CSL Limited v Novo Nordisk Pharmaceuticals Pty Ltd [2010] FCA 671

CSL Limited v Novo Nordisk Pharmaceuticals Pty Ltd [2010] FCA 671

The 19 April 2010 order was an order for further and better discovery, not specific discovery under O 15 r 8, so the applicants' discovery obligations remained those under O 15 r 2(3) and they were entitled to redact parts they judged irrelevant. The respondents did not establish that the applicants applied the wrong relevance test or that the redactions justified court intervention. However, by putting in issue the existence, timing and content of their appreciation of the need to amend the patent, and by making affidavit disclosures about their reasons for accepting advice to amend and about the 2 June 2009 meeting, the applicants waived privilege to the limited extent of communications...

Jurisdiction
Australia
Judgment Date
28 June 2010
Procedural Posture
Patent Infringement Proceeding With Cross Claim for Invalidity and Application to Amend Patent Under S 105 of the Patents Act 1990 (cth) / Respondents' Interlocutory Notice of Motion Seeking Further Discovery, Unredacted Production, and Production of Documents Over Which Privilege Was Claimed
Outcome
Respondents' motion allowed in part; otherwise refused; costs reserved.
Legal Topics
['patent Amendment Under S 105' 'discovery' 'redaction of Discovered Documents' 'legal Professional Privilege' 'issue Waiver' 'disclosure Waiver' 'specific Discovery' 'relevance Under O 15 R 2(3) of the Federal Court Rules']
['intellectual Property' 'patent Law' 'civil Procedure' 'evidence'] ['patent Amendment Under S 105' 'discovery' 'redaction of Discovered Documents' 'legal Professional Privilege' 'issue Waiver' 'disclosure Waiver' 'specific Discovery' 'relevance Under O 15 R 2(3) of the Federal Court Rules']

Case Brief

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Procedural Posture

Patent Infringement Proceeding With Cross Claim for Invalidity and Application to Amend Patent Under S 105 of the Patents Act 1990 (cth) / Respondents' Interlocutory Notice of Motion Seeking Further Discovery, Unredacted Production, and Production of Documents Over Which Privilege Was Claimed

Legal Issues

  1. 1 ['Whether the applicants were entitled to redact parts of discovered documents on the basis that they were irrelevant.' 'Whether the applicants applied the correct test of relevance for discovery in the s 105 patent amendment application.' "Whether the applicants' claims of legal professional privilege over documents numbered 131-182 had been waived by issue waiver or disclosure waiver." 'Whether documents concerning a draft provisional patent and information from John Slattery should be the subject of specific discovery or production.']

Ratio Decidendi

The 19 April 2010 order was an order for further and better discovery, not specific discovery under O 15 r 8, so the applicants' discovery obligations remained those under O 15 r 2(3) and they were entitled to redact parts they judged irrelevant. The respondents did not establish that the applicants applied the wrong relevance test or that the redactions justified court intervention. However, by putting in issue the existence, timing and content of their appreciation of the need to amend the patent, and by making affidavit disclosures about their reasons for accepting advice to amend and about the 2 June 2009 meeting, the applicants waived privilege to the limited extent of communications...

Court Disposition

Respondents' motion allowed in part; otherwise refused; costs reserved.

Orders

  • ["Within 7 days, the applicants produce for inspection by the respondents documents numbered 131-182 in the applicants' further list of documents dated 22 April 2010, to the extent only that those documents, absent a claim of privilege, would be discoverable under O 15 r 2(3) of the Federal Court Rules and would...