Case: Lucent Technologies Inc v Krone Aktiengesellschaft (No 2) [1999] FCA 1462 ; (1999) 94 FCR 124 at [8]
Outcome: followed
This argument is misconceived. Order 58 rule 31 does not confer a power to permit or refuse experiments. Bayer can conduct any experiment it likes. As Lindgren J pointed out in Lucent Technologies Inc v Krone Aktiengesellschaft (No 2) [1999] FCA 1462 ; (1999) 94 FCR 124 at [8] , the purpose of the rule is to (a) ensure that the other party has an adequate opportunity to challenge the validity of the experiment or test, and (b) to avoid wasteful duplication by that party of an experiment that can be seen to be valid. Compliance with directions given under O 58 r 31 is a precondition of admissibility at trial of evidence as to the results of the experiment: sub-rule 3(a). Even if conditions have not been complied with, or no application has been made at all, results of an experiment may still be admitted by leave: sub-rule 3(b). 11 Patent cases are no different from other litigation, civil or criminal. A party is entitled, as of right, to tender evidence it believes will assist its case. The opposing party can object that the evidence is irrelevant or inadmissible, or should be excluded on discretionary grounds because it might be unfairly prejudicial or misleading or confusing or cause undue waste of time: Evidence Act 1995 (Cth) s 135. When such objections are taken, the trial judge will rule and the evidence will be admitted or rejected. 12 In the present case Bayer does not seek the Court's "indulgence". It is entitled to conduct such experiments it thinks may help to make out its case. To have the results of such experiments admitted into evidence it needs to comply with directions which will give Deltapine a fair opportunity to observe them. Deltapine's complaints as to the merits or usefulness of the proposed experiments may turn out to be valid. Bayer takes the risk that this may be so. The trial is the time and place where such questions will be resolved. 13 Bayer proposes that the purification experiments start in early January 2007. These will take a few weeks and be followed by the binding experiments which will take four months. However, Deltapine's main witness Professor Gill has heavy teaching commitments in January and February and is not available until 15 March. Deltapine therefore asks that the purification experiments start on 15 March, to be followed by the binding experiments. 14 Upon obtaining instructions after the hearing of this application, Bayer's solicitors have advised that Bayer's main witness Professor Ferr&eacute; and his colleague Dr Hernandez, who will conduct the binding experiments, are not available beyond the end of May 2007. If those restraints are to be accommodated, Professor Gill could attend for some two-thirds of the binding experiments (i.e. from 15 March onwards) but he would not be able to attend at all for the purification experiments. When Professor Gill is unable to attend, some other suitable independent scientific observer could act as his alternate. This is admittedly a less than perfect solution, but seems to be the only practicable one, especially since, as Deltapine emphasises, this case has been dragging on for some time. The role of an expert attending the experiments on Deltapine's behalf is to observe and report, not to participate, or express opinions, or give advice at the time. So there is to that extent less compelling need for Deltapine's principal witness to attend all the time. Moreover, the binding experiments consist of two similar exercises which will be conducted sequentially, so Professor Gill could be present for at least the entirety of one. 15 I will therefore direct that the purification experiments begin on or about 8 January 2007 and the binding experiments on or about 1 February 2007. 16 Bayer's proposed protocol includes a timeline detailing various stages and the time each will take (1 week, 1.5 weeks etc): see exhibit RBJ-8 to the affidavit of Richard Barry Jarvis sworn 7 December 2006. I agree with Deltapine that it would be more convenient and less subject to confusion if the various stages were identified by actual dates. Any variations to the timetable should be notified to Deltapine as soon as possible.