Attorney General for Western Australia v Fletcher
[2023] WASC 346
JURISDICTION : SUPREME COURT OF WESTERN AUSTRALIA
IN CIVIL
CITATION: ATTORNEY GENERAL FOR WESTERN AUSTRALIA -v- FLETCHER [2023] WASC 346
CORAM: ACTING MASTER MCDONALD
HEARD: 18 AUGUST 2023
DELIVERED : 11 SEPTEMBER 2023
FILE NO/S: CIV 1889 of 2023
BETWEEN: ATTORNEY GENERAL FOR WESTERN AUSTRALIA
Applicant
AND
SUE FLETCHER
Respondent
Catchwords:
Evidence - Letter of request from a foreign court for assistance in obtaining evidence - Legislative scheme - Whether application required to be heard ex parte - Orders for production of documents - Request cannot be in the nature of discovery - Whether request of sufficient particularity - Ability to amend request from foreign court - Evidence Act 1906 (WA) s 116, s 117
Legislation:
Evidence Act 1906 (WA)
Rules of the Supreme Court 1971 (WA)
Result:
Application allowed in part
Category: B
Representation:
Counsel:
| Applicant | : | P Femia |
| Respondent | : | SM Murphy |
Solicitors:
| Applicant | : | State Solicitor's Office |
| Respondent | : | DLA Piper Australia - Perth |
Cases referred to in decision:
Application by the Attorney General of NSW [2021] NSWSC 857
Application of Computer Sciences Corporation under the Evidence on Commission Act 1995 (NSW) [2017] NSW 810
Application of Computer Sciences Corporation under the Evidence on Commission Act 1995 (NSW) [2019] NSWSC 777
Application of Monier Inc [2009] NSWSC 986; (2009) 76 NSWLR 158
Application of Securities and Exchange Commission of USA under Evidence on Commission Act 1995 (NSW) (No 2) [2020] NSWSC 1500
British American Tobacco (Investments) Limited v Sharon Y Eubanks for the United States of America [2004] NSWCA 158
Gredd v Arpad Busson [2003] EWHC 3001
Hamersley Iron Ltd Dyer v The Sanko Steamship Co Ltd [1981] WAR 113
International Finance Trust Co Ltd v New South Wales Crimes Commission (2009) 240 CLR 319; [2009] HCA 49
Pickles v Gratzon [2002] NSWSC 688; 55 NSWLR 533
R v Camden London Borough Council; ex parte Martin [1997] 1 All ER 307
Re Asbestos Insurance Coverage Cases [1985] 1 WLR 331
Re Fairfax Financial Holdings Ltd [2011] NSWSC 223
Rio Tinto Plc v Vale SA [2015] EWHC 1865
Rio Tinto Zinc Corporation v Westinghouse Electric Corporation [1978] AC 547
The Application of Nicholas Basil Cannar; Re Sharon Y Eubanks, being the person nominated by the United States District Court for the District of Columbia in proceedings United States of America v Phillip Morris Incorporated et al Civil Action No.99-CV-2496 (GK), for the purposes of applying for orders under section 33 of the Evidence on Commission Act 1995 [2003] NSWSC 802
Thomas A Edison Ltd v Bullock (1912) 15 CLR 679
Waugh Hotel Management Pty Ltd v Marrickville Council
Zucal v Harper (2005) 29 WAR 563
Table of Contents
US Proceedings
The application and procedural history
Legal issues
Legislative framework
Hague Convention of 18 March 1970 on the Taking of Evidence Abroad in Civil or Commercial Matters
Evidence Act1906 (WA)
Order 39 of the Rules of the Supreme Court 1971
Standing of the respondent
Consideration of right of the respondent to appear
Compliance with the Evidence Act
The Request
Applicant's Submissions
Respondent's Submissions
Disposition in relation to the Production Orders
Reframing the Request
Orders
ACTING MASTER MCDONALD:
On 1 August 2023, the Honourable Judge Gregory B Williams of the United States District Court of Delaware issued a Request for International Assistance pursuant to the Hague Convention of 18 March 1970 on the Taking of Evidence Abroad in Civil or Commercial Matters (the Request).
On 9 August 2023 the Attorney General of Western Australia (the applicant), on instructions from the Attorney-General (Cth), applied for orders pursuant to s 116 and s 117 of the Evidence Act 1906 (WA) (Evidence Act) for the examination of Professor Sue Fletcher (the respondent), for the production of documents referred to in the Request and for leave to issue subpoenas to compel the same.[1]
[1] The parties to the US proceedings are referred to as the plaintiff and defendant. To avoid confusion the parties to this application will be referred to as the applicant and respondent.
The application is supported by the affidavits of Ms Patricia Anna Femia affirmed on 9 August 2023 (First Femia Affidavit) and 17 August 2023 (Second Femia Affidavit).
US Proceedings
The case before Judge Williams in the District Court of Delaware (the US Proceedings) is a patent infringement action between Nippon Shinyaku Co Ltd (Nippon Shinyaku), the plaintiff in the action, and Sarepta Therapeutics Inc (Sarepta), the defendant in the action. Sarepta and the University of Western Australia (UWA) are plaintiffs by counterclaim and Nippon Shinyaku and NS Pharma Inc are defendants by counterclaim.[2]
[2] First Femia Affidavit [7], 'Annexure A' (11).
The US Proceedings involve patents for antisense oligonucleotide treatments for Duchenne's muscular dystrophy (DMD). Nippon Shinyaku and Sarepta are in direct competition in that each provide these types of therapies for the treatment of DMD and are the only companies with approval from the United States Food and Drug Administration to market oligonucleotide therapies that induce exon 53‑skipping for the treatment of DMD.[3]
[3] First Femia Affidavit [7], 'Annexure A' (11).
Nippon Shinyaku owns a number of US patents in relation to therapies for the treatment of DMD. UWA also owns a number of patents in relation to the same therapies. Sarepta is the exclusive licensee for the UWA patents. Nippon Shinyaku commenced the US Proceedings in July 2021 alleging that Sarepta's product infringes its patents. Sarepta and UWA have alleged in counterclaims that Nippon Shinyaku's product infringes the UWA patents.
The UWA patents name three inventors one of whom is the respondent in this application. The trial in the US Proceedings is set down for May 2024.
The Request asks that Professor Sue Fletcher, who is not a party to the US Proceedings, who resides in Western Australia and who was formerly employed by UWA:
(a)make herself available to give evidence on a date and time nominated by an examiner appointed by this court and submit to an examination conducted by legal counsel for the parties in Case C.A. No. 21-1015-GBW in the United States District Court of Delaware (the Examination Orders);[4] and
(b)produce the documents set out in four bullet points at page 8 of the Request at Part VI(A) (Production Orders),[5] which are set out verbatim later in these reasons.
[4] First Femia Affidavit 'Annexure A' (14 - 16).
[5] First Femia Affidavit 'Annexure A' (14).
The Examination Orders are not contested. In dispute are the Production Orders. The respondent submits that the documents described in the first three of the four bullet points in the Request go beyond what this court can order pursuant to s 117(6)(b) of the Evidence Act.
The application and procedural history
On 9 August 2023, the applicant filed an ex parte originating motion seeking orders under s 116 and s 117 of the Evidence Act and O 39 of the Rules of the Supreme Court 1971 (WA) (RSC) supported by the First Femia Affidavit, a certificate of urgency and a minute of proposed orders.
The matter was originally listed for hearing on 10 August 2023, together with a related request seeking the examination of different respondents.[6] On 10 August 2023, the respondent filed a memorandum of appearance and at the hearing on 10 August 2023, sought to be heard in opposition to the application insofar as it related to the Production Orders. The Examination Orders were the subject of minor amendments to which there was no objection.
[6] The related application in CIV 1796 of 2023 was originally filed on 24 July 2023 and at the request of the Attorney General was adjourned to 9 August 2023 in anticipation of the filing of this application, so that the applications could be dealt with together.
The applicant's preliminary submission was that the hearing is required to be ex parte and the respondent had no standing to appear. It was submitted that the orders sought by the applicant should be made and the appropriate time to raise any objection to the Production Orders is once the subpoena has issued pursuant to those orders.
In the alternative, counsel for the applicant indicated she had only been made aware of the respondent's intention to appear and object to the Production Orders upon the filing of the appearance on the day of the hearing. If the court intended to hear from the respondent and refuse the orders based on the objections raised, the applicant sought further time in which to respond to those objections. The matter was relisted on 18 August 2023, to enable the parties to make submissions including in relation to the standing issue.
For completeness, during the hearing on 10 August 2023, counsel for Nippon Shinyaku, the plaintiff in the US Proceedings, and the party who sought the Request before the District Court of Delaware, foreshadowed an intention to intervene, to make submissions in relation to the scope of the Request and possible amendments to orders sought.[7]
[7] ts 11.
At that stage, and in light of the applicant's submission the proceedings should be ex parte, I did not consider it appropriate that submissions be made by one of the parties in the US Proceedings in the absence of the other parties about possible amendments to the Request issued by the District Court of Delaware. At the time, I considered the only issue was whether the orders sought by the Request can be made pursuant to the Evidence Act. If they cannot, that is a matter that would need to be addressed by the District Court of Delaware upon hearing from all the parties in that action.
On 14 August 2023, the respondent filed submissions and on 17 August 2023 the applicant filed submissions and the Second Femia Affidavit. The Second Femia Affidavit annexes a letter from the solicitors for Nippon Shinyaku, the plaintiff in the US Proceedings. The letter 'addresses matters set out in the [respondent's] submissions and sets out material pertinent to the need for the court to deal urgently with the application.'[8] Ms Femia deposes that while Nippon Shinyaku are not parties to this application there has been ongoing conferral between the applicant and the solicitors for the respondent and Nippon Shinyaku for the purposes of resolving the application as expeditiously as possible.[9]
[8] Second Femia Affidavit [5], 'Annexure A'.
[9] Second Femia Affidavit [5]-[6].
Legal issues
The issues raised by the application are whether:
(a)the respondent has standing to appear to object to the making of the orders sought in the Request; and
(b)the Production Orders sought in the Request comply with s 117(6)(b) of the Evidence Act.
Legislative framework
Hague Convention of 18 March 1970 on the Taking of Evidence Abroad in Civil or Commercial Matters
Australia ratified the Hague Convention of 18 March 1970 on the Taking of Evidence Abroad in Civil or Commercial Matters (the Convention) on 23 October 1992.
Relevantly, Article 1 of the Convention provides:
In civil or commercial matters a judicial authority of a Contracting State may, in accordance with the provisions of the law of that State, request the competent authority of another Contracting State, by means of a Letter of Request, to obtain evidence, or to perform some other judicial act.
A Letter shall not be used to obtain evidence which is not intended for use in judicial proceedings, commenced or contemplated.
The expression 'other judicial act' does not cover the service of judicial documents or the issuance of any process by which judgments or orders are executed or enforced, or orders for provisional or protective measures.
The Convention establishes methods of co-operation for the taking of evidence abroad in civil or commercial matters between the signatories.
Article 2 of the Convention sets out that each contracting country (State) designates a central authority to both receive and transmit letters of request from other States.
The Attorney-General's Department of the Commonwealth of Australia is appointed as the central authority in Australia.
The Commonwealth Attorney-General's Department liaises with the Attorney General for the State of Western Australia (the Attorney General) in respect to incoming letters of request under the Convention via the State Solicitor's Office of Western Australia.
Article 3 of the Convention confirms that a letter of request made pursuant to the Convention shall specify:
(a)the authority requesting its execution and the authority requested to execute it, if known to the requesting authority;
(b)the names and addresses of the parties to the proceedings and their representatives, if any;
(c)the nature of the proceedings for which the evidence is required, giving all necessary information in regard thereto;
(d)the evidence to be obtained or other judicial act to be performed.
Where appropriate, the letter of request shall specify, among other things:
(a)the names and addresses of the persons to be examined;
(b)the questions to be put to the persons to be examined or a statement of the subject matter about which they are to be examined;
(c)the documents or other property, real or personal, to be inspected;
(d)any requirement that the evidence is to be given on oath or affirmation, and any special form to be used; and
(e)any special method or procedure to be followed under Article 9.
Article 9 of the Convention states that:
The judicial authority which executes a Letter of Request shall apply its own law as to the methods and procedures to be followed.
However, it will follow a request of the requesting authority that a special method or procedure be followed, unless this is incompatible with the internal law of the State of execution or is impossible of performance by reason of its internal practice and procedure or by reason of practical difficulties.
A Letter of Request shall be executed expeditiously.
Australia's accession to the Convention is subject to the qualification in Article 23, namely that:
A Contracting State may … declare that it will not execute Letters of Request issued for the purpose of obtaining pre-trial discovery of documents as known in Common Law countries.[10]
[10] The Convention Article 23; The Application of Nicholas Basil Cannar; Re Sharon Y Eubanks, being the person nominated by the United States District Court for the District of Columbia in proceedings United States of America v Phillip Morris Incorporated et al Civil Action No.99-CV-2496 (GK), for the purposes of applying for orders under section 33 of the Evidence on Commission Act 1995 [2003] NSWSC 802 [144].
With reference to Article 23, the Request in this application states, at least insofar as it relates to the examination of Professor Fletcher, as follows:[11]
The Court considers that the evidence sought is directly relevant to the issues in dispute as described in the Complaint and Answer and is not pre-trial discovery within the meaning of Article 23 of the Hague Evidence Convention, that is, discovery intended to lead to relevant evidence for trial. The evidence sought is to be used–would be admissible–in the trial in Delaware.
Evidence Act1906 (WA)
[11] First Femia Affidavit 'Annexure A' (13).
The Convention is given effect in Western Australian law by s 115 to s 118C of the Evidence Act. These provisions were enacted in 1989 to translate into domestic law Australia's international treaty obligations under the Convention.[12]
[12] Evidence Amendment Act 1989 (WA).
They were enacted as part of a 'model scheme for evidence on commission as adopted by the Standing Committee of Attorneys General ... in conjunction with … reciprocal measures in other States, [to] provide a comprehensive scheme for taking evidence on commission.'[13]
[13] Western Australia,The scheme follows the terminology used in the legislation in the United Kingdom, namely the Evidence (Proceedings in Other Jurisdictions) Act 1975 (UK) (the UK Act).[14]
[14] British American Tobacco Australia Services Limited v Sharon Y Eubanks for the United States of America; Nicholas Basil Cannar v Sharon Y Eubanks for the United States of America; British American Tobacco (Investments) Limited v Sharon Y Eubanks for the United States of America [2004] NSWCA 158; (2004) 60 NSWLR 483 (BAT v Eubanks) [15] - [20].
Section 115 of the Evidence Act defines terms used in s 116 to s 118C.
Section 116 outlines the prerequisites for an order for evidence to be obtained in Western Australia to give effect to a letter of request made pursuant to the Convention. Section 116 provides:
116. Application to Supreme Court for assistance in obtaining evidence for proceedings in other court
(1)If an application is made to the Supreme Court for an order for evidence to be obtained in Western Australia and the Supreme Court is satisfied–
(a)that the application is made in pursuance of a request issued by or on behalf of a court or tribunal exercising jurisdiction in a place outside Western Australia; and
(b)that the evidence to which the application relates is to be obtained for the purposes of proceedings which either have been instituted before the requesting court or whose institution before that court is contemplated,
the provisions of sections 117 to 118B apply.
Subsection 116(2) states that s 117 to s 118B do not apply in respect of proceedings relating to the commission of an offence or an alleged offence unless the requesting court is a court of a place in Australia or of New Zealand.
Section 117 is the operative provision for giving effect to a letter of request. It relevantly provides as follows:
117. Supreme Court may make orders to assist in obtaining evidence
(1)The Supreme Court has power, on any such application as is mentioned in section 116, by order to make such provision for obtaining evidence in Western Australia as may appear to the court to be appropriate for the purpose of giving effect to the request in pursuance of which the application is made.
(2)An order under this section may require a specified person to take such steps as the court may consider appropriate for that purpose.
(3)Without limiting the generality of subsections (1) and (2), an order under this section may, in particular, make provision–
(a)for the examination of witnesses, either orally or in writing;
(b)for the production of documents;
(c)for the inspection, photographing, preservation, custody or detention of any property;
…
(4)An order under this section shall not require any particular steps to be taken unless they are steps which can be required to be taken by way of obtaining evidence for the purposes of proceedings in the Supreme Court (whether or not proceedings of the same description as those to which the application for the order relates).
(5)Subsection (4) does not preclude the making of an order requiring a person to give testimony (either orally or in writing) otherwise than on oath where this is asked for by the requesting court.
(6)An order under this section shall not require a person–
(a)to state what documents relevant to the proceedings to which the application for the order relates are or have been in the person's possession, custody or power; or
(b)to produce any documents other than particular documents specified in the order and appearing to the court making the order to be, or to be likely to be, in the person's possession, custody or power.
(7)A person who, by virtue of an order under this section, is required to attend at any place shall be entitled to the like conduct money and payment for expenses and loss of time on attendance as a witness in proceedings before the Supreme Court.
The prohibition against pre-trial discovery in Article 23 of the Convention is reflected in the express terms of s 117(6) of the Evidence Act.[15]
[15] BAT v Eubanks [39] and [45] in relation to s 33(6) of the Evidence on Commission Act 1995 (NSW) which is in identical terms to s 117(6) (except for the word 'shall' is replaced by 'must').
Section 118 provides safeguards for witnesses compelled to give evidence. Section 118A provides for procedural rules to be made for facilitating an application to give effect to a letter of request. Section 118B makes it an offence to make a statement the person knows to be false in a material particular or does not believe to be true. Section 118C does not exclude the operation of other laws making provision for the taking of evidence in this State for the purpose of a proceeding out of the State.
Order 39 of the Rules of the Supreme Court 1971
Order 39 rule 2(1) of the RSC states that an application under s 116 of the Evidence Act may be made by the person nominated for that purpose by the requesting court, or, if no person is so nominated, the Attorney General.
Order 39 rule 2(2) of the RSC provides the application 'must be made ex parte and must be supported by an affidavit that exhibits the request'.
Order 39 rule 2(3) of the RSC provides that where an application has been made under s 116 of the Evidence Act, any application for a further order or direction in relation to the same matter must be made by summons.
Order 39 rule 3(1)(b) of the RSC states the court may give such directions about the manner of obtaining the evidence as the court thinks fit, including directions that the evidence be obtained:
(a)in the manner specified in the request; or
(b)in accordance with the practice of the requesting court; or
(c)in the manner requested by the applicant.
The balance of the rules in O 39 refer to the procedures to be followed during and after any examination and are not relevant to the issues raised in this application.
Standing of the respondent
Order 39 rule 2 of the RSC states the application must be made ex parte.
Ex parte refers to something done in judicial proceedings without notice to the party affected. That may be an application, or a hearing, or the making of an order. A party may file an application or motion against another party without giving notice that it has done so. The court may hear the application ex parte and may make an order without prior notice to the affected party.
In this case the court has not directed the applicant to give notice to the respondent. Nevertheless, the respondent has appeared at the first opportunity. It is clear that the respondent had notice of the application and the Request.
The applicant objects to the appearance of the respondent, submitting that courts, nationally, customarily deal with letters of request ex parte, discharging their discretion 'independently', and that any oppression argument with respect to the Production Orders ought properly be ventilated on an application to set aside a subpoena issued as a result of orders made responding to a letter of request.[16] This would enable the parties to the US Proceedings to appear in respect of any oppression argument to set aside the subpoena and enable the subpoena to be recast if necessary.[17]
[16] Applicant's Submissions [48].
[17] Applicant's Submissions [49].
The respondent submitted it is not claiming the orders are oppressive nor does the respondent seek to file any evidence in relation to the breadth of any subpoena that might issue. The respondent submits a subpoena should not issue because the prohibition in s 117(6)(b) of the Evidence Act does not permit the Production Orders to be made.[18] Reserving that objection until the issue of the subpoena suggests the subpoena should issue regardless of whether the orders are within the court's power. If the orders are not within the court's power to make, the subpoena will not issue.
[18] ts 53 - 55.
Counsel for the applicant further submitted that a request for orders from a foreign court for the taking of evidence is or akin to an administrative process much like issuing a subpoena to a non-party or applying for a search warrant or telecommunication intercept, which are heard ex parte to ensure the preservation of evidence.[19] Hearing from the respondent at the stage where orders are sought for the issue of a subpoena, according to counsel for the Attorney General, interferes with the administration of justice.[20]
[19] ts 33.
[20] ts 33.
Determining compliance with the Evidence Act is not a mere administrative process as submitted on behalf of the applicant.[21] Further, any risk that evidence will be lost (and no such finding is made) is not by virtue of the respondent's appearance at these proceedings. Counsel for the respondent advises the respondent has been on notice of these proceedings since they commenced in July 2021. The Request itself assumes the respondent has notice of the UWA patents, and other patents in competition with or having priority over the UWA patents. I understand the applicant not to be suggesting in this instance the respondent's appearance potentially jeopardises the integrity of the evidence sought, but rather as one explaining the rationales as to why such proceedings are made ex parte.
[21] ts 38.
The applicant submitted the court cannot hear from the proposed examinee submissions about whether there has been compliance with s 117 of the Evidence Act as she is not a party to the US Proceedings,[22] and hearing from her has undermined the rationale that the hearing should proceed expeditiously. Had the respondent not appeared '[t]his court wouldn't have had anything before it in terms of submissions about the four dot points'.[23] The respondent maintains she is a named party to the application and has a right to be heard.
Consideration of right of the respondent to appear
[22] ts 37.
[23] ts 48.
Ex parte procedures are not unusual but should always be regarded as exceptional. They involve a departure, albeit temporary, from the general requirement of procedural fairness that no order adverse to a party's property, liberty, or any other interest should be made without that party first having an opportunity to be heard.[24]
[24] International Finance Trust Co Ltd v New South Wales Crimes Commission (2009) 240 CLR 319; [2009] HCA 49 [39].
Ex parte applications may be made for a number of reasons. Ex parte interlocutory injunctive relief may be sought where the urgency of the matter is such that there is no time to notify the other side or where notice to the affected party is likely to result in the destruction of evidence or the concealment or dissipation of assets which it is intended the proposed order will protect.[25]
[25] International Finance Trust Co Ltd v New South Wales Crimes Commission [39].
Ex parte applications may afford applicants a simple and inexpensive way of finding out whether they have a worthwhile case and to protect putative respondents from the expense and trouble of opposing a case which might have nothing in it.[26]
[26] R v Camden London Borough Council; ex parte Martin [1997] 1 All ER 307, 312.
The process for applying ex parte enables a party to come before the court quickly and simply to allow for the fact it may be impractical or otherwise inappropriate to give notice to the affected parties. Where the court is asked to disregard the usual requirement of hearing from the party affected, 'the moving party incurs a most serious responsibility.'[27]
[27] Zucal v Harper (2005) 29 WAR 563; [2005] WASCA 76 [60] citing Thomas A Edison Ltd v Bullock (1912) 15 CLR 679, 681.
In relation to applications for the taking of foreign evidence, the requirement that the application be made ex parte arises from the RSC, not the Evidence Act. Order 39 was considered by Hamersley Iron Ltd Dyer v The Sanko Steamship Co Ltd [1981] WAR 113 in which the Full Court heard an appeal from orders made granting an application for the taking of foreign evidence. It was noted without comment by Wallace J that despite rules requiring that the application must be heard ex parte, both the applicant and respondent were heard before the Chambers Judge.[28]
[28] Hamersley Iron Pty Ltd v Sanko Steamship Co Ltd (117).
There are a number of reasons which justify applications for the taking of foreign evidence being made ex parte. In the absence of service and appearance of the purported respondent the matter can be dealt with expeditiously consistent with Article 9 of the Convention.
Further, where no party is nominated by the requesting court to make the request, the application is to be made by the Attorney General. The Attorney General, who is not a party to the US Proceedings, cannot be expected to engage in arguments that may be relevant to the substantive proceedings before the foreign court. The only relevant issue is whether the request is compliant with ss 116 and 117 of the Evidence Act.
Further, there may be reasons why notice to the proposed examinee should not be given until a subpoena issues compelling attendance so as not to forewarn the subpoenaed party enabling them to avoid service. Alternatively, where the request is for the production of documents, an ex parte application may assist with the preservation of evidence prior to there being a court order to produce. On the other hand, orders for the examination and production of documents is a coercive power exercised against persons who may be citizens of Australia at the request of a foreign State.
Hearing from the proposed examinee at an application for orders giving effect to a letter of request is not inconsistent with the approach taken in other jurisdictions.[29] However, while the statutory requirements for the taking of evidence for a foreign court are, for the most part, uniform across the States, the rules are not. In NSW for example, the relevant rule is r 52.1 of the Uniform Civil Procedure Rules 2005 (NSW) which does not stipulate that the application must be made ex parte, only that no person is required to be joined as a defendant.
[29] Application of Computer Sciences Corporation under the Evidence on Commission Act 1995 (NSW) [2017] NSW 810 [4], [48]; see also Application of Computer Sciences Corporation under the Evidence on Commission Act 1995 (NSW) [2019] NSWSC 777Error! Bookmark not defined..
The words 'must be made ex parte' must be given meaning as well as the fact there is no exception as exists in O 56A of the RSC, which requires that an application for a review order must be made ex parte unless the judge directs notice to be given.
In this case the respondent was heard. I do not consider that the rationale underlying O 39 r 2 of the RSC was undermined by the appearance of the respondent. To the contrary:
(a)the respondent is not seeking to put evidence before the court but rather a submission as to the proper construction of s 117(6)(b) of the Evidence Act;
(b)the respondent is not making any submission that the orders sought are oppressive or fishing or the types of objections that would be expected to be made on an application to set aside any subpoena;
(c)hearing from the respondent at this stage may have avoided delaying the proceedings in the event an application was made to set aside orders made ex parte pursuant to O 58 r 23 of the RSC; and
(d)in circumstances in which the applicant has no involvement with the US proceedings and has filed in support of the application the views of the party who made the request to the US court, the appearance of a contradictor in this instance was of assistance.
The court is required to make orders in compliance with the relevant provisions of the Evidence Act. The respondent has done no more than drawn the court's attention to the authorities that construe the relevant provisions, which in the absence of the respondent, the applicant would have no doubt done in accordance with the principles applicable to ex parte applications. The appearance of the respondent in my view has assisted with the expeditious determination of the application, by drawing to the court's attention the relevant authorities and raising these objections at the earliest opportunity rather than pursuant to an application to have the orders set aside on the basis of non-compliance with s 117(6) of the Evidence Act.
If the requirement that the application be made ex parte requires the matter to be heard and determined ex parte, then I am of the view that the failure to hear the matter ex parte was an irregularity and does not nullify the proceedings.[30] The inherent power of the court to control its own proceedings is not affected by the RSC.[31]
[30] RSC O 2 r 1.
[31] RSC O 1 r 3A.
Compliance with the Evidence Act
I turn to the statutory requirements of the Evidence Act. The court must first determine whether it is satisfied of the matters set out in s 116(1) and, if so, whether orders should be made under s 117. That is, even if the requirements of s 116(1) are met, the court has a discretion whether (and in what terms) to make an order under s 117 of the Act.[32]
[32] Application of Securities and Exchange Commission of USA under Evidence on Commission Act 1995 (NSW) (No 2) [2020] NSWSC 1500 [126] citing BAT v Eubanks [14].
For the purposes of s 116(1)(a) I am satisfied that the application is made in pursuance of a request issued by or on behalf of a court exercising jurisdiction in a place outside Western Australia. Further, I am satisfied pursuant to s 116(1)(b) that the evidence to which the application relates is to be obtained for the purposes of proceedings which have been instituted before the requesting court. Those criteria are clear from the request itself.
Section 117 to s 118B do not apply in respect of proceedings in relation to the commission of an offence unless the requesting court is in Australia or New Zealand (s 116(2) of the Evidence Act). I am satisfied that the US Proceedings do not relate to the commission of an offence.
The power in s 117 to make orders for the obtaining of evidence is subject to two prohibitions. Pursuant to s 117(4) an order under s 117 shall not require any particular steps to be taken unless they are steps which can be required to be taken by way of taking evidence for the purposes of proceedings in the Supreme Court.
The orders seeking the oral examination of the respondent 'relates to the inventive contributions of all persons involved in the conception and reduction to practice of the inventions, the timing of the conception and reduction to practice of inventions and their roles in the research.'[33] The list of matters about which the respondent is required to give evidence is set out in the request. The form and procedure is consistent with obtaining evidence in this court. There is no objection by the respondent to the examination topics or the process proposed by the orders.
[33] First Femia Affidavit 'Annexure A' (13).
The second limitation is specific to the production of documents. Section 117(6)(b) provides relevantly that:
An order under this section shall not require a person … to produce any documents other than particular documents specified in the order …
The prohibition in s 117(6)(b) is in identical terms to those in force in other common law jurisdictions (excepting South Australia),[34] including:
(a)the United Kingdom since 1975;[35] and
(b)New South Wales since 1988.[36]
[34] See s 59F of the Evidence Act 1929 (SA).
[35] Evidence (Proceedings in Other Jurisdictions) Act 1975 (UK), s 2(4)(b).
[36] See BAT v Eubanks [17] - [20]; Now in Evidence on Commission Act 1995 (NSW), s 33(6)(b).
In BAT v Eubanks, Spielgman CJ considered that the history of the Australian scheme indicates that the British case law should generally be followed in Australia and that where possible, an international treaty of this character should be interpreted in an internationally uniform way.[37]
[37] BAT v Eubanks [41] as applied in Application of Securities and Exchange Commission of USA under Evidence on Commission Act 1995 (NSW) (No 2) [127].
BAT v Eubanks was an appeal against ex parte orders made by Bell J pursuant to s 33 of the Evidence on Commission Act 1995 (NSW) (the NSW Act) for the examination of a witness in relation to matters identified in a letter of request for international judicial assistance. It was a matter dealing with orders for examination and not the production of documents. In that case, the examinee sought to have the orders made by Bell J set aside which her Honour refused to do and from which the examinee sought leave to appeal.
Spiegelman CJ[38] referred to Burnton J's summary in Gredd v Arpad Busson [2003] EWHC 3001 of the English law which Spielgman CJ considered should be adopted in Australia.[39] The applicant relies on the first proposition from Burnton J's summary, namely:[40]
(1)Comity requires this court to view a letter of request issued by a foreign court for the purpose of civil proceedings before it benevolently. It is our pleasure and duty to assist those courts and the parties to them in arriving at fair and just determination of their civil litigation where we can properly do so.
[38] With whom Handley and Bryson JJA agreed.
[39] BAT v Eubanks [40] - [42] referring to Gredd v Arpad Busson [27].
[40] BAT v Eubanks [42].
Burnton J's summary goes on to state:
(2)Nonetheless when an application for an order under the Act is disputed, the High Court must determine whether the order sought is one which it can or should properly make.
(3)The issue whether the order sought is for an illegitimate investigation rather than to obtain evidence to be adduced at trial is to be determined principally by reference to the terms of the letter of request and of the proposed order of this court. However, the court will consider the evidence before it as a whole.
In Application of Monier Inc [2009] NSWSC 986; (2009) 76 NSWLR 158 (Monier Inc), Matthews AJ heard an application to set aside a subpoena issued pursuant to orders made ex parte to produce documents set out in a letter of request.[41]
[41] Monier Inc [6].
The subpoena in Monier Inc was objected to on three grounds: first, the documents sought were not required for evidence in the Delaware proceedings and were therefore sought by way of a fishing expedition; second, the subpoena failed to comply with s 33(6)(b) of the NSW Act (the equivalent of s 117(6)(b) of the Evidence Act) in that the particular documents sought were not specified in the subpoena and that there was nothing before the court to show the documents were likely to be in the subpoenaed party's possession, custody or power; and, third, the subpoena was oppressive.[42]
[42] Monier Inc [12].
Matthews AJ held that the pivotal issue was the jurisdictional question of whether the subpoena offended the requirement in s 33(6)(b) of the NSW Act, that a person cannot be required to produce any documents other than particular documents specified in the order.[43]
[43] Monier Inc [13].
Her Honour relied on two English authorities dealing with the equivalent provision in the UK Act which provides as follows:
2. Power of United Kingdom court to give effect to application for assistance
…
(4)An order under this section shall not require a person–
…
(b)to produce any documents other than particular documents specified in the order as being documents appearing to the court making the order to be, or to be likely to be, in his possession, custody or power.
In relation to s 2(4)(b) of the UK Act, Lord Diplock in Rio Tinto Zinc Corporation v Westinghouse Electric Corporation [1978] AC 547, held that a schedule of documents that includes categories or classes of documents which would have been obtainable under an order for discovery, could not be called for under the UK Act. Lord Diplock held:[44]
The requirements of subsection (4)(b), however, are not in my view satisfied by the specification of classes of documents. What is called for is the specification of 'particular documents' which I would construe as meaning individual documents separately described.
[44] Rio Tinto Zic Corporation v Westinghouse Electric Corporation (635).
The House of Lords in Re Asbestos Insurance Coverage Cases [1985] 1 WLR 331 qualified the statement of Lord Diplock as follows:[45]
I do not think that by the words "separately described" Lord Diplock intended to rule out a compendious description of several documents provided that the exact document in each case is clearly indicated. If I may borrow (and slightly amplify) the apt illustration given by Slade LJ in the present case, an order for production of the respondent's "monthly bank statements for the year 1984 relating to his current account" with a named bank would satisfy the requirement of the paragraph, provided that the evidence showed that regular monthly statements had been sent to the respondent during the year and were likely to be still in his possession. But as a general request for "all the respondent's bank statements in 1984" would in my view refer to a class of documents and would not be admissible.
The second test of particular documents is that they must be actual documents, about which there is evidence which has satisfied the judge that they exist, or at least that they did exist, and that they are likely to be in the respondent's possession. Actual documents are to be contrasted with conjectural documents, which may or may not exist.
[45] Re Asbestos Insurance Coverage Cases (337 - 338).
Following these authorities, Matthews AJ rejected the submission that it is sufficient if the subpoena specified an objective criterion by which the documents can be identified. This was not permitted by the clear terms of s 33(6)(b) of the NSW Act, namely that the particular documents are to be specified in the orders.[46]
[46] Monier Inc [28].
Monier Inc has been cited with apparent approval in a number of first instance decisions.[47] In Application of Computer Sciences Corporation under the Evidence on Commission Act 1995 (NSW) [2019] NSWSC 777, Black J was asked to find that the earlier authorities no longer assist in the application of s 33(6) of the NSW Act, where there has been a substantial change in the frequency, volume and flexibility of communications since Rio Tinto Zinc Corporation v Westinghouse Electric Corporation was decided. Black J held:[48]
It seems to me that, as judge sitting at first instance, I should follow Westinghouse, consistent with the observations as to the status of United Kingdom law in this area in British America Tobacco above, and I should also follow Monier where it follows Westinghouse and I do not consider that it is plainly wrong.
[47] Application by the Attorney General of NSW [2021] NSWSC 857 at [4], Application of Computer Sciences Corporation under the Evidence on Commission Act 1995 (NSW) [2019] NSWSC 777 at [36] - [38] and Re Fairfax Financial Holdings Ltd [2011] NSWSC 223 at [38] - [39].
[48] Application of Computer Sciences Corporation under the Evidence on Commission Act 1995 (NSW) [2019] NSWSC 777 [38].
The applicant in these proceedings distinguishes Monier Inc on the basis that it was an inter partes objection to a subpoena. It was not a decision made in respect to an application for orders under the NSW equivalent of s 116 and s 117 of the Evidence Act, as that application had already been granted ex parte. As such, Matthews AJ in Monier Inc had before her evidence and submissions of the parties to the substantive litigation, including the requesting party. The applicant in this case submits that there would be no prejudice to the respondent by making the orders sought as the respondent could apply to set aside any subpoena which is issued pursuant to those orders. At that hearing the court could receive evidence and hear submissions from the parties to the substantive action.
The objection to the orders made in Monier Inc was not made on the basis that the orders were oppressive or permitted fishing. The objection to the subpoenas in Monier Inc was upheld on the basis the documents specified in the letter of request pursuant to which the subpoena issued did not comply with the provision equivalent to s 117(6)(b) of the Evidence Act. The fact that the application was brought at the subpoena stage does not alter the interpretation given to s 117(6)(b) and its NSW equivalent. Nor does the fact that Matthews AJ had the benefit of evidence and submissions by the parties make Monier Inc distinguishable. Rather it makes it more persuasive. I do not understand the applicant to be submitting that the decision is plainly wrong. For these reasons, I follow Monier Inc as to the interpretation to be given to s 117(6)(b) of the Evidence Act.
The Request
Part VI(A) of the Request sets out the documents the respondent is required to produce. It provides:[49]
A.Documents to be produced:
Despite being a former professor at UWA and an inventor of the UWA patents, neither Sarepta nor UWA has produced any laboratory notebooks, emails, memos, or notes from Dr Fletcher showing her role in exon 53-skipping research. After Drs Fletcher and Wilton resigned from their UWA positions, UWA allowed them to retain data, notebooks, and other information. Indeed Dr Wilton produced 1,742 documents totalling 26,526 pages of documents related to his exon 53 research. Therefore, the Court requests that you cause Dr Fletcher to produce:
·Any non-privileged documents relating to any work she conducted relating to developing and/or testing molecules intended to induce skipping of exon 53 of the dystrophin gene;
·Any non-privileged communications related to the design or testing of antisense oligonucleotide molecules intended to induce skipping of exon 53 of the dystrophin gene;
·Any non-privileged documents related to the drafting, filing, and prosecution of the application or applications that issued as the UWA Patents or any other U.S. applications that claim priority to such application or applications;
·A copy of any agreements governing her current or past relationship with UWA and/or Sarepta, including any employment agreements and consulting agreements.
[49] First Femia Affidavit 'Annexure A' (14).
No objection is raised to making orders to produce the fourth category of documents on the basis it constitutes a compendious description of several documents in which the exact document in each case is clearly indicated, as described by Lord Fraser in Re Asbestos Insurance Coverage Cases.[50]
Applicant's Submissions
[50] Re Asbestos Insurance Coverage Cases (337 - 8), as cited in Monier Inc [19], [20], [32].
The applicant submits the court should:[51]
[51] Applicant's Submissions [57].
(a)exercise its discretion to give effect to the Request as expeditiously as possible and in light of the overarching principles of comity and reciprocity and benevolence under the Convention (Rio Tinto Zinc Corporation v Westinghouse Electric Corporation at 653);
(b)independently assess the four itemised categories of documents of the Request understood to be in the possession, custody or power of Professor Fletcher not in isolation but in light of the recitals in the Request (Rio Tinto Zinc Corporation v Westinghouse Electric Corporation at 568);
(c)treat the Request with sympathy and approach the Request in the spirit that it should receive effect to the fullest extent possible under law - to that end, the Request ought be considered in totality with the recitals providing a proper aide to its construction (Pickles v Gratzon [2002] NSWSC 688; 55 NSWLR 533 [16] and Monier Inc[22]);
(d)consider whether the four itemised categories of documents … are specified with such distinctiveness as would be sufficient for a subpoena duces tecum issued in this jurisdiction - to that end, the description of the documents should be sufficiently specific to enable the person to put [their] hand on the documents or the file without [themselves] having to make a random search (Rio Tinto Zinc Corporation v Westinghouse Electric Corporation at 562);
(e)be persuaded there is no need to introduce any separate principle of 'oppression' into the determination of the application under s 116 and s 117 of the Evidence Act because this court can reject the request (in whole or in part) if the court is not able to mould orders the court considers appropriate to give effect to the request (BAT v Eubanks [89]); and
(f)consider that a benevolent reading of the four itemised categories of documents in light of the recitals in the Request makes it plain the documents sought to be produced are documents: -
(i)likely to be in the possession, custody and power of the respondent;
(ii)the respondent was granted permission by the University of Western Australia to retain following her resignation - such that; and
(iii)which relate directly to the Respondent's research into exon 53-skipping research as set out in the recitals to the Request;
(g)conclude, benevolently construed, the Request recitals provide sufficient scaffolding to confine the first three bullet points at page eight of the Request to very specific listed types of documents (data, notebooks and other information) (document type limitation) in existence at the time the respondent was employed at the University of Western Australia (temporal limitation) conducting research into exon 53-skipping research (document subject matter limitation). Read benevolently and in light of the entirety of the Request (more particularly the chapeau appearing atop page eight of the Request), it cannot fairly be construed that the first three bullet points at page eight infringe the reservation embodied in s 117(6)(b) of the Evidence Act.
Respondent's Submissions
The respondent relies on the authorities cited above and specifically Monier Inc as governing the exercise of the discretion in making orders for the production of documents.
The respondent submits that even with the incorporation of the recitals the connectors 'relating to' and 'related to' used in the first three bullet points:
(a)are wide, vague and indefinite;[52]
(b)were fatal in Monier Inc;[53] and
(c)are more suited to describing a class or category of documents to be discovered by a party to litigation.
[52] See, for example, the authorities discussed in Waugh Hotel Management Pty Ltd v Marrickville Council
[2009] NSWCA 390; (2009) 171 LGERA 112 [44] - [50].
[53] Monier Inc [5], [7], [29] and [32].
The incorporation of the third bullet point would require Professor Fletcher, who is not a party to the US Proceedings, to somehow identify any other US patent applications that claim priority to the applications that issued as the UWA Patents.
Disposition in relation to the Production Orders
Section 117(6)(b) of the Evidence Act is couched in mandatory terms. An order, in this case for the production of documents, shall not require a person 'to produce any documents other than particular documents specified in the order and appearing to the court making the order to be, or likely to be, in the person's possession, custody or power'.[54]
[54] Evidence Act s 117(6)(b).
The issue is whether the documents required to be produced by the respondent pursuant to the three contested bullet points in Part VI(A) of the Request go beyond what is permitted by s 117(6)(b).
In Pickles v Gratzon at [16], O'Keefe J held:[55]
The Letter of Request must be read as a whole. One of the purposes of the recitals is to help to define or fix the framework within which the request is made. When construing the form of the request for assistance, it is appropriate to do so in the light, and against the background of the recitals. They are a valuable aid to the construction of the Letter of Request and assist in the definition of the ambit and content of the request.
[55] See also BAT v Eubanks [42] citing Burnton J in Gredd v Arpad Busson [27]; applied in Monier Inc [22].
Similarly, in Rio Tinto Zinc Corporation v Westinghouse Electric Corporation in the Court of Appeal Lord Roskill held '[o]ne should ascertain what is the nature of the letters rogatory by looking at the letters rogatory themselves.'[56]
[56] Rio Tinto Zinc Corporation v Westinghouse Electric Corporation (568).
The applicant submits that, read together with the recitals, the description provides sufficient criteria against which the documents can be identified: they relate to her period of employment at UWA; they identify the type of documents sought (data, notebooks and other information); and they specify the subject matter, namely research into exon 53-skipping.
The test according to Lord Fraser in Re Asbestos Insurance Coverage Cases has two limbs: the first is whether the categories constitute a 'compendious description of several documents [whereby] the exact document in each case is clearly indicated'; and, the second is whether they are actual documents about which there is evidence which has satisfied the judge that they exist or at least they did exist and are likely to be in the respondent's possession. Actual documents are to be contrasted with merely conjectural documents which may or may not exist.[57]
[57] Re Asbestos Insurance Coverage Cases (338).
Based on the recitals I am satisfied that the second limb of Lord Fraser's test has been satisfied, namely there is evidence that could satisfy the requesting judge that the documents exist or did exist and are likely to be in the respondent's possession. UWA is a counterclaimant in the action and is represented in proceedings in which it is alleged the UWA patents are invalid. The UWA patents name the respondent as one of the inventors. At the time the applications leading to the UWA patents were filed, the respondent with Dr Wilton co‑lead a research group at UWA that investigated antisense oligonucleotide treatment for DMD. The respondent is stated to be listed as the inventor of an International Application which discloses antisense oligonucleotides for exon-skipping to treat DMD including several antisense oligonucleotide that fall within the claimed genus for the UWA patents.[58]
[58] First Femia Affidavit 'Annexure A' (12).
It is stated that upon the respondent having resigned from her position at UWA she was allowed to retain data, notebooks and other information. Dr Wilton has produced voluminous records. I am satisfied documents pertaining to the research are likely to be in the respondent's possession.
The first limb of the test in Re Asbestos Insurance Coverage Cases is more problematic. In Monier Inc, Matthews AJ rejected the proposition that provided if the subpoena specified an objective criterion by reference to which the documents can be identified, namely if the subpoena specified that the documents 'record' or 'refer to' particular matters, that is sufficient for a beneficial purposive construction of the subpoena.[59]
[59] Monier Inc [26] - [28].
Her Honour held that was because the English authorities do little more than reproduce the clear words of the section, namely that the documents to be produced under the section must be 'particular documents specified in the order.'[60] That has been construed as meaning 'individual documents separately described'[61] or 'a compendious description of several documents provided that that exact document in each case is clearly indicated.'[62]
[60] Monier Inc [27].
[61] Rio Tinto Zinc Corporation v Westinghouse Electic Corporation (635).
[62] Re Asbestos Insurance Coverage Cases (337).
In Rio Tinto Zinc Corporation v Westinghouse Electic Corporation, Lord Denning MR held:[63]
I think the words "relating thereto" cast the net too widely … The point is that the documents should be specified with such distinctiveness as would be sufficient for a subpoena duces tecum. The description should be sufficiently specific to enable the person to put his hand on the documents or the file without himself having to make a random search–in short, to know specifically what to look for.
[63] Rio Tinto Zinc Corporation v Westinghouse Electic Corporation (562).
In this instance the objective criterion to which the documents in the first bullet point relates is the work Professor Fletcher has conducted relating to developing and/or testing molecules intended to induce skipping of exon 53 of the dystrophin gene.
In the second bullet point the objective criterion is communications related to the design or testing of antisense oligonucleotide molecules intended to induce skipping of exon 53 of the dystrophin gene.
However, it is clear from the recitals that the parties to the US Proceedings are unaware of what documents these are. Instead, there is a reasonable assumption based on the recitals that the respondent must have documents given her co-inventor produced 26,526 pages of documents and the respondent was permitted to retain notebooks, emails, memos or notes on her resignation from UWA.[64] However, the proposed order is not so limited and simply requires the production of 'documents' and 'communications'.
[64] First Femia Affidavit 'Annexure A' (8).
As currently drafted it is difficult to see that the request for documents in the first two bullet points seeks anything more specific than pre-trial discovery from a non-party. In light of the recitals a benevolent construction might mean that the request is confined to those documents created or obtained while employed at UWA, but any subpoena issued would simply require the production of those documents referred to in the bullet points which would have no such restriction.
I consider it is not possible by reference to the categories described in the first two bullet points to identify particular documents. Any subpoena issuing pursuant to the orders would require the respondent to conduct a review of all documents and communications to determine which documents might satisfy the objective criterion in each case, in the absence of any time frame in which these documents might have been created, obtained or kept. The authorities do not permit this type of review which is more akin to discovery.
For these reasons, I decline to make orders for production in terms of the first two bullet points.
The third bullet point requires the production of any documents related to the drafting, filing, and prosecution of the application or applications that issued as the UWA Patents or any other US applications that claim priority to such application or applications.
There is no evidence that the respondent was involved in the drafting, filing and prosecution of the application for the patent or any other applications including other US applications that claim priority to applications issued by UWA. There is also an assumption the respondent knows what other applications there may be and whether they have priority. The fact any other applications are not named suggests that it is not clear whether there are any such applications. In my view, the third bullet point fails both limbs of the test set out in Re Asbestos Insurance Coverage Cases. It neither specifies particular documents and nor is it clear that such documents are likely to exist. Therefore, the prohibition in s 117(6)(b) prevents an order for the production of documents described in the third bullet point.
Reframing the Request
Despite my initial view when this matter was first listed being that any amendment to the Request was for the requesting court, I have now had the opportunity to further consider the issue.
Importantly, the court is not concerned with assisting the parties to the action. The court is only concerned with assisting the requesting court. It is that court which has enlisted our assistance so far as this court properly can. The limitations upon that power are found in the statutes designed to give effect to a convention which many different countries with many different systems of law are parties.[65] To this end, Burnton J in Gredd v Arpad Busson, as cited in BAT v Eubanks, held:[66]
(10)The Court will take into account any safeguards or restrictions incorporated in the terms of the proposed order. However, the order made by this court cannot depart substantially from the terms of the letter of request. The requirement of the statute is that the order of the court give effect to the letter of request. The limitation on the power of amendment of the terms of the deposition sought by the letter of request was referred to by Lord Fraser in Rio Tinto Zinc Corporation v Westinghouse Electric Corporation [1978] AC 547 [1978] AC 547 at 644 - 645 and in turn by Sir Richard Scott VC in First American Corporation v Sheikh Zayed Al-Nahyan [1999] 1 WLR 1154; [1998] 4 All ER 439 at 1169.
[65] Rio Tinto Zinc Corporation v Westinghouse Electric Corporation (568) (Roskil J).
[66] BAT v Eubanks [42] citing Burnton J in Gredd v Arpad Busson [27].
In Rio Tinto Zinc Corporation v Westinghouse Electric Corporation, Lord Fraser held:[67]
… in judging the nature of the letters rogatory as a whole the court must in my opinion look at them in the unamended form in which they were received by from the American court. I do not say that, if they were found to include a few relatively minor items which could not qualify under … section 2(4) of the Act of 1975, the whole request would have to be refused. The court has to look at the substance of the matter: see Radio Corporation of America v Rauland Corporation[1956] 1 QB 618, 641.
[67] Rio Tinto Zinc Corporation v Westinghouse Electric Corporation, 644-655.
Lord Fraser found that orders for production even as amended by the Court of Appeal ought not to have issued. On this issue Lord Fraser with Viscount Dilhorne were in the minority,[68] with the majority of the House of Lords finding the Court of Appeal was correct to give effect to the letters rogatory in respect of the production of documents subject to amendments to confine their operation to areas allowed by English law.[69]
[68] Rio Tinto Zinc Corporation v Westinghouse Electric Corporation, 624 Viscount Dilhorne.
[69] Rio Tinto Zinc Corporation v Westinghouse Electric Corporation, 611-612 Wilberforce LJ, 636 Diplock LJ and 654 Lord Keith of Kinkel; Viscount Dilhorne and Lord Fraser dissenting).
The point of difference was not that letters of request could never be amended, but whether the amendments made could be considered to be of a minor character.
In BAT v Eubanks, Spiegelman CJ, in dealing with an objection to the breadth and scope of examination orders, held:[70]
In my opinion, the Court is not entitled to reject a request unless it is not able to mould an order which the Court believes to be an "appropriate" one for the purpose of giving effect to the request.
And later:[71]
If the request is oppressive, in the sense discussed in the case law on subpoenas, then, unless it is not possible to do so, the Court would mould an appropriate order so as to remove the element of oppression. This may, for example, involve limited in the scope of permissible questioning to avoid topics stated in an uncertain manner.
[70] BAT v Eubanks [88].
[71] BAT v Eubanks [89].
Spiegelman CJ relied on the power in s 33(1) of the NSW Act to order 'such provisions for obtaining evidence … as may appear to the Court to be appropriate'[72] and s 33(2) which enables the Court to require a person 'to take such steps as the court may consider appropriate.'[73]
[72] See Evidence Act s 117(1).
[73] See Evidence Act s 117(2).
In respect of the observations by Spiegelman CJ, Black J in Application of Computer Sciences Corporation under the Evidence on Commission Act 1995 (NSW) [2019] NSWSC 777 considered that this means the court may delete objectionable parts of the letter of request but it cannot substitute a different request.[74] In that case, Black J declined to reframe the proposed orders for production of documents. That was in the context of a request for documents not limited by subject matter.[75]
[74] Application of Computer Sciences Corporation under the Evidence on Commission Act 1995 (NSW) [2019] NSWSC 777 [41] with reference to Rio Tinto Plc v Vale SA [2015] EWHC 1865.
[75] Application of Computer Sciences Corporation under the Evidence on Commission Act 1995 (NSW) [2019] NSWSC 777 [41].
The Second Femia Affidavit attaches a letter from the solicitors for the requesting party, suggesting that the proposed Production Orders could be amended as follows:[76]
·The non-privileged documents Professor Fletcher was permitted to copy, retain or otherwise take from the University of Western Australia following her resignation in or about March 2013, that record data and other information concerning her work relating to developing and testing molecules intended to induce skipping of exon 53 of the dystrophin gene.
·The non-privileged communications Professor Fletcher was permitted to copy, retain or otherwise take from the University of Western Australia following her resignation in or about March 2013, that relate to the design or testing of oligonucleotide molecules intended to induce skipping of exon 53 of the dystrophin gene.
·The non-privileged documents Professor Fletcher was permitted to copy, retain or otherwise take from the University of Western Australia following her resignation in or about March 2013, that relate to the drafting, filing and prosecution of the application or applications that issued as the UWA Patents or any other US applications that claim priority to such application or applications.
[76] Second Femia Affidavit 'Annexure A' (9 - 10).
The two issues that arise are whether the amendments bring the request within the scope of s 117(6)(b) of the Evidence Act and if the amendments are of a minor character that permit reframing by this court.
The proposed amended orders are confined to those documents Professor Fletcher was permitted to copy, retain or otherwise take from UWA following her resignation in March 2013 in relation to the matters described. That presumably would confine documents to those produced, obtained or created while at UWA as part of her employment. It would limit the documents to those in existence prior to March 2013.
Although not individually described, those are documents that Professor Fletcher copied, retained or took that record data and other information in relation to her specific work relating to developing and testing molecules, or that relate to the design or testing of oligonucleotide molecules intended to induce skipping of exon 53 of the dystrophin gene.
It is clear from the recitals that Professor Fletcher was involved in this work.
The first two bullet points in the Request, amended as proposed, would therefore comprise a compendious description of documents which are identifiable, albeit identifiable only by Professor Fletcher. I am of the view the orders for the first two categories as amended can be made pursuant to s 117(6)(b) of the Evidence Act.
In relation to the third bullet point, other than being listed as a co-inventor, the concern remains that it is not clear that Professor Fletcher drafted or filed or prosecuted this patent application or any other application. There is nothing to suggest she has any knowledge of any other applications that have priority to such application or applications. There is nothing in recitals that lead me to the view that Professor Fletcher was involved or that there are any other applications. No submission has been made indicating that her status as a co-inventor necessarily meant that she would have been involved in the drafting or filing or prosecution of this patent application.
In accordance with the observations of Black J in Application of Computer Sciences Corporation under the Evidence on Commission Act 1995 (NSW) [2019] NSWSC 777 it is open to this court to delete objectionable parts of the letter of request. I am not prepared to make the order sought by the third bullet point even as amended. It is not evident that such documents exist, let alone are identifiable.
The second issue is whether amendments are of such a character that can be made by this court rather than returning the request to the US court for reframing. Save for the category of documents described in the third bullet point, in my view the amendments proposed in the letter attached to the Second Femia Affidavit simply incorporate the criteria set out in the recitals and do not substantially depart from the terms of the Request but rather limit it to a form that can be made pursuant to s 117 of the Evidence Act.
In Re Fairfax Financial Holdings Ltd [2011] NSWSC 223, Hall J allowed the plaintiff to put forward an alternative order for production with more refined categories.[77] It would be cumbersome and time consuming to require the requesting court to amend the Request to refine it to the terms sought by the requesting party. There is unlikely to be any prejudice to the parties to the US Proceedings especially where the requesting court was prepared to grant the Request in broader terms.
[77] Re Fairfax Financial Holdings Ltd [2011] NSWSC 223 [37], [40].
For these reasons, I will make orders in terms of the first two bullet points as amended and delete from the orders the documents described in the third bullet point.
There is no objection raised in relation to orders being made in the form of the fourth bullet point and I am satisfied it can be made in accordance with s 117(6) of the Evidence Act.
Orders
Subject to hearing from the parties I propose to make the following orders:
1.In accordance with Sections 116 and 117 of the Evidence Act 1906 (WA) and Order 39 Rule 3 of the Rules of the Supreme Court 1971 (WA) the Court grant approval for examination of the Respondent to be conducted by legal counsel for the parties in case number 21-1015-GBW in the United States District Court of Delaware whereby:
(a)The examination takes place at the offices of Minter Ellison, Level 4, Allendale Square, 77 St Georges Terrace, Perth WA 6000 by no later than 30 September 2023;
(b)Mr David Thompson of the Western Australian Bar be appointed examiner ('The Examiner') to administer the taking of an oath or affirmation and the conduct of the examination in accordance with the Court's orders and otherwise in accordance with Order 39 Rule 3 of the Rules of the Supreme Court 1971 (WA);
(c)The examiner be entitled to charge fees for the examination at the hourly rate of $475 per hour (exclusive of GST);
(d)The examination of the Respondent will be video recorded and reduced into writing by way of transcription and all books, letters, papers, and documents produced on such examination will be duly marked for identification and copies of the documents made;
(e)A copy of such video recordings, transcripts and exhibits (if any) from the deposition of the Respondent be signed and certified as correct and authenticated by the Examiner and sent to the Principal Registrar in accordance with Order 39 Rule 5(1) of the Rules of the Supreme Court 1971 (WA);
(f)On receiving the deposition of the Respondent, the Principal Registrar shall give a certificate in Form No. 31 sealed with the seal of the Court annexing thereto and identifying the request, the order for examination, and the depositions in accordance with Order 39 Rule 5(2) of the Rules of the Supreme Court 1971 (WA); and
(g)The Principal Registrar shall send the certificate referred to in paragraph 1(f) with the documents annexed thereto to the Solicitors for the Applicant, for transmission to the requesting Court and to Minter Ellison at Governor Macquarie Tower 1, Farrer Place, Sydney NSW 2000 and to DLA Piper at Level 21, 240 St Georges Terrace, Perth WA 6000 in accordance with Order 39 Rule 5(3) of the Rules of the Supreme Court 1971 (WA).
2.The Respondent make herself available to give evidence on a date and time nominated by the Examiner having regard to the reasonable convenience of the Respondent on at least 5 days' notice (and on a date or dates after 14 September 2023) at the location specified in paragraph l(a) of these orders, and submit to be examined to give the testimony required by the United States District Court of Delaware as listed on pages 9 and 10 of the Request for International Judicial Assistance dated 1 August 2023 and continuing thereafter at such time as the Examiner may direct from day to day until completed except that:
(a)The deposition shall not exceed seven hours on the record per day; and
(b)The examination by the Requestors shall not exceed a total of seven hours on the record.
3.Leave be granted to the Applicant to issue a subpoena to the Respondent to attend to give evidence before the Examiner in accordance with the terms of paragraph 2 above and substantially in the form contained in Form 21 (per Order 36B Rule 3(1)(a) of the Rules of the Supreme Court 1971 (WA)).
4.In accordance with ss 116 and 117 of the Evidence Act 1906 (WA) and Order 39 Rule 3 of the Rules of the Supreme Court 1971 (WA), the Court require the Respondent to produce to the Court the following documents:
•The non-privileged documents Professor Fletcher was permitted to copy, retain or otherwise take from the University of Western Australia following her resignation in or about March 2013, that record data and other information concerning her work relating to developing and testing molecules intended to induce skipping of exon 53 of the dystrophin gene.
•The non-privileged communications Professor Fletcher was permitted to copy, retain or otherwise take from the University of Western Australia following her resignation in or about March 2013, that relate to the design or testing of oligonucleotide molecules intended to induce skipping of exon 53 of the dystrophin gene.
•A copy of any agreements governing her current or past relationship with UWA and / or Sarepta, including any employment agreements and consulting agreements.
5.Leave be granted to the Applicant to issue a subpoena to the Respondent to produce the documents referred to in Paragraph 4 above substantially in the form contained in Form 21A (per Order 36B Rule 3(1)(b) of the Rules of the Supreme Court 1971 (WA)), such subpoena to be returnable on [to be advised].
6.In respect of any documents produced by the Respondent under the subpoena, and subject to any objection proceedings taken in respect of that subpoena, solicitors for Nippon Shinyaku Co. Ltd, NS Pharma Inc and Sarepta Therapeutics Inc be at liberty to access, inspect and take copies of the documents and to provide such copies to the parties in US District Court for the District of Delaware in case number 21-1015-GBW.
7.Leave be granted for the Respondent to be represented at the examination by legal practitioners of the Supreme Court of Western Australia and legal practitioners of the United States of America and the Respondent be permitted to take legal advice in order to prevent the disclosure of privileged information and to claim privileges under both the laws of the United States and those of Australia.
8.Leave be granted to Nippon Shinyaku Co., Ltd and NS Pharma Inc to be represented at the examination by an Australian legal practitioner entitled to engage in legal practice in Western Australia (pursuant to the Legal Profession Uniform Law Application Act 2022 (WA)) and legal practitioners of the United States of America to conduct the examination of the Respondent either in person or by video-link.
9.Leave be granted to Sarepta Therapeutics, Inc., to be represented at the examination by an Australian legal practitioner entitled to engage in legal practice in Western Australia (pursuant to the Legal Profession Uniform Law Application Act 2022 (WA)) and legal practitioners of the United States of America to conduct the examination of the Respondent either in person or by video-link.
10.Subject to further order of this Court, that documents subject of the Stipulated Protective Order made on 21 June 2022 in case number 21-1015-GBW in the United States District Court of Delaware may be disclosed during the depositions to the Examiner and the Respondent, and that the Respondent shall be bound by the terms of the Stipulated Protective Order.
11.Nippon Shinyaku and NS Pharma (Plaintiff and Counter-Defendants in the United States District Court of Delaware Proceedings Case No. C.A. No. 21-1015-GBW) bear the fees and costs incurred with respect to the travel or loss of time reasonably incurred by the Respondent in complying with these orders, and any other costs reimbursable under paragraph 2 of Article 14 or Article 26 of the Hague Convention of 18 March 1970 on the Taking of Evidence Abroad In Civil or Commercial Matters.
12.Nippon Shinyaku and NS Pharma to arrange for conduct money to be provided in the form of cheques issued to the Respondent, to the State Solicitor's Office, and the State Solicitor's Office to provide such cheques to the Respondent or her legal advisors, at the time the subpoenas referred to herein are served.
13.Subject to the Respondent executing and providing a copy of the Acknowledgment and Agreement to be Bound (Annexure A to the Stipulated Protective Order) to Nippon Shinyaku and NS Pharma, Nippon Shinyaku and NS Pharma will prepare a selection of documents, which may be shown to the Respondent during her examination, which will be provided electronically to the Respondent or her legal counsel at least five days prior to her examination.
14.A copy of the Court's Order, the Originating Motion, and the Affidavit and Annexures of Patricia Anna Femia affirmed on 9 August 2023 be served on the Respondent, Minter Ellison and DLA Piper as soon as practicable.
I certify that the preceding paragraph(s) comprise the reasons for decision of the Supreme Court of Western Australia.
CM
Associate to the Acting Master
11 SEPTEMBER 2023
Parliamentary Debates, Legislative Assembly, 24 October 1989, 3675 - 3676, (The Honourable David
Smith MLA, Minister for Justice).
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