Arbitron Inc. v Telecontrol Aktiengesellschaft
[2006] FCA 1664
•22 NOVEMBER 2006
FEDERAL COURT OF AUSTRALIA
Arbitron Inc. v Telecontrol Aktiengesellschaft [2006] FCA 1664
ARBITRON INC. v TELECONTROL AKTIENGESELLSCHAFT & ANOR
NSD627 OF 2005
EMMETT J
22 NOVEMBER 2006
SYDNEY
IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY
NSD627 OF 2005
BETWEEN:
ARBITRON INC
ApplicantAND:
TELECONTROL AKTIENGESELLSCHAFT
First RespondentA.C. NIELSEN (HOLDINGS) PTY LTD (ACN 008 417 874)
Second RespondentJUDGE:
EMMETT J
DATE OF ORDER:
22 NOVEMBER 2006
WHERE MADE:
SYDNEY
THE COURT ORDERS THAT:
1. PENDING FURTHER ORDER, THE FOLLOWING ORDERS AND DIRECTIONS SHALL APPLY TO EACH OF THE FOLLOWING:
(a)Information and documents designated as “Confidential” and disclosed during the course of the inspection at Griffith Hack Lawyers, Sydney on 17 October 2005 including, but not limited to, any notes or reports prepared as a result of the inspection and excluding EP 059 8682 and EP 088 7958 (“Inspection Documents”);
(b)Documents designated as “Confidential” in the First Respondent’s/Cross Claimant’s List of Documents dated 3 March 2006 and in its Supplementary List of Documents dated 28 April 2006 excepting documents numbered 31, 148, 149, 157 (excluding attachments), 162, 165, 169, 170, 174, 194, 198, 206, 207, 208, 209, 210, 212, 214, 215, 218, 240, 241 (“Discovered Documents”);
(c)Exhibits “APK-1 CONFIDENTIAL” (excluding EP 059 8682 and EP 088 7958), “APK-2 CONFIDENTIAL” and “APK-3 CONFIDENTIAL” to the affidavit of Andreas Patrick Koschak sworn on 10 May 2006, exhibit “APK-4 CONFIDENTIAL” to the affidavit of Andreas Patrick Koschak sworn on 21 July 2006, exhibit “DB-1 CONFIDENTIAL” to the affidavit of Daniel Battiston sworn on 18 September 2006, exhibit “OS‑1 CONFIDENTIAL” to the affidavit of Olivier Staub sworn on 17 November 2006, exhibit “DJB‑7 Confidential” to the affidavit of David John Bull sworn 29 June 2006, exhibit “DJB‑9 Confidential” to the affidavit of David John Bull sworn 20 September 2006 and exhibit “DJB‑11 Confidential” to the affidavit of David John Bull sworn 30 October 2006 (“Confidential Exhibits”),
(collectively referred to as the “Confidential Documents”).
2.The Confidential Documents, their contents and information contained in them, information derived from them or notes taken or reports or other documents generated from them, including copies of such documents as may be made by the Applicant, their counsel, their solicitors on the record, patent attorneys and their retained experts (“Confidential Information”), are confidential to the First Respondent/Cross Claimant and they and all and any information contained in them:
(a)must not be disclosed to the Applicant or anyone other than:
(i)counsel David Catterns QC and Sophie Goddard, solicitors Simon Williams and Gabriella Rubagotti, each of Spruson & Ferguson Lawyers, the solicitors on the record, and patent attorney Robert Miller of Spruson & Ferguson (each of whom shall be bound by this order) acting for and on behalf of or retained by the Applicant (“the Applicant’s legal advisers”);
(ii)Eugene Leo Flanagan III;
(iii)David John Bull; and
(iv)Dr Harvey Holmes;
(b)shall not be open to public inspection whilst filed or used in these proceedings; and
(c)shall be used only for the purposes of these proceedings.
3.Each of the Confidential Documents and the Confidential Information must be used, handled, kept and stored by the Applicant’s legal advisers authorised to hold them on behalf of the Applicant under this order, subject to the above order and to the following:
(a)a total of no more than 5 copies shall be made of the Inspection Documents (being also Discovered Documents having numbers 1-7, and 253-259 and exhibit “APK-1 CONFIDENTIAL”) such copies to be held and used as follows:
(i)2 copies to be held and used, one by each of counsel David Catterns QC and Sophie Goddard;
(ii)1 copy to be held and used among Simon Williams, Gabriella Rubagotti and Robert Miller;
(iii)1 copy to be kept for viewing by Dr Harvey Holmes, which is to be retained securely at the offices of the Applicant’s solicitors;
(iv)1 copy to be kept for viewing by David Bull, which is to be retained securely at the offices of the Applicant’s solicitors;
(b)no more than 7 copies shall be made of each of exhibit “APK-2 CONFIDENTIAL” and “APK-3 CONFIDENTIAL” and each of the Confidential Exhibits and such copies shall only be provided to the Applicant’s legal advisers, David Bull and Dr Harvey Holmes, and only when and if such person bona fide requires a copy for the purposes of review of the First Respondent’s evidence or preparation of the Applicant’s case in these proceedings;
(c)no more than 7 copies shall be made of a redacted copy of each of exhibit “APK-2 CONFIDENTIAL” and “APK-3 CONFIDENTIAL” (as supplied by the solicitors for the First Respondent/Cross Claimant under cover of letter dated 24 May 2006) and such copies shall only be provided to the Applicant’s legal advisers, David Bull and Dr Harvey Holmes, and only when and if such person bona fide requires a copy for the purposes of review of the First Respondent’s evidence or preparation of the Applicant’s case in these proceedings;
(d)no more than 4 copies shall be made of each of the Discovered Documents (with the exception of documents numbered 1-7 and 253-259) and such copies shall only be provided to Simon Williams, Gabriella Rubagotti, David Catterns QC and Sophie Goddard;
(e)of the copies of the Inspection Documents, Confidential Exhibits and Discovered Documents made, held and used in accordance with sub-paragraphs 3(a), (b), (c) and (d) above, 1 copy of each document or part of the document may be provided to Eugene Leo Flanagan III but only for the purposes and in accordance with the regime set out in paragraph 4 below;
(f)the Confidential Documents and the Confidential Information shall be used, handled, kept and stored in such a manner as will at all times preserve their confidentiality;
(g)none of the Confidential Documents nor any of the Confidential Information shall without the prior written consent of the First Respondent/Cross Claimant be disclosed to or inspected by any persons other than the Applicant’s legal advisers, David Bull, Dr Harvey Holmes and Eugene Leo Flanagan III (in the case of Eugene Leo Flanagan III, only in accordance with the regime set out in paragraph 4 below);
(h)if the Confidential Documents and the Confidential Information (to the extent retained by each of the Applicant’s legal advisers, David Bull, Dr Harvey Holmes and Eugene Leo Flanagan III Flanagan are not retained in that named person’s personal possession, they are to be retained in a secure place under that person’s control.
4.The Confidential Documents and Confidential Information may only be provided to, and used by, Eugene Leo Flanagan III in accordance with the following regime:
(a)as necessary preconditions to the disclosure of any of the Confidential Documents or Confidential Information to Eugene Leo Flanagan III, that:
(i)Eugene Leo Flanagan III Flanagan has first:
(1)submitted to the jurisdiction of the Federal Court of Australia (“Court”) and provided an undertaking to the Court in the form annexed and marked “A”; and
(2)provided a written undertaking in the form annexed and marked “A”, and executed all such documents as may be required before a United States notary and a United States court, or carried out such other procedure as may be necessary, so that a breach by him of any of these orders or the written undertaking would constitute contempt of the relevant United States court punishable on the application of one or more of the First Respondent and the Applicant’s Australian legal advisers; and
the Applicant’s solicitors have provided to the Court a description of the steps taken to fulfil the requirements of paragraph 4(a)(i) and confirmation that those steps have been fulfilled;
(ii)Senior Counsel for the Applicant has determined that it is necessary for the purpose of obtaining specific instructions for the Applicant’s case in these proceedings from Eugene Leo Flanagan III that a part of a Confidential Document or a Confidential Document be seen by Eugene Leo Flanagan III;
(b)upon the fulfilment of each of the preconditions specified in subparagraph 4(a), the Applicant’s legal advisers may make available to Eugene Leo Flanagan III by a secure means as will maintain the confidentiality of the documents, the Confidential Document or Documents or part identified by Senior Counsel in accordance with subparagraph 4(a)(ii) for the sole purpose of, and only to the extent necessary for, Senior Counsel to obtain the specific instructions determined by him in accordance with subparagraph 4(a)(ii) and only for the time necessary for Eugene Leo Flanagan III adequately to respond;
(c)Eugene Leo Flanagan III must return the Confidential Document or Documents or part so provided to the Applicant’s legal advisers promptly after having adequately responded to the specific matter on which instructions were sought, such return to be made by a secure means as will maintain the confidentiality of the documents;
(d)The process in paragraph 4(a) to 4(c) above may be repeated as necessary from time to time.
5.Simon Williams, the Applicant’s solicitor on the record in these proceedings, maintain an accurate record in writing of:
(a)each determination of Senior Counsel referred to in paragraph 4(a)(ii) above;
(b)the identity of any Confidential Document or part of a Confidential Document sent to Eugene Leo Flanagan III and the date of making that or those documents available to Eugene Leo Flanagan III;
(c)the date when each Confidential Document or part of a Confidential Document sent to Eugene Leo Flanagan III is returned to the Applicant’s legal advisers.
6.No affidavit filed by or on behalf of the Applicant in these proceedings shall contain any of the Confidential Documents or Confidential Information save in exhibits marked “Confidential Documents and/or Confidential Information (as the case may be) as defined in the order of the Honourable Justice Emmett dated 15 December 2006” to such an affidavit, and each such exhibit shall be confidential to the First Respondent/Cross Claimant and must not be used, inspected or disclosed by the Applicant or its legal advisers except as provided above and shall not be open to public inspection whilst filed or used in these proceedings.
7.Within 28 days of the final determination of these proceedings or any appeal therefrom and on the expiration of any applicable appeal periods, the Applicant’s solicitors shall take all necessary steps to retrieve from the Applicant’s counsel, patent attorneys and experts all of the Confidential Documents and Confidential Information and deliver up to the First Respondent/Cross Claimant’s solicitors, all of the Confidential Documents and the Confidential Information other than such of those documents as constitute instructions to or opinions, reports, notes or memoranda of counsel and solicitors, which such documents will be destroyed by the Applicant’s solicitors and notification under oath of such destruction is to be provided to the First Respondent Cross Claimant’s solicitors.
8.Each of Simon Williams, Gabriella Rubagotti, David Catterns QC, Sophie Goddard, Robert Miller, David Bull, Dr Harvey Holmes and Eugene Leo Flanagan III remains bound by these orders notwithstanding that any of them leaves the employ of the Applicant’s solicitors or ceases to be retained on behalf of the Applicant for these proceedings or leaves this jurisdiction. If any the above named persons so leaves the employ of the Applicant’s solicitors, ceases to be retained by the Applicant for these proceedings or leaves the jurisdiction or, in the case of Eugene Leo Flanagan III, leaves the jurisdiction of the United States of America (other than for the purposes of holiday or short term business or professional commitments), the Applicant’s solicitors must:
(a)deliver up forthwith to the First Respondent/Cross Claimant’s solicitors any of the Confidential Documents in that person’s possession, and
(b)destroy forthwith any Confidential Information in that person’s possession and notify under oath the First Respondent/Cross Claimant’s solicitors of such destruction.
9.The Applicant file and serve any supplementary affidavits in chief and affidavits in reply on infringement on or before 19 February 2007.
10.The Applicant file and serve any affidavits in answer on validity on or before 19 February 2007.
11.Stands the matter over for further directions on 9 February 2007 at 9:30am.
Date: 15 December 2006
_________________________________
Signed on behalf of the Applicant_________________________________
Signed on behalf of the First Respondent_________________________________
Signed on behalf of the Second Respondent“A”
1.
IN THE FEDERAL COURT OF AUSTRALIA )
NEW SOUTH WALES DISTRICT REGISTRY ) No. NSD 627 of 2005
ARBITRON INC.
Applicant/Cross-Respondent
TELECONTROL AKTIENGESELLSCHAFT
First Respondent/Cross-Claimant
AC NIELSEN (HOLDINGS) PTY LTD
Second Respondent/Cross-Claimant
CONFIDENTIALITY UNDERTAKING
I, EUGENE LEO FLANAGAN III, Esq, of Cowan, Lebowitz & Latman, P.C., 1133 Avenue of the Americas, New York, NY 100036-6799, patent attorney for the Applicant/ Cross Respondent in Federal Court of Australia Proceedings No. NSW 627 of 2005 UNDERTAKE:
1. THAT THIS UNDERTAKING APPLIES TO EACH OF THE FOLLOWING:
(a)Information and documents designated as “Confidential” and disclosed during the course of the inspection at Griffith Hack Lawyers, Sydney on 17 October 2005 including, but not limited to, any notes or reports prepared as a result of the inspection and excluding EP 059 8682 and EP 088 7958 (“Inspection Documents”);
(b)Documents designated as “Confidential” in the First Respondent’s/Cross Claimant’s List of Documents dated 3 March 2006 and in its Supplementary List of Documents dated 28 April 2006 excepting documents numbered 31, 148, 149, 157 (excluding attachments), 162, 165, 169, 170, 174, 194, 198, 206, 207, 208, 209, 210, 212, 214, 215, 218, 240, 241 (“Discovered Documents”);
(c)Exhibits “APK-1 CONFIDENTIAL” (excluding EP 059 8682 and EP 088 7958), “APK-2 CONFIDENTIAL” and “APK-3 CONFIDENTIAL” to the affidavit of Andreas Patrick Koschak sworn on 10 May 2006, exhibit “APK-4 CONFIDENTIAL” to the affidavit of Andreas Patrick Koschak sworn on 21 July 2006, exhibit “DB-1 CONFIDENTIAL” to the affidavit of Daniel Battiston sworn on 18 September 2006, exhibit “OS‑1 CONFIDENTIAL” to the affidavit of Olivier Staub sworn on 17 November 2006, exhibit “DJB‑7 Confidential” to the affidavit of David John Bull sworn 29 June 2006, exhibit “DJB‑9 Confidential” to the affidavit of David John Bull sworn 20 September 2006 and exhibit “DJB‑11 Confidential” to the affidavit of David John Bull sworn 30 October 2006 (“Confidential Exhibits”),
(collectively referred to as the “Confidential Documents”).
2.The Confidential Documents, their contents and information contained in them, information derived from them or notes taken or reports or other documents generated from them, including copies of such documents as may be made by the Applicant, their counsel, their solicitors on the record, patent attorneys and their retained experts ("Confidential Information"), are confidential to the First Respondent/Cross Claimant and they and all and any information contained in them:
(a)must not be disclosed to the Applicant or anyone other than:
(i)counsel David Catterns QC and Sophie Goddard, solicitors Simon Williams and Gabriella Rubagotti, each of Spruson & Ferguson Lawyers, the solicitors on the record, and patent attorney Robert Miller of Spruson & Ferguson (each of whom shall be bound by this order) acting for and on behalf of or retained by the Applicant (“the Applicant’s legal advisers”);
(ii)Eugene Leo Flanagan III;
(iii)David John Bull; and
(iv)Dr Harvey Holmes;
(b)shall not be open to public inspection whilst filed or used in these proceedings; and
(c)shall be used only for the purposes of these proceedings.
3.Each of the Confidential Documents and the Confidential Information must be used, handled, kept and stored by the Applicant’s legal advisers authorised to hold them on behalf of the Applicant under this order, subject to the above order and to the following:
(a)a total of no more than 5 copies shall be made of the Inspection Documents (being also Discovered Documents having numbers 1-7, and 253-259 and exhibit “APK-1 CONFIDENTIAL”) such copies to be held and used as follows:
(i)2 copies to be held and used, one by each of counsel David Catterns QC and Sophie Goddard;
(ii)1 copy to be held and used among Simon Williams, Gabriella Rubagotti and Robert Miller;
(iii)1 copy to be kept for viewing by Dr Harvey Holmes, which is to be retained securely at the offices of the Applicant’s solicitors;
(v)1 copy to be kept for viewing by David Bull, which is to be retained securely at the offices of the Applicant’s solicitors;
(b)no more than 7 copies shall be made of each of exhibit “APK-2 CONFIDENTIAL” and “APK-3 CONFIDENTIAL” and each of the Confidential Exhibits and such copies shall only be provided to the Applicant’s legal advisers, David Bull and Dr Harvey Holmes, and only when and if such person bona fide requires a copy for the purposes of review of the First Respondent’s evidence or preparation of the Applicant’s case in these proceedings;
(c)no more than 7 copies shall be made of a redacted copy of each of exhibit “APK-2 CONFIDENTIAL” and “APK-3 CONFIDENTIAL” (as supplied by the solicitors for the First Respondent/Cross Claimant under cover of letter dated 24 May 2006) and such copies shall only be provided to the Applicant’s legal advisers, David Bull and Dr Harvey Holmes, and only when and if such person bona fide requires a copy for the purposes of review of the First Respondent’s evidence or preparation of the Applicant’s case in these proceedings;
(d)no more than 4 copies shall be made of each of the Discovered Documents (with the exception of documents numbered 1-7 and 253-259) and such copies shall only be provided to Simon Williams, Gabriella Rubagotti, David Catterns QC and Sophie Goddard;
(e)of the copies of the Inspection Documents, Confidential Exhibits and Discovered Documents made, held and used in accordance with sub-paragraphs 3(a), (b), (c) and (d) above, 1 copy of each document or part of the document may be provided to me but only for the purposes and in accordance with the regime set out in paragraph 4 below;
(f)the Confidential Documents and the Confidential Information shall be used, handled, kept and stored in such a manner as will at all times preserve their confidentiality;
(g)none of the Confidential Documents nor any of the Confidential Information shall without the prior written consent of the First Respondent/Cross Claimant be disclosed to or inspected by any persons other than the Applicant’s legal advisers, David Bull, Dr Harvey Holmes and Eugene Leo Flanagan III (in my case, only in accordance with the regime set out in paragraph 4 below);
(h)if the Confidential Documents and the Confidential Information (to the extent retained by me) are not retained in my personal possession, they are to be retained in a secure place under my control.
4.The Confidential Documents and Confidential Information may only be provided to, and used by, me in accordance with the following regime:
(a)as necessary preconditions to the disclosure of any of the Confidential Documents or Confidential Information to me, that:
(i)I have first:
(1)submitted to the jurisdiction of the Federal Court of Australia (“Court”) and provided this undertaking to the Court ; and
(2)provided a written undertaking in this form, and executed all such documents as may be required before a United States notary and a United States court, or carried out such other procedure as may be necessary, so that a breach by me of this undertaking or any of the orders of the Federal Court made 15 December 2006 (‘Orders’) would constitute contempt of the relevant United States court punishable on the application of one or more of the First Respondent and the Applicant’s Australian legal advisers; and
the Applicant’s solicitors have provided to the Court a description of the steps taken to fulfil the requirements of paragraph 4(a)(i) and confirmation that those steps have been fulfilled;
(b)upon the fulfilment of each of the preconditions specified in subparagraph 4(a), the Applicant’s legal advisers may make available to me, Eugene Leo Flanagan III, by a secure means as will maintain the confidentiality of the documents, the Confidential Document or Documents or part identified by Senior Counsel in accordance with subparagraph 4(a)(ii) of the Orders for the sole purpose of, and only to the extent necessary for, Senior Counsel to obtain the specific instructions determined by him in accordance with subparagraph 4(a)(ii) of the Orders and only for the time necessary for me adequately to respond;
(c)I, Eugene Leo Flanagan III, must return the Confidential Document or Documents or part so provided to the Applicant’s legal advisers promptly after having adequately responded to the specific matter on which instructions were sought, such return to be made by a secure means as will maintain the confidentiality of the documents;
(d)The process in paragraph 4(a) to 4(c) above may be repeated as necessary from time to time.
5.No affidavit filed by or on behalf of the Applicant in these proceedings shall contain any of the Confidential Documents or Confidential Information save in exhibits marked “Confidential Documents and/or Confidential Information (as the case may be) as defined in the order of the Honourable Justice Emmett dated 15 December 2006” to such an affidavit, and each such exhibit shall be confidential to the First Respondent/Cross Claimant and must not be used, inspected or disclosed by the Applicant or its legal advisers except as provided above and shall not be open to public inspection whilst filed or used in these proceedings.
6.Within 28 days of the final determination of these proceedings or any appeal therefrom and on the expiration of any applicable appeal periods, the Applicant’s solicitors shall take all necessary steps to retrieve from the Applicant’s counsel, patent attorneys and experts all of the Confidential Documents and Confidential Information and deliver up to the First Respondent/Cross Claimant’s solicitors, all of the Confidential Documents and the Confidential Information other than such of those documents as constitute instructions to or opinions, reports, notes or memoranda of counsel and solicitors, which such documents will be destroyed by the Applicant’s solicitors and notification under oath of such destruction is to be provided to the First Respondent Cross Claimant’s solicitors.
7.I remain bound by this undertaking notwithstanding that I cease to be retained on behalf of the Applicant for these proceedings or leave the jurisdiction of the United States of America (other than for the purposes of holiday or short term business or professional commitments). If I cease to be retained by the Applicant for these proceedings or leave the jurisdiction of the United States of America (other than for the purposes of holiday or short term business or professional commitments), I undertake that I will:
(a)deliver up forthwith to the Applicant’s legal advisers any of the Confidential Documents in my possession, and
(b)destroy forthwith any Confidential Information in my possession and notify under oath the Applicant’s legal advisers of such destruction.
8.I hereby submit to the jurisdiction of the Federal Court in respect of this undertaking and any enforcement thereof.
9.I will execute all such documents as may be required before a United States or New York State notary or a United States or New York State court including, in particular, an undertaking that should the Federal Court or any party seek to enforce in a court of the State of New York a judgment of the Federal Court, to the effect that I have breached this undertaking, I will and hereby do, waive any objection to jurisdiction or venue or the enforceability of that judgment in such United States or New York State court so that this undertaking may, therefore, be enforced.
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
NSD627 OF 2005
BETWEEN:
ARBITRON INC.
ApplicantAND:
TELECONTROL AKTIENGESELLSCHAFT
First Respondent
A.C. NIELSEN (HOLDINGS) PTY LTD (ACN 008 417 874)
Second RespondentJUDGE:
EMMETT J
DATE:
22 NOVEMBER 2006
PLACE:
SYDNEY
REASONS FOR JUDGMENT
The applicant, Arbitron Inc, is the registered proprietor of Australian Patent Number 747044 (‘the Patent’), which is a method and system for recognition of broadcast signals. Arbitron claims that the first respondent, Telecontrol Aktiengesellschaft (‘Telecontrol’), has infringed the Patent, either alone or in conjunction with the second respondent, AC Nielson Holdings Pty Limited (‘AC Nielson’). Telecontrol has filed a cross-claim seeking a declaration that the Patent is invalid and an order revoking the Patent. The Patent concerns an area of considerable complexity relating to specific audience measurement technology. It involves the application of digital signal processing to audience measurement technology.
Arbitron says that a device sold or supplied by Telecontrol, known variously as a watch meter, media watch, a radio control or a media control, infringes the patent. To determine whether there is infringement it will be necessary to examine the precise operation of the device. Telecontrol claims that the workings of the device are highly confidential and that the disclosure of information relating to the workings of the device would be extremely prejudicial to it. The technology and know how relating to the operation of the device. it says, are extremely valuable and are not otherwise publicly available. There is a dispute as to the extent to which all of the relevant information presently in dispute is public.
Telecontrol seeks orders restricting access to and disclosure of material that has been discovered or brought into existence in connection with the proceeding. Several categories of confidential documents have been identified in respect of which Telecontrol seeks orders of confidentiality. The first category, described as the Inspection Documents, consists of information or documents designated as confidential and disclosed during the course of the inspection at Telecontrol’s solicitor’s office on 17 October 2005 including, but not limited to, notes or reports prepared as a result of the inspection.
The second category, described as the Discovered Documents, are documents designated as confidential in Telecontrol’s list of documents dated 3 March 2006, and in a supplementary list of documents dated 28 April 2006, excepting a number of the documents in those lists.
The third category, referred to as Confidential Exhibits, consists of exhibits APK1, APK2 and APK3 to the affidavit of Andreas Patrick Koschak, sworn 10 May 2006, exhibit APK4 to the affidavit of Mr Koschak, sworn 21 July 2006, exhibit DB1 to the affidavit of Daniel Battiston, sworn 18 September 2006 and exhibit OS1 to the affidavit of Olivier Staub, sworn 17 November 2006.
Without conceding the confidentiality of all of the confidential documents, Arbitron is prepared to submit to confidentiality orders whereby disclosure is limited to identified lawyers and experts, being senior and junior counsel, identified solicitors and Mr David Bull and Dr Harvey Holmes. However, Arbitron is prepared to make that concession only if it is also permitted to disclose the documents to a New York attorney who is also a patent attorney, Mr Eugene Leo Flanagan III. Mr Flanagan is Arbitron’s attorney at law. He has that relationship with Arbitron both in relation to this proceeding and a number of other matters.
Mr Flanagan is a partner in the firm of Cowan, Leibowitz and Latman PC, where he has been a partner since August 2004. Prior to joining that firm he worked with the firm of St Albans Stewart Johnston and Reams LLc in Stamford, Connecticut. Mr Flanagan has had more than 30 years experience in patent trademark and copyright prosecution, counselling and litigation. His particular area of expertise is computer internet electronics and electronic technologies. He has also had experience in planning and building domestic and international patent portfolios and in drafting contracts pertaining to the international transfer of technology.
Mr Flanagan was first admitted to the New York Bar in February 1976. Upon his admission to the New York Bar, his status before the United States Patent and Trademark Office, where he had been a patent agent, was changed to patent attorney. As an attorney admitted to practice by the Courts of New York, he is bound by the Code of Conduct of the New York State Bar Association. As a patent attorney, he is subject to the rules of the United States Patent and Trademark Office governing the conduct of representatives before that office.
In addition to his legal qualifications, Mr Flanagan has the degree of Bachelor of Electrical Engineering from Manhattan College, which he was awarded in 1972. Mr Flanagan provides advice to a number of clients of Cowan, Leibowitz and Latman, as both attorney at law and patent attorney. He acts for many clients who engage in litigation and conduct business within and outside the United States. Mr Flanagan has had considerable experience in relation to the technology of the subject of the patent in suit. In particular, he has had experience in relation to the consideration of complex electronic circuitry-related software including algorithms and source codes.
Mr Flanagan instructed Arbitron's solicitors in this proceeding, Spruson and Ferguson, and is, in effect, the conduit between Arbitron and the Australian lawyers involved in the proceeding. He acts in the capacity as Arbitron’s agent in giving instructions to the Australian lawyers in relation to technical aspects and in particular on the issue of infringement. In order to be in a position to provide proper instructions, to Spruson and Ferguson and counsel, in the conduct of the proceeding with respect to technical matters including infringement, Mr Flanagan wishes to have access to the confidential documents.
The Patent concerns a complicated technology and its application and counsel for Arbitron in the proceeding consider that they are unreasonably disadvantaged by not having Mr Flanagan's contribution available in the preparation and conduct of the proceeding. They point out that Mr Koschak’s evidence asserts that Telecontrol’s device is fundamentally different from the invention claimed in the Patent. That is disputed by evidence of Mr David Bull. Counsel consider, however, that they are unable to make a judgment without assistance from Mr Flanagan concerning Mr Bull's expertise and evidence. They do not wish to be in a position where they are required to advise Arbitron on the matter, including whether to proceed with the proceeding, without informed contribution on technical issues from Mr Flanagan.
While Mr Flanagan has acted for Arbitron for approximately 16 years, he has never been employed by Arbitron and has always acted as an independent patent attorney. He has no commercial interest in the industry of electronic commercial media monitoring and has no desire to conduct business in the industry in the future.
In the ordinary course of providing technical advice to clients in connection with the lodgement of patent applications, it is not unusual for him to identify potentially new and useful aspects of an existing invention which are worth of incorporation into relevant patent applications and specifications. In those circumstances, United States law requires him to be identified as a co‑inventor of the relevant application. Accordingly, Mr Flanagan is the named inventor or co-inventor in a number of United States patents. However, such inventions or applications are always assigned by Mr Flanagan to his client.
Mr Flanagan was instrumental in the preparation of the specification for the Patent. He has been engaged by Arbitron to provide advice to Arbitron and to Arbitron’s Australian lawyers on the technical aspects of the subject matter of the Patent. He has always been engaged to act as Arbitron’s agent in providing instructions to the Australian lawyers and in conveying advice of a technical nature to Arbitron concerning the conduct of the proceeding.
Mr Flanagan considers that, for the efficient running of the proceeding and in order to look after the interests of Arbitron, he should be aware of all of the issues that arise in the proceeding and that he be in a position to provide technical advice, which he can do only if properly informed and instructed. The technical advice that he wants to be in a position to provide is concerned specifically with the alleged infringement and to a lesser extent, alleged invalidity. Mr Flanagan considers himself unable, on the basis of the information presently available to him, to advise Arbitron on the question of infringement, nor does he consider himself sufficiently informed to be able to advise Arbitron on Telecontrol’s basis for alleging that the Patent is invalid.
Telecontrol opposes any regime whereby the confidential documents could be made available to Mr Flanagan. It is concerned about the continuing relationship between Mr Flanagan and Arbitron as lawyer and client, and that that relationship could lead, even inadvertently, to disclosure of highly sensitive information. Merely by considering the material contained in the confidential documents Mr Flanagan could become aware of concepts and ideas, the disclosure of which might be prejudicial to Telecontrol. Further, Mr Flanagan is not immediately amenable to the jurisdiction of the Federal Court, since he is a resident of the United States. Nevertheless, Mr Flanagan is bound by codes of conduct applicable to professional practitioners.
The question presently before me involves the balancing of conflicting expedients. Arbitron is entitled to be protected against infringement of the Patent. If Telecontrol is, in fact, infringing, it should not be permitted to shelter behind alleged confidentiality. On the other hand, if Telecontrol is not infringing, it is entitled to maintain the confidentiality associated with its device. A litigant is entitled, unless there are good reasons to the contrary, to be fully informed as to the issues both at a general and a specific level that are raised in the proceeding. More particularly, any litigant is entitled to know what evidence is being adduced against it in order to be able to give instructions to counter such evidence.
The matter has proceeded before me, thus far, on an assumption against the contention advised by Arbitron that not all of the confidential documents are in fact confidential. I have proceeded on the assumption that the assertion made by Telecontrol can be made out, namely that all of the confidential documents are confidential and that their disclosure would be extremely prejudicial. Nevertheless, I am persuaded that in order to permit Arbitron to conduct this proceeding, both in its claim of infringement and in answering the claim of invalidity, it ought to have the benefit of its New York patent attorney as the effective instructor for its Australian legal team.
On the other hand, having regard to the assumption that I have made for present purposes, steps must be taken to ensure that the legitimate commercial interest of Telecontrol is not unfairly interfered with. Mr Flanagan has intimated, by affidavits that have been filed and read in connection with this application, that he is prepared to give to the Court undertakings concerning confidentiality in relation to the confidential documents, insofar as they may be made available to him. Mr Flanagan has intimated his willingness to execute such documents as may be required before a United States notary and a United States Court, the effect of the breach of which would be to constitute a contempt of the relevant United States Court.
A specific concern of Telecontrol is the increase of the risk of inadvertent disclosure by a proliferation of copies of confidential documents. The regime that is proposed involves limitation of the number of copies of the confidential documents that can be made. Thus, at present, it is proposed that no more than five copies be made of the Inspection Documents, no more than seven copies be made of the Confidential Exhibits and no more than four copies be made of the Discovered Documents. The regime proposed involves the manner in which those various copies are to be dealt with.
I consider that the interests of justice would be served if the Australian lawyers are permitted to provide to Mr Flanagan such of the confidential information and material as is necessary for the purpose of providing specific instructions requested by them. Upon Mr Flanagan giving an appropriate undertaking to this Court concerning the confidentiality of any of the confidential documents and executing such documents as may be required to ensure that a breach of that undertaking would constitute a contempt of a United States court exercising superior jurisdiction, I propose to direct that Spruson and Ferguson may make available to Mr Flanagan one of the existing copies of such of the confidential documents as senior counsel for Arbitron determines are necessary for the purpose of obtaining specific instructions from Mr Flanagan requested by senior counsel in connection with the conduct of the proceeding. Once there has been an adequate response to the specific request for instructions, the copies of such confidential documents are to be returned to Spruson & Ferguson. Otherwise, the other directions concerning confidentiality proposed by the further amended notice of motion should be made.
I certify that the preceding twenty-one (21) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Emmett. Associate:
Dated: 1 December 2006
Counsel for the Applicant: Ms S Goddard Solicitor for the Applicant: Spruson & Ferguson Counsel for the First Respondent: Ms J Baird Solicitor for the First Respondent: Griffith Hack Date of Hearing: 22 November 2006 Date of Judgment: 22 November 2006
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