Sanofi-Aventis Deutschland GmbH v Alphapharm Pty Ltd (No 2) [2018] FCA 1630

Sanofi-Aventis Deutschland GmbH v Alphapharm Pty Ltd (No 2) [2018] FCA 1630

The references in the Brindell affidavit to the Special Pricing Arrangements were not direct allusions to the underlying deeds or documents but references to the transactions or arrangements generally, so r 20.31(1) was not engaged for the first notice. In any event, the documents sought in both notices were insufficiently relevant to the interlocutory injunction issues, including the balance of convenience and asserted financial harm, and the second notice had the appearance of fishing for information. Production was therefore not warranted and the second notice was set aside.

Jurisdiction
Australia
Judgment Date
24 October 2018
Procedural Posture
Patent Infringement Proceeding; Interlocutory Practice and Procedure Application / Interlocutory Application by the Applicants to Set Aside a Notice to Produce, and Application by the Respondent for Production Under R 20.31(3) of the Federal Court Rules 2011 (cth)
Outcome
The applicants' interlocutory application was allowed; the notice to produce dated 4 October 2018 was set aside; Alphapharm's application for production was refused; the respondent was ordered to pay the applicants' costs from 23 October 2018 onwards on a party/party basis.
Legal Topics
['notice to Produce' 'documents Mentioned in an Affidavit' 'relevance for Production' 'interlocutory Injunction' 'balance of Convenience' 'special Pricing Arrangements']
['practice and Procedure' 'intellectual Property' 'patents'] ['notice to Produce' 'documents Mentioned in an Affidavit' 'relevance for Production' 'interlocutory Injunction' 'balance of Convenience' 'special Pricing Arrangements']

Case Brief

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Procedural Posture

Patent Infringement Proceeding; Interlocutory Practice and Procedure Application / Interlocutory Application by the Applicants to Set Aside a Notice to Produce, and Application by the Respondent for Production Under R 20.31(3) of the Federal Court Rules 2011 (cth)

Legal Issues

  1. 1 ['Whether the documents sought by the respondent were documents mentioned in an affidavit within r 20.31(1) of the Federal Court Rules 2011 (Cth).' 'Whether the documents sought in the notices to produce were sufficiently relevant to warrant production.' 'Whether the notice to produce dated 4 October 2018 should be set aside and whether production should be ordered in relation to the earlier notice.' 'What costs order should be made on the interlocutory application.']

Ratio Decidendi

The references in the Brindell affidavit to the Special Pricing Arrangements were not direct allusions to the underlying deeds or documents but references to the transactions or arrangements generally, so r 20.31(1) was not engaged for the first notice. In any event, the documents sought in both notices were insufficiently relevant to the interlocutory injunction issues, including the balance of convenience and asserted financial harm, and the second notice had the appearance of fishing for information. Production was therefore not warranted and the second notice was set aside.

Court Disposition

The applicants' interlocutory application was allowed; the notice to produce dated 4 October 2018 was set aside; Alphapharm's application for production was refused; the respondent was ordered to pay the applicants' costs from 23 October 2018 onwards on a party/party basis.

Orders

  • ['The Notice to Produce dated 4 October 2018 be set aside.' "The respondent pay the applicants' costs of this interlocutory application from 23 October 2018 onwards on a party/party basis, to be taxed unless otherwise agreed."]