Federal Court of Australia

Advanta Seeds Pty Ltd v Nuseed Pty Ltd (Summary Judgment Costs) [2025] FCA 1447

ORDERS

THE COURT ORDERS THAT:

1.    The Applicant pay the Respondent’s costs of the summary judgment application.

Note:    Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.

REASONS FOR JUDGMENT

DOWNES J:

1    On 9 September 2025, the respondent (Nuseed) applied for summary judgment dismissing certain claims and relief sought in the proceeding brought against it by the applicant (Advanta).

2    Following certain events which are described below, the application was dismissed by consent and the parties were ordered to file submissions in respect of the costs of Nuseed’s summary judgment application, to be determined on the papers.

3    For the following reasons, I will order that Advanta pay Nuseed’s costs of the summary judgment application.

ANALYSIS

4    This proceeding is set down for trial for three weeks commencing on 9 February 2026.

5    By 9 September 2025, the timetable for filing evidence in chief in this proceeding had closed.

6    The proceeding includes a contract claim for royalty payments said to be due pursuant to an agreement dated 9 September 2016 between Advanta and Nuseed (licensing agreement). The licensing agreement gave Nuseed the right under Australian Patent No 2009304572 (the Patent) to develop and sell certain “TT Hybrid Canola Seed”. Advanta also alleges that the Patent has been infringed by the sale of “Nuseed’s TT Canola Seed”.

7    Based on the Second Further Amended Statement of Claim (2FASOC) as at 9 September 2025, Nuseed contended that, in order to successfully prosecute the proceeding, Advanta must prove on the balance of probabilities that a plant line identified as “48118” was made by the University of Queensland using a method “wherein prior to the protoplast fusion, chloroplasts are eliminated from the protoplast” derived from the plant having a first characteristic, being cytoplasmic male sterility. This method was described by the parties at the hearing of the summary judgment application as “Method C”.

8    Nuseed contended that, based on Advanta’s evidence in chief, there was no basis for a reasonable inference that, on the balance of probabilities, the plant line identified as 48118 was produced using Method C. For that reason, it sought summary judgment in relation to the contract claims and the patent infringement claims.

9    The summary judgment application was listed for hearing on 22 October 2025.

10    On 16 October 2025, Advanta filed over 500 pages of additional evidence by way of three affidavits, including further documents not forming part of its material filed in evidence in chief.

11    On 21 October 2025 (being the day before the hearing), Advanta served a written outline of submissions in response to the summary judgment application. As to these submissions:

(1)    Advanta submitted that “... even if it were the case that plants produced using the patented method were not provided to Advanta until after 8 April 2008, the more likely inference from the contemporaneous documents is that those plants were added into Advanta’s breeding program”;

(2)    Advanta submitted that, even if 48118 was not made using the patented method, on the proper construction of the licensing agreement, Advanta was still entitled to royalties.

12    Neither of those propositions was pleaded in the 2FASOC. The first proposition was inconsistent with the admission by way of the Advanta “Product and process description” (PPD) (i.e. 48118 was in its possession on or before 8 April 2008; it was grown in a glasshouse for 220–240 days; and it went into commercial production on 11 November 2008). It was inconsistent with Advanta’s “Explanation of steps regarding PPD” dated 30 June 2025, which stated that “the process by which plant line ‘48118’ was made is [the patented method].” The second proposition was inconsistent with its pleaded case as to the “proper construction of the Licence Agreement”.

13    At the hearing on 22 October 2025, Nuseed contended that Advanta’s filed evidence and submissions on the application disclosed a new case that was not pleaded in the 2FASOC.

14    Advanta did not defend the application but instead sought leave to amend its 2FASOC, which caused the application to be adjourned. With that leave, Advanta then filed a Third Further Amended Statement of Claim on 10 November 2025 (3FASOC) and will also be able to rely on further affidavit material at trial. It has also amended its PPD and its Position Statement on Infringement.

15    Nuseed does not press the application for summary judgment, and so the application was dismissed by consent, but it seeks its costs.

16    In response, Advanta submits that the appropriate costs order is costs in the proceeding. In support of this, Advanta contends that the amendments in the 3FASOC “were by way of clarification” and the arguments advanced by Advanta in its written submissions in response to the summary judgment application were within the scope of Advanta’s pleaded case in the 2FASOC.

17    I disagree. The amendments expanded the case as pleaded in the 2FASOC, which now contends that 48118 was produced used Method A and Method C, and also pleads its new construction argument. In support of its new case, Advanta now relies on further evidence which it filed in response to the summary judgment application as evidence in chief, which would not have been needed if the amendments were a mere clarification of its existing case.

18    Advanta then submits that Nuseed’s application would have failed if it had been pressed because it is very difficult to succeed on a summary judgment application, particularly one brought so close to trial. However, I am not persuaded that Nuseed’s application would not have succeeded. Indeed, the fact that Advanta needed to further amend its pleading and file additional evidence in chief demonstrates that Advanta recognised that there was a real prospect of failure by it on the summary judgment application.

19    Finally, Advanta submits that the issue raised in the summary judgment application, being whether the evidence establishes that the plant line 48118 was created using the patented method and possesses the “Advanta Trait” as defined in the licensing agreement, remains a live issue in the proceeding and that any wasted costs have already been compensated by existing costs orders, which awarded Nuseed its costs of the appearance on 22 October 2025 and its costs thrown away by reason of Advanta’s pleading amendments.

20    I disagree. While the substantive issues might remain alive for determination at trial, costs were incurred by Nuseed in preparing its summary judgment application apart from the appearance at the hearing, all of which are now wasted. This includes dealing with an outline of submissions which was only served the day before the hearing. Further, any contention about overlapping costs can be debated with a taxing officer.

21    In the circumstances, it is appropriate that Advanta pay Nuseed’s costs of the summary judgment application.

Associate:

Dated:    21 November 2025