FEDERAL COURT OF AUSTRALIA
Apple Inc. v Samsung Electronics Co. Limited (No 2) [2012] FCA 1358
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- Case
- [2012] FCA 1358
- Decision Date
CaseChat Overview and Summary
The court was tasked with deciding several legal issues, including whether certain documents were privileged and whether partial disclosure had resulted in the waiver of privilege. Samsung claimed privilege over certain documents, asserting that they were created in reasonable contemplation of litigation and for the purpose of obtaining legal advice. Apple challenged the basis of this claim, arguing that Samsung’s representative lacked personal knowledge of the documents and their creation. Additionally, Apple contended that partial disclosure of privileged documents resulted in a waiver of privilege. The court had to determine whether Samsung's claim for privilege was valid and whether the partial disclosure of certain documents warranted a finding of waiver.
The court found that Samsung's claim for privilege was established for the documents in question, as they were created in reasonable contemplation of litigation and for the purpose of obtaining legal advice. However, the court also determined that privilege had been waived with respect to certain annexures due to partial disclosure. The court examined the nature of the documents and the circumstances of their creation, concluding that there was a real prospect of litigation when the documents were produced. The court rejected Samsung's arguments regarding waiver, finding that the partial disclosure of the documents resulted in the loss of privilege for those specific parts of the documents. The court provided the parties with an opportunity to review the judgment and make submissions on confidentiality before it was made publicly available.
The court vacated Order 2 of the orders made by Cowdroy J on 30 November 2012 and noted that the confidentiality regime agreed to by the parties remained in place. The court's decision highlighted the importance of personal knowledge and the circumstances of document creation in determining the validity of privilege claims, while also underscoring the consequences of partial disclosure in the context of litigation.
Orders
Orders of the court
1. Order 2 of the orders made by Cowdroy J on 30 November 2012 be vacated.
THE COURT NOTES THAT:
2. The confidentiality regime agreed to by the parties remains in existence between the parties.
Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.
Background
Background to the litigation
Evidence
Evidence Before The Court
Full text does not contain this section.
Decision
Reasons for decision
Ratio Decidendi
Legal Principle Established
The Court also considers that the decision of Batt JA provides a more realistic and contemporary approach to resolve issues arising under privilege claim, as did Lander J in Prysmian at [26]. It respectfully adopts such test. It is necessary for the Court to determine whether there was a real prospect of the litigation when the subject documents were created in order to justify a claim for privilege.CONSIDERATION The Court will now consider the issues raised by Apple in opposition to Samsung’s claim for privilege.(a) Lack of personal knowledge of content There is no evidence that Mr Kim has any personal knowledge of the contents of many of the documents, nor personal knowledge as to whether it can properly be said that each one of them has been brought into existence at a time when litigation was reasonably contemplated or produced by its author for the dominant purpose of obtaining legal advice or for the conduct of the anticipated litigation. As to his actual involvement in the preparation of Annexure D, Mr Kim deposes at [26]-[28] of his second affidavit:Due to the technical nature of the dispute with Apple, many of the documents created for the purpose of providing legal advice to Samsung’s senior management about the dispute contained input from both lawyers and non-legal staff, in particular from registered patent attorneys but also from other technical analysts and licencing specialists. This is almost always the case where a document contains an evaluation or analysis of the strength of Samsung’s or another party’s patents.The patent analyses to which I refer above at paragraphs 20(d) and 26 above are created by the Technology Analysis Group in IP Center. The head of the Technology Analysis Group is Mr Beyong Ho Yuu, who is a qualified US legal attorney. Mr Yuu supervises a number of Korean patent attorneys and another qualified US legal attorney. Mr Yuu is responsible for the final form of all patent analyses created by the Technology Analysis Group.The patent analyses are prepared for the purposes of Samsung’s in-house counsel advising on the strength of the claims or defences relating to particular patents. The analyses are also used to form the basis of instructions to Samsung’s external counsel for the purposes of obtaining legal advice from them. From time to time I have attended meetings of IP Center executives at which such patent analyses have been discussed. The IP Center executives who have been present at these meetings, include Dr Seung Ho Ahn, Mr Seong-Yoon (Brian) Kim, Mr Beyong Ho Yuu, Mr Kijoong Kang and Mr Jaewan Chi, all of whom are qualified as legal attorneys in one jurisdiction or another. Mr Kim does not state that he has personally inspected the documents to verify his statements claiming privilege. In respect of the documents he did not create, his opinions rely entirely upon statements by other parties of whom he states that he has made inquiries. It is not even clear that the persons of whom he made inquiries themselves have personal knowledge of the purpose for which the documents were created. Mr Kim merely states that his ‘views… are based upon my direct involvement in the dispute’. He also states that he became ‘directly involved in the dispute’ in late 2010 and that ‘from at least that time believed that Apple would sue Samsung for alleged patent infringement and related claims’.