Merck Sharp & Dohme Corporation v Wyeth LLC [2019] FCA 1421

Merck Sharp & Dohme Corporation v Wyeth LLC [2019] FCA 1421

The Court found that certain categories of requested documents were sufficiently relevant to the amendment application and the issue of delay, and that privilege may have been waived by Wyeth's reliance on solicitor evidence. Compliance with amended, more specific paragraphs of Merck's Notice to Produce was ordered. Other, broader categories were excused. In contrast, all paragraphs of Wyeth's amended Notice to Produce were considered speculative, privileged, or irrelevant to the issues at hand and excusal from compliance was granted.

Parties
Applicant / Cross Respondent: Merck Sharp & Dohme Corporation; Applicant / Cross Respondent: Merck Sharp & Dohme (Australia) Pty Ltd; Respondent / Cross Claimant: Wyeth LLC
Jurisdiction
Australia
Judgment Date
30 August 2019
Procedural Posture
Interlocutory Application in Patent Proceedings / Ruling on Notices to Produce Prior to Trial of Amendment Application
Outcome
Notices to Produce—applicants granted leave to issue, compliance excused in part; respondent partially excused, compliance excused in full regarding its Notice; costs awarded to applicants.
Legal Topics
Patent Litigation, Notices to Produce, Discovery of Documents, Legal Professional Privilege, Amendment of Pleadings
Intellectual Property Civil Procedure Patent Litigation Notices to Produce Discovery of Documents Legal Professional Privilege Amendment of Pleadings

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Parties

Merck Sharp & Dohme Corporation

Applicant / Cross Respondent

Merck Sharp & Dohme (Australia) Pty Ltd

Applicant / Cross Respondent

Wyeth LLC

Respondent / Cross Claimant

Procedural Posture

Interlocutory Application in Patent Proceedings / Ruling on Notices to Produce Prior to Trial of Amendment Application

Legal Issues

  1. 1 Whether parties should be excused from compliance with Notices to Produce issued under r 30.28 of the Federal Court Rules 2011 (Cth)
  2. 2 Whether legal professional privilege was waived regarding certain categories of documents requested
  3. 3 Relevance and propriety of requested categories for document production in the context of a patent infringement/amendment application

Ratio Decidendi

The Court found that certain categories of requested documents were sufficiently relevant to the amendment application and the issue of delay, and that privilege may have been waived by Wyeth's reliance on solicitor evidence. Compliance with amended, more specific paragraphs of Merck's Notice to Produce was ordered. Other, broader categories were excused. In contrast, all paragraphs of Wyeth's amended Notice to Produce were considered speculative, privileged, or irrelevant to the issues at hand and excusal from compliance was granted.

Court Disposition

Notices to Produce—applicants granted leave to issue, compliance excused in part; respondent partially excused, compliance excused in full regarding its Notice; costs awarded to applicants.

Orders

  • Leave granted to applicants (Merck) to issue Notice to Produce on respondent (Wyeth), returnable 11 September 2019, in specified terms regarding documents relating to the surfactant claims and communications referred to in the affidavits.
  • Compliance with r 30.28(3) is dispensed with in relation to applicants' Notice to Produce dated 19 August 2019, and in relation to respondent's amended Notice to Produce.