British-American Tobacco Company Ltd v Phillip Morris Ltd [1996] FCA 910

British-American Tobacco Company Ltd v Phillip Morris Ltd [1996] FCA 910

It is inappropriate in Australian proceedings to limit discovery by reference to 'unprivileged' as in a foreign court's letter of request. Discovery must be made of all documents, privileged and unprivileged, relevant to the issues of obviousness and common general knowledge under the Patents Act 1952. The applicant must provide verified discovery in certain categories as specified by the respondent, with some limitations for breadth and relevance.

Jurisdiction
Australia
Judgment Date
21 October 1996
Procedural Posture
Appeal and Cross Appeal From a Decision of a Delegate of the Commissioner of Patents in Opposition Proceedings / Interlocutory Application for Discovery Orders
Outcome
The motion by the respondent for discovery is substantially granted.
Legal Topics
['discovery' 'patents' 'obviousness' 'common General Knowledge']
['intellectual Property' 'civil Procedure'] ['discovery' 'patents' 'obviousness' 'common General Knowledge']

Case Brief

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Procedural Posture

Appeal and Cross Appeal From a Decision of a Delegate of the Commissioner of Patents in Opposition Proceedings / Interlocutory Application for Discovery Orders

Legal Issues

  1. 1 ["Whether discovery should be limited to 'unprivileged' documents as per a foreign court's letter of request" 'Whether the ordinary rule of Australian discovery requiring the listing of all relevant documents, both privileged and unprivileged, should be applied' 'Whether the categories requested for discovery are relevant to obviousness under s 59(1) Patents Act 1952' 'Whether category requested are relevant to common general knowledge' 'Effect of earlier cross-examination in related foreign proceedings on scope of discovery' 'Consequences of failure to comply with court directions due to misunderstanding']

Ratio Decidendi

It is inappropriate in Australian proceedings to limit discovery by reference to 'unprivileged' as in a foreign court's letter of request. Discovery must be made of all documents, privileged and unprivileged, relevant to the issues of obviousness and common general knowledge under the Patents Act 1952. The applicant must provide verified discovery in certain categories as specified by the respondent, with some limitations for breadth and relevance.

Court Disposition

The motion by the respondent for discovery is substantially granted.

Orders

  • ['The applicant make discovery of all documents which are or have been in its possession, custody or control in accordance with the list of Categories of Documents for Discovery forwarded to it by the respondent on 3 May 1995, except that the applicant need not discover any document falling within paragraph 1(a)...