Allen & Hanburys Ltd v Pan Laboratories Pty Ltd

CATCHWORDS

PRACTICE AND PROCEDURE - application for leave to use documents produced in proceedings in other proceedings for infringement of patent and related relief in other countries - requirement that "special circumstances" be present before such leave granted.

ALLEN & HANBURYS LIMITED & ORS v PAN LABORATORIES PTY LTD & ORS

No NG 611 of 1994

Lindgren J
Sydney
4 May 1995

IN THE FEDERAL COURT OF AUSTRALIA )
NEW SOUTH WALES DISTRICT REGISTRY ) No NG 611 of 1994
GENERAL DIVISION )

BETWEEN:
ALLEN & HANBURYS LIMITED
  First Applicant
GLAXO GROUP LIMITED
                   Second Applicant
GLAXO AUSTRALIA PTY LTD (ACN 004 148 065)
  Third Applicant

AND:
PAN LABORATORIES PTY LTD (ACN 001 263 252)
                   First Respondent
PAN LABORATORIES AUSTRALIA PTY LTD (ACN 063 750 229)
                  Second Respondent
PAN LABORATORIES DISTRIBUTORS PTY LIMITED (ACN 003 763 308)
                   Third Respondent
JAMES SELIM
                  Fourth Respondent
JUNE SELIM
                   Fifth Respondent
ANGELINA IAQUINTO
                   Sixth Respondent
GATEWAY PHARMACEUTICALS (AUST) PTY LTD (ACN 003 809 489)
                 Seventh Respondent
GATEWAY PROMOTIONS (AUST) PTY LTD (ACN 002 893 558)
                  Eighth Respondent
DAVID JOHN BOKEYAR
                   Ninth Respondent
LOUIE JOHN SUKARI
                   Tenth Respondent
MAY SUKARI
                Eleventh Respondent
BRONSON & JACOBS PTY LIMITED (ACN 000 063 249)
                 Twelfth Respondent
WEINSTEIN CHEMICALS PTY LTD (ACN 055 147 567)
              Thirteenth Respondent
PACIFIC RESOURCES INTERNATIONAL PTY LTD (ACN 504 209 522)
              Fourteenth Respondent

CORAM:Lindgren J
PLACE:Sydney
DATE:4 May 1995

MINUTE OF ORDERS

THE COURT:

Grants leave to the first and second applicants in respect of the 22 documents referred to in paragraph 2 of the affidavit of Richard Barry Jarvis filed 27 March 1995 to make these documents available to the legal advisers of the first and second applicants for the purposes of considering whether proceedings should be commenced for infringement of patent and related relief in Hong Kong and/or such other countries where the first and second applicants or any association or related corporation of the first and second applicants are the proprietors or licensees of a patent for substantially the same inventions as that disclosed and/or claimed in Australian Patent Nos 515628 and 549119 or Hong Kong Patent No 979985; and to use those documents in or for the purposes of any such proceedings prior to or upon or after commencement of any such proceedings, subject to the following conditions:

(a)that a sealed copy of this order shall first be served upon any barrister, solicitor or counsel engaged to advise or represent the first and/or second applicants;

(b)that the document shall not be used for the purpose of the commencement of any proceedings against or used in any proceedings against Kirkham Co Limited, Block A, 9th Floor, Unit 12 Proficient Industrial Centre, 6 Wang Kwun Rd, Kowloon, Hong Kong.

Grants leave to join Anspec Pty Limited to the proceedings as the fifteenth respondent.

Grants the applicant leave to file an amended application and further amended statement of claim arising out of the joinder of Anspec Pty Ltd.

Orders the applicants to file Points of Claim on or before 18 May 1995.

Orders the first to third and seventh to ninth respondents to file Points of Defence on or before 1 June 1995.

Orders the first to third and seventh to ninth
respondents to give discovery on or before 15 June 1995.

Orders the applicants to file any Affidavits on or before 29 June 1995.

Directs that the proceedings stand over for further directions on 6 July 1995.

NOTE: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.

IN THE FEDERAL COURT OF AUSTRALIA )
NEW SOUTH WALES DISTRICT REGISTRY ) No NG 611 of 1994
GENERAL DIVISION )

BETWEEN:
ALLEN & HANBURYS LIMITED
  First Applicant
GLAXO GROUP LIMITED
                   Second Applicant
GLAXO AUSTRALIA PTY LTD (ACN 004 148 065)
  Third Applicant

AND:
PAN LABORATORIES PTY LTD (ACN 001 263 252)
                   First Respondent
PAN LABORATORIES AUSTRALIA PTY LTD (ACN 063 750 229)
                  Second Respondent
PAN LABORATORIES DISTRIBUTORS PTY LIMITED (ACN 003 763 308)
                   Third Respondent
JAMES SELIM
                  Fourth Respondent
JUNE SELIM
                   Fifth Respondent
ANGELINA IAQUINTO
                   Sixth Respondent
GATEWAY PHARMACEUTICALS (AUST) PTY LTD (ACN 003 809 489)
                 Seventh Respondent
GATEWAY PROMOTIONS (AUST) PTY LTD (ACN 002 893 558)
                  Eighth Respondent
DAVID JOHN BOKEYAR
                   Ninth Respondent
LOUIE JOHN SUKARI
                   Tenth Respondent
MAY SUKARI
                Eleventh Respondent
BRONSON & JACOBS PTY LIMITED (ACN 000 063 249)
                 Twelfth Respondent
WEINSTEIN CHEMICALS PTY LTD (ACN 055 147 567)
              Thirteenth Respondent
PACIFIC RESOURCES INTERNATIONAL PTY LTD (ACN 504 209 522)
              Fourteenth Respondent

CORAM:Lindgren J
PLACE:Sydney
DATE:4 May 1995

REASONS FOR JUDGMENT

In these proceedings the first applicant is the proprietor of Australian Patent No 515628 dated 1 August 1977 and sealed 6 October 1981 for an invention entitled "Pharmacologically Active Aminoalkyl Furans". I will refer to the first applicant as "Allen & Hanburys". The second applicant, to which I will refer as "Glaxo Group", is the proprietor of Australian Patent No 549119 dated 1 October 1981 and sealed 1 May 1986 for an invention called "Aminoalkylfuran Derivative". There have been extensions of the patents. The third applicant, to which I will refer as "Glaxo Australia", is the licensee of the patents. Clearly, the applicants are all interested to prevent infringements of the patents.

I do not need to traverse the facts. The latest pleading of them is an amended statement of claim filed on 11 November 1994. The case is, in summary, that there has been an infringement of the patents in respect of a product named "Ranitidine".

There has been a resolution of the proceedings as between the applicant companies and the twelfth, thirteenth, and fourteenth respondents.

What the applicants have sought, by an amended notice of motion filed 19 April 1995, is leave to use certain documents which have come to their knowledge, in the course of and for the purpose of these proceedings, in order to seek legal advice as to whether proceedings should be commenced for infringement of patent and related relief in Hong Kong and/or other countries in which the first or second applicants are the proprietors or licensees of a patent for substantially the same invention as that referred to in Australian Patent No 515628, Australian Patent No 549119 or Hong Kong Patent No 979985. It is clear that the applicants are subject to an implied undertaking to the Court not to use documents produced by the respondents in these proceedings except for the purpose of these proceedings.

There is before the Court written evidence that no objection is raised by the respondents, in the sense that they do not oppose the making of the orders. However, in the case of Pacific Resources International Pty Ltd, the fourteenth respondent, that indication is subject to a term that the documents are not to be used for the purpose of obtaining legal advice in relation to the commencement of proceedings
against Kirkam Co Limited, of Block A, 9th Floor, Unit 12, Proficient Industrial Centre, 6 Wang Kwun Road, Kowloon, Hong Kong.

The circumstances in which an order of the kind sought may be made have been the subject of discussion in a number of cases in this Court including Springfield Nominees Pty Limited v Bridgelands Securities Limited, (1992) 110 ALR 685, a decision of Wilcox J, Camp Curlewis Resorts Pty Limited v Hamersley Iron Pty Limited, an unreported decision of Branson J dated 20 December 1994, and Autodesk Australia Pty Limited v Dyason, an unreported decision of Northrop J, dated 12 December 1994. I will not summarise the effect of those cases here. It suffices to say that special circumstances must be shown to exist before an order releasing a party from the implied obligation will be made. In this case the circumstances relied on appear in an affidavit of Richard Barry Jarvis, sworn 22 March 1995, as well as in earlier affidavits. I will not set out those circumstances at this stage, but one matter that is worthy of note is the importance of protection of patent rights in the public interest as well as in the interest of the patentee, in order that inventiveness may be encouraged and that the public may have the benefit of that. As well of course, I repeat that all respondents have expressed themselves as not opposing the making of an order.

I am satisfied that the case is an appropriate one in which to make an order, generally of the kind sought in the amended notice of motion and accordingly there will be an order as follows: that leave be granted to the first and second applicants in respect of the 22 documents referred to in paragraph 2 of the affidavit of Richard Barry Jarvis dated 22 March 1995, filed in these proceedings:

(a)to make those documents available to the legal advisers of the first and second applicants for the purpose of their considering whether proceedings should be commenced for infringement of patent and related relief in Hong Kong and/or other countries where the first or second applicants or any associated or related corporation of the first and/or second applicants are the proprietors or licensees of a patent for substantially the same invention as that disclosed and/or claimed in Australian Patent Nos 515628 and 549119 or Hong Kong Patent No 979985; and

(b)to use those documents in/or for the purposes of any such proceedings prior to or upon or after commencement of any such proceedings, subject to the following conditions. First, a sealed copy of this order shall first be served on any solicitors, barristers or attorneys engaged on behalf of the applicants or any of them for the purpose of rendering such advice or representation and secondly, the document shall not be used for the purpose of commencement of any proceedings against or use in proceedings against the company Kirkam Co Limited, of Block A, 9th Floor, Unit 12, Proficient Industrial Centre, 6 Wang Kwun Road, Kowloon, Hong Kong.

I will also make orders in terms of paragraphs 1 to 6 of short minutes of orders initialled by me dated today and placed with the papers. I grant to the applicants leave to file an amended application and further amended statement of claim arising out of the joinder of Anspec Pty Limited as fifteenth respondent, and I note for the record that the proceedings are stood over for further directions to 6 July 1995 at 9.30 am before me.

I certify that this and the preceding 5 pages are a true copy of the Reasons for Judgment of the Honourable Justice Lindgren.

Associate:

Dated:6 June 1995

Heard: 4 May 1995

Place: Sydney

Decision: 4 May 1995

Appearances: Mr J J Garnsey QC instructed by Barker Gosling
as Sydney Agents for Davies Ryan De Boos appeared for the applicants.

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Citations

Allen & Hanburys Ltd v Pan Laboratories Pty Ltd [1995] FCA 361

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[1995] FCA 361

4 MAY 1995