Merck Sharp & Dohme Corp. v Ono Pharmaceutical Co., Ltd [2016] FCA 1015

Merck Sharp & Dohme Corp. v Ono Pharmaceutical Co., Ltd [2016] FCA 1015

The Court found that broad discovery as sought by Ono was not justified based only on a desire to see other information, and the utility of additional information was speculative. Discovery was to be granted only where it facilitated just resolution as per the procedural rules. Orders were made for parties to confer on limited outstanding concerns regarding specific documents, and for admissions relating to competition of certain antibodies, but not for the full extent of discovery sought. Leave was granted to tender US and UK experimental proof subject to compliance with relevant orders.

Jurisdiction
Australia
Judgment Date
24 August 2016
Procedural Posture
Patents (infringement and Validity) / Interlocutory Applications Concerning Discovery and Evidentiary Issues
Outcome
Partly allowed; orders made resolving interlocutory discovery applications, reserving costs, and requiring further filings or conferral on certain categories.
Legal Topics
['patents' 'evidence' 'discovery' 'practice and Procedure']
['intellectual Property'] ['patents' 'evidence' 'discovery' 'practice and Procedure']

Case Brief

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Procedural Posture

Patents (infringement and Validity) / Interlocutory Applications Concerning Discovery and Evidentiary Issues

Legal Issues

  1. 1 ['Whether discovery of documents relating to overseas experiments should be granted to facilitate just resolution of proceedings' 'Whether leave should be granted to rely on experimental proof conducted in absence of opposing party' 'Whether, in light of admission made, experimental proof should be rejected in advance of hearing']

Ratio Decidendi

The Court found that broad discovery as sought by Ono was not justified based only on a desire to see other information, and the utility of additional information was speculative. Discovery was to be granted only where it facilitated just resolution as per the procedural rules. Orders were made for parties to confer on limited outstanding concerns regarding specific documents, and for admissions relating to competition of certain antibodies, but not for the full extent of discovery sought. Leave was granted to tender US and UK experimental proof subject to compliance with relevant orders.

Court Disposition

Partly allowed; orders made resolving interlocutory discovery applications, reserving costs, and requiring further filings or conferral on certain categories.

Orders

  • ["The amended annexure referred to in respondents' submissions to be placed on file and treated as the annexure for the interlocutory application." 'Application for discovery by certain categories stood over for further hearing if necessary.' "Respondents' claim for relief in prayer 4 of the first interlocutory...