Bristol-Myers Squibb Company v Apotex Pty Ltd (No 3) [2012] FCA 1310

Bristol-Myers Squibb Company v Apotex Pty Ltd (No 3) [2012] FCA 1310

Professor Easton's notes initially attracted litigation privilege because they were made to enable him to communicate observations, advice and opinions to the applicants' solicitors for the conduct of the proceeding. However, that privilege was imputedly waived when Professor Easton used the notes as the direct source for observations and opinions in his affidavit filed and served for use in the principal proceeding. The notes concerned a single subject matter, namely Professor Easton's observations of Associate Professor McGeary's experiment, so the applicants could not selectively disclose parts of that subject matter through the affidavit while maintaining privilege over the balance.

Jurisdiction
Australia
Judgment Date
23 November 2012
Procedural Posture
Patent Infringement and Validity Proceeding; Interlocutory Application Concerning Production of Expert Notes and Legal Professional Privilege / Interlocutory Application Dated 2 November 2012 Before Final Hearing
Outcome
The respondent's interlocutory application for production of Professor Easton's notes was granted, and the applicants were ordered to pay the respondent's costs of the interlocutory application.
Legal Topics
['legal Professional Privilege' 'litigation Privilege' 'waiver of Privilege' 'expert Evidence' 'production of Documents' 'patent Validity' 'novelty']
['evidence' 'civil Procedure' 'intellectual Property' 'patents'] ['legal Professional Privilege' 'litigation Privilege' 'waiver of Privilege' 'expert Evidence' 'production of Documents' 'patent Validity' 'novelty']

Case Brief

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Procedural Posture

Patent Infringement and Validity Proceeding; Interlocutory Application Concerning Production of Expert Notes and Legal Professional Privilege / Interlocutory Application Dated 2 November 2012 Before Final Hearing

Legal Issues

  1. 1 ['Whether notes made by Professor Easton while observing an experiment conducted by Associate Professor McGeary attracted legal professional privilege.' "Whether any legal professional privilege in Professor Easton's notes was waived by the applicants filing and serving Professor Easton's affidavit for use in the proceeding." "Whether the applicants were required to produce the undisclosed parts of Professor Easton's notes to the respondent."]

Ratio Decidendi

Professor Easton's notes initially attracted litigation privilege because they were made to enable him to communicate observations, advice and opinions to the applicants' solicitors for the conduct of the proceeding. However, that privilege was imputedly waived when Professor Easton used the notes as the direct source for observations and opinions in his affidavit filed and served for use in the principal proceeding. The notes concerned a single subject matter, namely Professor Easton's observations of Associate Professor McGeary's experiment, so the applicants could not selectively disclose parts of that subject matter through the affidavit while maintaining privilege over the balance.

Court Disposition

The respondent's interlocutory application for production of Professor Easton's notes was granted, and the applicants were ordered to pay the respondent's costs of the interlocutory application.

Orders

  • ["Within 7 days of the date of this order the applicants provide copies to the respondent's solicitors of any notes made by Professor Easton during his observation of the experiment conducted by Associate Professor McGeary pursuant to order 2 of the orders made on 1 August 2011." "The applicants pay the respondent's...