Otsuka Pharmaceutical Co., Ltd v Generic Health Pty Ltd (No 2) [2019] FCA 2215

Otsuka Pharmaceutical Co., Ltd v Generic Health Pty Ltd (No 2) [2019] FCA 2215

Legal professional privilege in the discovered documents was waived because Mr Kerr's affidavit, filed and served by Otsuka/BMS in support of withdrawing admissions, expressly advanced Otsuka/BMS's reasons and, in substance, revealed communications and advice concerning the basis on which the admissions had been made and the significance of Sigma v Wyeth. That conduct was inconsistent with maintaining confidentiality over the privileged communications, so the documents had to be produced for inspection.

Jurisdiction
Australia
Judgment Date
11 September 2019
Procedural Posture
Patent Infringement Proceedings Involving Claims for Compensation Pursuant to Undertakings as to Damages and Applications to Amend Pleadings / Ruling on Objection to Inspection of Discovered Documents on the Basis of Legal Professional Privilege Before the Amendment Applications
Outcome
Claim of legal professional privilege rejected; privilege waived; documents to be produced to Generic Health Pty Ltd for inspection.
Legal Topics
['legal Professional Privilege' 'waiver of Privilege' 'discovery' 'inspection of Discovered Documents' 'amendment of Pleadings' 'withdrawal of Admissions' 'undertakings as to Damages']
['evidence' 'intellectual Property' 'patents' 'civil Procedure'] ['legal Professional Privilege' 'waiver of Privilege' 'discovery' 'inspection of Discovered Documents' 'amendment of Pleadings' 'withdrawal of Admissions' 'undertakings as to Damages']

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Procedural Posture

Patent Infringement Proceedings Involving Claims for Compensation Pursuant to Undertakings as to Damages and Applications to Amend Pleadings / Ruling on Objection to Inspection of Discovered Documents on the Basis of Legal Professional Privilege Before the Amendment Applications

Legal Issues

  1. 1 ['Whether Otsuka Pharmaceutical Co., Ltd and Bristol-Myers Squibb Company waived legal professional privilege over discovered documents recording reasons for making, maintaining, withdrawing or amending admissions in pleadings.' 'Whether affidavits and submissions deployed in support of applications to withdraw admissions put the contents of otherwise privileged communications in issue.' 'Whether discovered documents should be produced to Generic Health Pty Ltd for inspection.']

Ratio Decidendi

Legal professional privilege in the discovered documents was waived because Mr Kerr's affidavit, filed and served by Otsuka/BMS in support of withdrawing admissions, expressly advanced Otsuka/BMS's reasons and, in substance, revealed communications and advice concerning the basis on which the admissions had been made and the significance of Sigma v Wyeth. That conduct was inconsistent with maintaining confidentiality over the privileged communications, so the documents had to be produced for inspection.

Court Disposition

Claim of legal professional privilege rejected; privilege waived; documents to be produced to Generic Health Pty Ltd for inspection.

Orders

  • ['The documents discovered by Otsuka Pharmaceutical Co., Ltd and Bristol-Myers Squibb Company pursuant to orders made on 5 September 2019 be produced to Generic Health Pty Ltd for inspection.']