British American Tobacco (Investments) Ltd v Philip Morris Ltd Philip Morris Ltd v British American Tobacco (Investments) Ltd [1998] FCA 1288

British American Tobacco (Investments) Ltd v Philip Morris Ltd Philip Morris Ltd v British American Tobacco (Investments) Ltd [1998] FCA 1288

Because the proceeding was properly before the Federal Court and the document had been produced under an order for discovery in that proceeding, the court had power to restrict the use and disclosure of the document; Emory University did not preclude such an order because that case concerned proceedings brought solely to obtain the order. As the motion was unopposed and the circumstances justified the restriction, the requested confidentiality orders were appropriate.

Jurisdiction
Australia
Judgment Date
08 October 1998
Procedural Posture
Patent Proceeding; Motion Concerning Confidentiality of a Document Produced on Discovery / Notice of Motion; Ex Tempore Reasons for Judgment
Outcome
Motion granted; confidentiality orders made.
Legal Topics
['patents' 'opposition Proceedings' 'discovery' 'confidential Documents' 'public Inspection of Documents']
['intellectual Property' 'civil Procedure'] ['patents' 'opposition Proceedings' 'discovery' 'confidential Documents' 'public Inspection of Documents']

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Procedural Posture

Patent Proceeding; Motion Concerning Confidentiality of a Document Produced on Discovery / Notice of Motion; Ex Tempore Reasons for Judgment

Legal Issues

  1. 1 ['Whether the Federal Court had power to order that a document produced on discovery be prohibited from disclosure except under an inter parties solicitors undertaking and with a proviso for use by the Commissioner of Patents.' 'Whether the decision in Emory University v Commissioner of Patents (1997) 39 IPR 615 prevented the making of the order sought.']

Ratio Decidendi

Because the proceeding was properly before the Federal Court and the document had been produced under an order for discovery in that proceeding, the court had power to restrict the use and disclosure of the document; Emory University did not preclude such an order because that case concerned proceedings brought solely to obtain the order. As the motion was unopposed and the circumstances justified the restriction, the requested confidentiality orders were appropriate.

Court Disposition

Motion granted; confidentiality orders made.

Orders

  • ['The document produced on discovery by the applicant in its verified list of documents dated 17 November 1997 and designated as document 1.0005.0175 (the confidential document) and the information contained in the confidential document be prohibited from disclosure other than in accordance with order 2: provided...