Merck Sharp & Dohme Corporation v Wyeth LLC (No 2) [2019] FCA 1615

Merck Sharp & Dohme Corporation v Wyeth LLC (No 2) [2019] FCA 1615

Wyeth LLC waived legal professional privilege in relation to documents within paragraphs 1 and 2 of the Notice by relying on Mr Hamer's affidavit evidence to support its amendment application, creating inconsistency and forensic unfairness in maintaining privilege. However, privilege remains for category 3(b) documents as their contents were not put in issue.

Parties
First Applicant / First Cross Respondent: Merck Sharp & Dohme Corporation; Second Applicant / Second Cross Respondent: Merck Sharp & Dohme (Australia) Pty Ltd; Respondent / Cross Claimant: Wyeth LLC
Jurisdiction
Australia
Judgment Date
30 September 2019
Procedural Posture
Patent Dispute / Interlocutory Application Regarding Legal Professional Privilege
Outcome
Privilege claim dismissed for documents in paragraphs 1 and 2 of Notice to Produce; maintained for category 3(b) documents.
Legal Topics
Patents, Legal Professional Privilege, Evidence, Waiver of Privilege
Intellectual Property Patents Legal Professional Privilege Evidence Waiver of Privilege

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Parties

Merck Sharp & Dohme Corporation

First Applicant / First Cross Respondent

Merck Sharp & Dohme (Australia) Pty Ltd

Second Applicant / Second Cross Respondent

Wyeth LLC

Respondent / Cross Claimant

Procedural Posture

Patent Dispute / Interlocutory Application Regarding Legal Professional Privilege

Legal Issues

  1. 1 Whether Wyeth LLC waived legal professional privilege in respect of documents under a Notice to Produce
  2. 2 Scope of waiver if privilege is waived

Ratio Decidendi

Wyeth LLC waived legal professional privilege in relation to documents within paragraphs 1 and 2 of the Notice by relying on Mr Hamer's affidavit evidence to support its amendment application, creating inconsistency and forensic unfairness in maintaining privilege. However, privilege remains for category 3(b) documents as their contents were not put in issue.

Court Disposition

Privilege claim dismissed for documents in paragraphs 1 and 2 of Notice to Produce; maintained for category 3(b) documents.

Orders

  • The respondent/cross-claimant's claim for legal professional privilege in respect of documents falling within paragraphs 1 and 2 of the Notice to Produce issued on 30 August 2019 be dismissed.
  • The respondent/cross-claimant pay the applicants'/cross-respondents' costs of the application for privilege.