. It may be accepted that the question of construction of a patent specification is a matter for the Court: see, e.g., British Dynamite Company v Krebs (1896) 13 RPC 190 at 192. For present purposes, it suffices to note Sheppard J's summary of a number of the rules of construction in Décor Corporation Pty Ltd v Dart Industries Inc (1988) 13 IPR 385 at 400, which was in the following terms: (1) The claims define the invention which is the subject of the patent. These must be construed according to their terms upon ordinary principles. Any purely or verbal grammatical question that can be answered according to ordinary rules for the construction of written documents is to be resolved accordingly. (2) It is not legitimate to confine the scope of the claims by reference to limitations which may be found in the body of the specification but are not expressly or by proper inference reproduced in the claims themselves. To put it another way, it is not legitimate to narrow or expand the boundaries of monopoly as fixed by the words of a claim by adding to those words glosses drawn from other parts of the specification. (3) Nevertheless, in approaching the task of construction, one must read the specification as a whole. (4) In some cases the meaning of the words used in the claims may be qualified or defined by what is said in the body of the specification. (5) If a claim be clear, it is not to be made obscure because obscurities can be found in particular sentences in other parts of the document. But if an expression is not clear or is ambiguous, it is permissible to resort to the body of the specification to define or clarify the meaning of words used in the claim. (6) A patent specification should be give a purposive construction rather than a purely literal one. (7) In construing the specification, the Court is not construing a written instrument operating inter partes, but a public instrument which must define a monopoly in such a way that it is not reasonably capable of being misunderstood. (8) The body, apart from the preamble, is there to instruct those skilled in the art concerned in the carrying out of the invention; provided it is comprehensible to, and does not mislead, a skilled reader, the language used is seldom of importance. (9) Nevertheless, the claims, since they define the monopoly, will be scrutinised with as much care as is used in construing other documents defining a legal right. (10)If it is impossible to ascertain what the invention is from a fair reading of the specification as a whole, it will be invalid. But the specification must be construed in the light of the common knowledge in the art before the priority date. See also Flexible Steel Lacing Company v Beltreco Ltd (2000) 49 IPR 331 at 347-350 per Hely J, and Welcome Real-Time SA v Catuity Inc [2001] FCA 445 at [19] per Heerey J. The first respondent contended, amongst other things, that Dr Cardineau's approach offended the rules set out in pars (2), (5) and (7) above. The applicant, on the other hand, pointed to pars (3), (4), (6) and (10) of Sheppard J's summary. 25 Further, the first respondent contended that Dr Cardineau's approach represented an illegitimate attempt to construe claim 1 by reference to the alleged infringement: see Nobel's Explosives Company Limited v Anderson (1894) 11 RPC 519 at 523. Finally, referring to Rehm Pty Ltd v Websters Security Systems (International) Pty Ltd (1988) 81 ALR 79 at 89, counsel for the first respondent submitted: [I]t [is] quite clear that what Dr Cardineau has done has been to identify the object of the investigation, the purpose of the invention, he goes to the preferred embodiment, he identifies a narrow use of a specific table and specific dicots in the preferred embodiment. He notes that they're not univiersal. He notes that the values will change, but he uses that as his point of reference. But even then he has a bit each way because in paragraph 18 he looks for infringement by using the plant genes in the taxonomic group, dicots, and in paragraph 21 without any explanation he goes to the host. Applicant's submissions in opposing the motion 26 In its written outline of argument, the applicant submitted (and I accept) that the issue on infringement will be whether the first respondent has taken each essential integer of one or more of the claims in the Second Patent: cf Populin v HB Nominees Pty Ltd (1982) 41 ALR 471 at 475-477. The applicant submitted that the first respondent's motion should fail since the first respondent had failed (a) to identify one or more integers which it says that the applicant at trial cannot possibly prove to have been taken and to state with precision the basis of that assertion; and (b) to supply a Statement of Facts relied on by it to show that its gene sequence (or sequences) do not infringe claim 1 of the Second Patent, including an account of the basis for comparative measurement and how that measurement is made or calculated. 27 According to the applicant, the first respondent had "approached the motion as if it were a mini-trial". This was, so the applicant submitted, "a wholly inappropriate approach to a motion of this kind and one calculated to work injustice to the applicant". In its written submissions, the applicant contended: The applicant should be informed of the precise ground or grounds on which its case on infringement is said to be untenable. It should not have to sift through and deal with such a wide variety of assertions and argument. … . Furthermore, the argument presented by the first respondent touches on a wide variety of technical matters. The court has not had technical instruction on these matters. Nor has there been any chance to elucidate technical matters by presentation of all the evidence which would be adduced at the trial and through cross-examination of expert witnesses. The first respondent relies on authorities in support of the proposition that summary judgment may be given notwithstanding that extensive argument may be necessary and analysis considered for a conclusion to be reached. However, the cases in which this has been said have been in the context where a clearly defined issue has been fairly presented to the opposing party before argument took place. It has not been in the context of a multiplicity of assertions and argument as in the present case. [I]t is submitted that the first respondent has provided a wholly inappropriate basis (both as to evidence and as to argument) for the drastic relief sought by its notice of motion. It would be inappropriate for the court to embark on a detailed analysis of a multitude of points sought to be raised. Alternatively, and in any event, the first respondent has not established that the applicant's case is a hopeless one in respect of any of the integers of the main claim of the second patent. … . Consideration of the parties' submissions 28 The first respondent applied for summary dismissal of the claims for relief concerning the Second Patent pursuant to O 20 r 2(1)(a) of the Rules. The principles relating to applications for summary dismissal are well established. For such an application to succeed, it must be very clear indeed that there is no issue that merits a hearing in relation to the relief sought: see Dey v Victorian Railways Commissioners (1949) 78 CLR 62 ("Dey") at 91; General Steel Industries Inc v Commissioner for Railways (NSW) (1964) 112 CLR 125 ("General Steel") at 129; Fancourt v Mercantile Credits Ltd (1983) 154 CLR 87 at 93; Webster v Lampard (1993) 177 CLR 598 ("Webster v Lampard") at 602-3; and Fejo v Northern Territory of Australia (1998) 195 CLR 96 at 122. In Dey at 91, Dixon J said: A case must be very clear indeed to justify the summary intervention of the court to prevent a plaintiff submitting his case for determination in the appointed manner by the court with or without a jury. The fact that a transaction is intricate may not disentitle the court to examine a cause of action alleged to grow out of it for the purpose of seeing whether the proceeding amounts to an abuse of process or is vexatious. But once it appears that there is a real question to be determined whether of fact or law and that the rights of the parties depend upon it, then it is not competent for the court to dismiss the action as frivolous and vexatious and an abuse of process. 29 In General Steel, Barwick CJ observed, at 129, that: [The] cases uniformly adhere to the view that the plaintiff ought not to be denied access to the customarily tribunal which deals with actions of the kind he brings, unless his lack of a cause of action - if that be the ground on which the court is invited, as in this case, to exercise its power of summary dismissal - is clearly demonstrated. The test to be applied has been variously expressed; 'so obviously untenable that it cannot possibly succeed'; 'manifestly groundless'; 'so manifestly faulty that it does not admit of argument'; 'discloses a case which the Court is satisfied cannot succeed'; 'under no possibility can there be a good cause of action'; 'be manifest that to allow them' (the pleadings) 'to stand would involve useless expense'. … As I have said, some of these expressions occur in cases in which the inherent jurisdiction was invoked and others in cases founded on statutory rules of court but although the material available to the court in either type of case may be different the need for exceptional caution in exercising the power whether it be inherent or under statutory rules is the same. 30 The Chief Justice added, at 130: [I]n my opinion great care must be exercised to ensure that under the guise of achieving expeditious finality a plaintiff is not improperly deprived of his opportunity for the trial of his case by the appointed tribunal. On the other hand, I do not think that the exercise of the jurisdiction should be reserved for those cases where argument is unnecessary to evoke the futility of the plaintiff's claim. Argument, perhaps even of an extensive kind, may be necessary to demonstrate that the case of the plaintiff is so clearly untenable that it cannot possibly succeed. 31 First, I reject the first respondent's submission that there is clearly no issue concerning the alleged infringement of the Second Patent by it that merits a hearing. For present purposes, it is sufficient to observe that documents apparently emanating from the first respondent indicate that its genes are synthetic genes designed to be highly expressed in plants and at least two of them (namely, the Bollgard and the Ingard genes) encode insecticidal protein classified as Cry1A(c). Dr Cardineau's evidence leaves open the possibility that differences between the insecticidal protein encoded by the first respondent's synthetic gene and the native insecticidal protein of Bt are minor, and do not affect the insecticidal activity of the protein. 32 Further, I note that, on the hearing of the motion, counsel for the applicant defended the comparison undertaken in pars 1, 2 and 3 of the Statement of Facts in the following terms: It is not a recombinant gene at all. It's two bits of native gene joined together, and the context in which we're using the word 'recombinant' in this case is where you're making major changes. The question is, is there here a really major change? The evidence of Dr Cardineau is that we're talking about two extremely similar things which in practical terms code for substantially the same protein. … What is important is not whether you attach the word 'native' or not, but what's actually happening here. You start with something which is two bits, each of which occurs in nature, stuck together. They then make a very large number of changes in the coding sequence, and the question is whether the gene that's produced at the end of that very large number of changes in coding sequence is a gene which infringes my client's patent. That's what it's about, and it's quite wrong to mentally bracket the respondent's starting point with their end point. One simply leads to the other, but by very major changes. If you then return again to the claims, you've got to have a DNA sequence encoding insecticidal protein which is functionally equivalent to a native insecticidal protein. 33 Whether or not the applicant will establish that it is entitled to make the comparison set out in its Statement of Facts may depend upon the expert evidence led at trial. The objections taken by the first respondent are matters that might appropriately be investigated in cross-examination of the applicant's witnesses. The first respondent has failed to satisfy me that the applicant will be unable to prove at trial that the first respondent's gene sequence encodes a protein that is functionally equivalent to a native insecticidal protein of Bt, as does the applicant's. 34 Further, given Dr Cardineau's evidence, I am not persuaded that the first respondent has established that the applicant will be unable to show that the integer (wherein the DNA sequence comprises codons preferred by highly expressed plant genes) is in the respondent's gene. In particular, I am not satisfied that the applicant's case at this point depends on the misapplication of the pertinent rules of patent construction. At trial, the parties may well contest the use that may be made for this purpose of the body of the specification, but this contest should proceed in the context of the evidence to be adduced at trial. The court needs to be appraised of the relevant technology and the state of common knowledge in the art at the relevant time, in order to understand the parties' competing submissions. In summary, whether this integer is in the first respondent's gene is a matter appropriate for full investigation in light of expert evidence adduced at trial. 35 Finally, given Dr Cardineau's evidence, I am not persuaded that the first respondent has established that the applicant will be unable to show that the integer (A+T content in nucleotide base composition substantially that found in plants) is not present in the first respondent's gene. Dr Cardineau's evidence establishes that the value of 50.64, which is the A+T content of the first respondent's gene, is substantially one found in plants. It is true that Professor Messing deposes that the value for plants will be different if non-coding regions such as introns and regulatory regions are included. It is, however, impossible to determine whether, as the applicant contends, Professor Messing's interpretation is perverse, without a full hearing on the technical issues and an appropriate opportunity for cross-examination. 36 An application for summary dismissal may succeed, even though it involves the determination of a complex issue. In such a case, however, the critical issue will be clearly defined, and the opposing party will be on clear notice of the point that is said to be fatal. In Dey, for example, the critical issue which arose and which was clearly defined was whether an award made by the Workers' Compensation Board in respect of a man's death constituted compensation which precluded an action by his widow and children under Part III of the Wrongs Act 1928 (Vic). As the applicant's counsel fairly observed, on the present application, no issue of such clarity has been defined by the first respondent. Rather, the first respondent has required the applicant to meet a number of diverse submissions concerning the apparent weakness of its case. 37 Having regard to the principles relating to applications for summary dismissal, the first respondent's application must fail. As the High Court said in Webster v Lampard at 603, after referring to the passage from Dixon J's judgment in Dey set out above, Nowhere is that need for exceptional caution more important than in a case where the ultimate outcome turns upon the resolution of some disputed issue or issues of fact. 38 Whilst differences between the system that prevails in this court and elsewhere must be borne in mind, the observations of courts in England that applications for summary dismissal ought not be the occasion for mini-trials conform to principles adopted by Australian courts. In Wenlock v Moloney [1965] 1 WLR 1238 at 1244, Danckwerts LJ said: [T]his summary jurisdiction of the court was never intended to be exercised by a minute and protracted examination of the documents and facts of the case, in order to see whether the plaintiff really has a cause of action. To do that is to usurp the position of the trial judge, and to produce a trial of the case in chambers, on affidavits only, without discovery and without oral evidence tested by cross-examination in the ordinary way. This seems to me to be an abuse of the inherent power of the Court and not a proper exercise of that power. This passage was cited with approval by the Full Court of this Court in Australian Building Industries Pty Ltd v Stramit Corporation Ltd [1997] FCA 1318, at p 27. 39 The first respondent referred to the fact that it had indicated that Professor Messing would be made available for cross-examination at the hearing of the motion if the applicant so wished. As counsel for the applicant pointed out, however, cross-examination of a deponent of an affidavit relied upon for the purposes of a summary dismissal application may produce difficulties of the kind referred to by Megarry J in Sullivan v Henderson [1973] 1 All ER 49 at 51. In this case, it seems to me that the applicant rightly declined the first respondent's invitation. Given the complexities of the science involved in this case, the Court should be fully informed by appropriate expert evidence from both sides of all relevant matters, and opportunity for full argument should be given to all the parties' legal representatives. 40 Having regard to the matters already mentioned, I accept that, notwithstanding what might now be seen as deficiencies in the applicant's case, the applicant should not be deprived of the benefit of discovery, cross-examination and further affidavit evidence. Equally, I accept that the Court ought not to resolve the matters arising in this proceeding finally until it is properly instructed in the relevant technical matters, by presentation of evidence at trial and cross-examination. Accordingly, I would reject the first respondent's application for summary dismissal of the proceeding. 41 A further question arises as to whether the respondents should be relieved of the obligation, arising under my previous order, to file and serve a Statement of Facts to like effect as that already filed by the applicant. The Statement of Facts filed by the applicant is a summary of the ultimate facts (stated at a most generalised level) upon which the applicant relies. Although the Statement of Facts conforms to my order, it is apparent that, by reason of the generality of the Statement's terms, there are a number of possibly critical matters that remain ill-defined by the applicant. It was for this reason principally that counsel for the first respondent submitted that the first respondent was unable to make a useful statement in answer to the applicant's case. 42 Although the matter is not free from doubt, I have come to the view that no very useful purpose is to be served by requiring the respondents to file and serve an answering Statement of Facts. The applicant, who has, after all, initiated the proceeding, has done enough at this stage to state its case. Once discovery is completed, the parties will be required to file and serve their affidavits and, by then, the nature of the cases that each seeks to make should be ascertainable with some precision. There has been quite enough delay in the preparatory stages of this proceeding already. I propose that the first respondent (and the second respondent who joins with it on this issue) should be relieved of the obligation that arises under par 2 of the order made 26 February 2001. 43 The orders that I propose to make are: (1) The first respondent's application for summary dismissal of these proceedings (in relation to the claim for relief in paragraph 2 of the Application herein, and in relation to the claims for relief in paragraphs 3 to 6 inclusive of the Application herein in so far as those paragraphs relate to Australian Patent No. 623429) be dismissed. (2) Paragraph 2 of the order made in this proceeding on 26 February 2001 be vacated. (3) The motion, notice of which is dated 12 June 2001, be otherwise dismissed. The parties shall have an opportunity to make submissions on the question of costs. I certify that the preceding forty-three (43) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Kenny.

Associate: Dated: 13 May 2002 Counsel for the Applicant: Dr J Emmerson QC with Mr B Caine

Solicitor for the Applicant: Phillips Ormonde & Fitzpatrick

Counsel for the First Respondent: Mr D Shavin QC with Ms K Howard

Counsel for the Second Respondent: Ms H Rofe (solicitor)

Solicitor for the Second Respondent: Blake Dawson Waldron

Date of Hearing: 3 August 2001