FEDERAL COURT OF AUSTRALIA
Bristol-Myers Squibb Company v Apotex Pty Ltd (No 3) [2012] FCA 1310
Citation: Bristol-Myers Squibb Company v Apotex Pty Ltd (No 3) [2012] FCA 1310 Parties: BRISTOL-MYERS SQUIBB COMPANY and OTSUKA PHARMACEUTICAL CO., LTD v APOTEX PTY LTD (ACN 096 916 148) File number: NSD 1116 of 2009 Judge: YATES J Date of judgment: 23 November 2012 Catchwords: PRIVILEGE – whether notes made by expert while observing experiment covered by legal professional privilege – whether privilege waived where notes used to make an affidavit filed in the proceeding Legislation: Federal Court of Australia Act 1976 (Cth) ss 37M, 37N Cases cited: Attorney-General for the Northern Territory v Maurice (1986) 161 CLR 475
Australian Securities and Investments Commission v Southcorp Ltd (2003) 46 ACSR 438
AWB Ltd v Cole (No 5) (2006) 155 FCR 30
Esso Australia Resources Limited v Commissioner of Taxation of the Commonwealth of Australia (1999) 201 CLR 49
Grant v Downs (1976) 135 CLR 674
Great Atlantic Insurance Co v Home Insurance Co [1981] 1 WLR 529
Interchase Corporation Limited (in liq) v Grosvenor Hill (Queensland) Pty Ltd (No 1) [1999] 1 Qd R 141
Mann v Carnell (1999) 201 CLR 1
Optiver Australia Pty Ltd v Tibra Trading Pty Ltd (No 5) [2012] FCA 1226
Pratt Holdings Pty Ltd v Commissioner of Taxation (2004) 136 FCR 357
Trade Practices Commission v Sterling (1979) 36 FLR 244Date of hearing: 19 November 2012 Place: Sydney Division: GENERAL DIVISION Category: Catchwords Number of paragraphs: 30 Counsel for the Applicants: Ms CL Cochrane Solicitor for the Applicants: Allens Counsel for the Respondent: Mr DK Catterns QC Solicitor for the Respondent: Herbert Smith Freehills
IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY
GENERAL DIVISION
NSD 1116 of 2009
BETWEEN: BRISTOL-MYERS SQUIBB COMPANY
First ApplicantOTSUKA PHARMACEUTICAL CO., LTD
Second ApplicantAND: APOTEX PTY LTD (ACN 096 916 148)
Respondent
JUDGE:
YATES J
DATE OF ORDER:
23 NOVEMBER 2012
WHERE MADE:
SYDNEY
THE COURT ORDERS THAT:
1.Within 7 days of the date of this order the applicants provide copies to the respondent’s solicitors of any notes made by Professor Easton during his observation of the experiment conducted by Associate Professor McGeary pursuant to order 2 of the orders made on 1 August 2011.
2.The applicants pay the respondent’s costs of the interlocutory application dated 2 November 2012.
Note: Settlement and entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.
IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY
GENERAL DIVISION
NSD 1116 of 2009
BETWEEN: BRISTOL-MYERS SQUIBB COMPANY
First ApplicantOTSUKA PHARMACEUTICAL CO., LTD
Second ApplicantAND: APOTEX PTY LTD (ACN 096 916 148)
Respondent
JUDGE:
YATES J
DATE:
23 NOVEMBER 2012
PLACE:
SYDNEY
REASONS FOR JUDGMENT
This proceeding concerns the infringement and validity of Australian Patent No. 2002334413 entitled “Low hygroscopic aripiprazole drug substance and processes for the preparation thereof” (the patent or the patent in suit).
Aripiprazole is an atypical antipsychotic agent that is…
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- AGLC
- Bristol-Myers Squibb Company v Apotex Pty Ltd (No 3) [2012] FCA 1310
- Case
- [2012] FCA 1310
- Decision Date
CaseChat Overview and Summary
The court had to decide whether the notes were protected by legal professional privilege, specifically litigation privilege, and whether this protection was lost when the notes were used to draft the affidavit. The court found that the notes did indeed attract legal professional privilege upon their creation, as they were made to communicate information, advice, and opinions to the applicants’ solicitors. However, the court also concluded that the privilege was effectively waived when Professor Easton used the notes to draft his affidavit. This use of the notes meant that they were no longer protected by the privilege, as the documents had been deployed in a manner that exposed the protected communications.
The court's reasoning was grounded in the principle that while legal professional privilege protects confidential communications, documents created for the purpose of facilitating these communications also attract the privilege, particularly in the context of litigation. However, the court found that the privilege was lost once the notes were used to draft the affidavit, as this deployment exposed the confidential communications contained within. Consequently, the court ordered that the applicants provide copies of the notes to the respondent’s solicitors within seven days and that the applicants pay the respondent’s costs of the interlocutory application.
Orders
Orders of the court
1. Within 7 days of the date of this order the applicants provide copies to the respondent’s solicitors of any notes made by Professor Easton during his observation of the experiment conducted by Associate Professor McGeary pursuant to order 2 of the orders made on 1 August 2011.
2. The applicants pay the respondent’s costs of the interlocutory application dated 2 November 2012.
Background
Background to the litigation
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Evidence
Evidence Before The Court
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Decision
Reasons for decision
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Ratio Decidendi
Legal Principle Established
The respondent also submitted that the applicants’ continued claim of privilege was inconsistent with their obligations under s 37N of the Federal Court of Australia Act 1976 (Cth) to conduct the principal proceeding in a way that is consistent with the overarching purpose of facilitating the just resolution of their dispute with the respondent according to law and as quickly, inexpensively and efficiently as possible: see also s 37M in that regard. I should say immediately that I do not see that provision as impeding a party from maintaining a proper claim of legal professional privilege or derogating from its right to do so.Consideration I am satisfied that Professor Easton’s notes attracted legal professional privilege (specifically, litigation privilege) upon their creation. Although there is no evidence that the applicants’ solicitors asked Professor Easton to make notes of his observations of the performance by Associate Professor McGeary of the experiment, there is no doubt at all that Professor Easton’s presence at the experiment was for the purposes of providing information, advice and opinions that were responsive to the applicants’ solicitors’ requests of him. There is also no doubt at all that his notes were made to enable him to communicate those matters to them. I do not accept the respondent’s submission that the applicants’ evidence on this score lacks focus or is not specific, or that it rests in nothing more than bare statements of conclusion. Similarly, I do not accept that Professor Easton’s notes fall into the category of “working notes” or “field notes” of the kind to which Lindgren J referred in Southcorp at [21]. In that connection his Honour further characterised the documents he had in mind as those that “are not in the nature of, and would not expose, communications”. Although legal professional privilege protects the confidentiality of communications and not documents as such (Esso Australia Resources Limited v Commissioner of Taxation of the Commonwealth of Australia (1999) 201 CLR 49 at 64), it does not seem to be in doubt that documents created for the dominant purpose of making the protected communication, the terms of which have remained confidential, also attract the privilege, certainly where litigation privilege is the issue: Pratt Holdings Pty Ltd v Commissioner of Taxation (2004) 136 FCR 357 at [19]; Trade Practices Commission v Sterling (1979) 36 FLR 244 at 246; Interchase at 162; Optiver Australia Pty Ltd v Tibra Trading Pty Ltd (No 5) [2012] FCA 1226 at [13]. Professor Easton’s notes are of that character. However, I am unable to see how the applicants can maintain a claim for privilege in respect of any part of the notes in light of what was undoubtedly their deployment by Professor Easton in making his affidavit to be read in the principal proceeding. In this connection it does not matter that Professor Easton has chosen to refer in his affidavit to only certain observations recorded by him at the time of the experiment, and not to others. The undisclosed parts of Professor Easton’s notes do not represent mere musings by him unrelated to the very tasks that had been assigned to him by the applicants’ solicitors. I can only conclude on the evidence before me that Professor Easton made the notes to assist him in fulfilling the tasks that had been assigned to him and that, thereafter, he used the notes as the direct source for the observations and consequent opinions he expresses in his affidavit concerning the manner in which the experiment was conducted by Associate Professor McGeary.