Genentech Inc v Human Genome Sciences Inc
[2000] APO 22
•17 March 2000
OFFICIAL NOTICE
DECISION OF A DEPUTY COMMISSIONER OF PATENTS
Application : No. 710696 in the name of GENENTECH INC.
Title: VEGF-Related protein
Action: Notice requiring production of certain documents in relation to a request by Human Genome Sciences Inc for an extension of time under Section 223 to file a notice of opposition, compliance with the notice to produce and lawful excuse.
Decision: Issued .
Abstract
Compliance with a notice to produce; Human Genome Sciences Inc found to have complied or to have lawful excuse in relation to notes of telephone conversations with HGS' declarant that may be held by its former patent attorneys and in relation to portions of documents that have been redacted.
Eli Lilly & Company v Novo Nordisk A/S [1999] APO 45 (2 August 1999); Emory University v Bio Pharma Inc 43 IPR 118; Julie Breen V Cholmondeley W Williams 186 CLR 71.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Patent Application No. 710696 by Genentech Inc.; notice requiring production of certain documents in relation to a request by Human Genome Sciences Inc for an extension of time under Section 223(2)(a) to file a notice of opposition, compliance with the notice to produce and lawful excuse.
Background
The subject of the present application is a VEGF-related protein. The application was advertised accepted on 30 September 1999 and consequently the time for filing a notice of opposition expired on 30 December 1999. Ludwig Institute for Cancer Reseach filed a notice within this time and the time for filing a Statement of Grounds in that opposition expires on 30 March 2000.
On 7 January 2000 Human Genome Sciences Inc. (HGS) filed a notice of opposition accompanied by an application for an extension of time under section 223 that indicated that the circumstances on which it was based would be detailed in a following declaration. This declaration was provided on 11 January and was made by Michele Wales who is "an in-house patent counsel" for HGS.
By a letter dated 27 January 2000 Genentech indicated that it objected to the extension application and the matter was set for hearing on 29 February. In the meantime on 9 February Genentech obtained a notice for production in relation to materials referred to in Michele Wales' declaration including file notes of telephone conversations said to have taken place with Dr Hughes of Davies Collison Cave. In response to this HGS filed a second declaration made by Ms Wales including a redacted copy of a letter with attachments from Dr Hughes. Ms Wales indicated that she had been unable to locate in her files any records of the telephone conversation or copies of patent searches she had stated had been conducted on VEGF. Consequently Genentech indicated it would contest non-compliance with the notice to produce.
The hearing proceeded in Canberra on 28 February where Genentech was represented by B Fitzpatrick of counsel assisted by W J Pickering of F. B. Rice and Co., Melbourne. HGS was represented by K Howard of counsel assisted by G B Cox of Wray & Associates, Perth
Consequent to HGS' indication at the hearing that it did not view the order for production as applying to material that may be held by its former patent attorney Davies Collison Cave, Genentech obtained on 7 March 2000 a notice requiring production from that firm of any written records in relation to the telephone conversations mentioned in Ms Wales' declarations.
The issuing of this second notice requiring production does not however preclude a decision on the matters arising from the earlier notice on which submissions were received at the hearing. I will refer to the various oral and written submissions made by the parties as appropriate in my decision.
Applicable Law
The power for the Commissioner to require production is provided under section 210 of the Act:
The Commissioner may, for the purposes of this Act:
(a)summon witnesses; and
(b)receive written or oral evidence on oath or affirmation; and
(c)require the production of documents or articles; and
(d)award costs against a party to proceedings before the Commissioner.
The practice of the Commissioner in dealing with a request to issue a Notice Requiring Production is as recited in Eli Lilly & Company v Novo Nordisk A/S [1999] APO 45 (2 August 1999); that is the Commissioner:
"… will consider ex parte whether a requested notice has adjectival relevance. Unless adjectival relevance is clearly lacking, the Notice will be issued - with the expectation that any issues of lack of relevance will be dealt with as a matter of as lawful excuse for non-compliance with the Notice."
Thus the person to whom the notice is given must either produce the documents identified or provide to the Commissioner a lawful excuse. Where there is a dispute as to compliance with the notice it is appropriate that both the party on whom the notice has been served and the party seeking production should be heard.
Notice for Production
HGS was required to produce the following:
The original, or a certified copy, of any file notes, memorandum or other written record of the telephone conversation between Michele Wales and the Australian Patent Attorney firm of Davies Collison Cave alleged to have taken place on 12 January 1998 [sic] and referred to in paragraph 6 of Michele Wales' statutory declaration sworn on 11 January 2000.
To the extent that it differs from the telephone conversation referred to in paragraph 1 above, the original, or a certified copy, of any file notes, memorandum or other written record of the telephone conversation between Michele Wales and the Australian Patent Attorney firm of Davies Collison Cave alleged to have taken place on 12 January 1998 [sic] and referred to in paragraph 7 of Michele Wales' statutory declaration sworn on 11 January 2000.
The original, or a certified copy, of the letter dated 14 January 1998 [sic] from E. John L. Hughes referred to in paragraph 8 of Michele Wales' statutory declaration sworn on 11 January 2000.
The original, or certified copies, of the routine searches referred to in paragraph 4 of Michele Wales' statutory declaration sworn on 11 January 2000.
To the extent that it differs from the correspondence referred to in paragraph 3 above, the original, or a certified copy, of the correspondence from Davies Collison Gave, together with any enclosures, containing the information regarding the status of the third party applications referred to in paragraph 9 of Michele Wales' statutory declaration sworn on 11 January 2000.
To the extent that it differs from the document referred to in paragraph 5 above, the original, or a certified copy, of the status report provided by Davies Collison Cave referred to in paragraph 10 of Michele Wales' statutory declaration sworn on 11 January 2000,
In the event it has produced material in relation only to paragraphs 3, 5 and 6 but has indicated that documents sought in relation to paragraph 1,2 and 4 were not in its possession and that the portions redacted from Dr Hughes letter in relation to paragraphs 3, 5 and 6 were in relation to separate confidential matters not relevant to the present action.
Submissions
Genentech complain that HGS have not complied with the notice and consequently have not provided a full and frank disclosure of the events that led to the failure to file the notice of opposition within time, relying on Kimberly-Clark v Commissioner of Patents (1988) 13 IPR 569. In particular it criticises Ms Wales for not making enquiries within HGS or with its legal advisers in relation to the search reports and for not enquiring with Davis Collison Cave if they are in possession of file notes relating to the telephone conversations mentioned. The redacted information it submits is relevant to determining if there was an intention to oppose and if confidential Genentech offers to provide suitable undertakings for inspection of it.
HGS argues in short that:
HGS is not yet joined as an opponent and, being a company incorporated in the United States of America, does not submit to the jurisdiction of the Commissioner.
There is a distinction between substantive and procedural proceedings and the current matter being procedural should not be subject to production.
The notice requiring production served on HGS did not require HGS to make enquiries about documents that may be in the possession of Davies Collison Cave.
The declarations indicate that all relevant portions of Dr Hughes' letter have been produced. The insistence on production of the redacted portions is a fishing exercise.
In any event, the redacted portions of Dr Hughes' letter are subject to legal professional privilege and are confidential.
Decision
In relation to the jurisdiction issue I believe the argument is quite disingenuous. A person seeking the discretion of the Commissioner to allow an extension of time to be admitted as an opponent has submitted to the jurisdiction of the Commissioner as surely as if they were indeed an opponent as in Emory University v Bio Pharma Inc 43 IPR 118. If HGS is not submitting to the jurisdiction of the Commissioner I cannot see how it can expect the Commissioner to exercise a discretion in its favour.
On the nature of proceedings, while Ms Howard pointed to the IPAC report as appreciating a distinction between procedural and substantive matters, there is nothing in section 210 which expresses such a distinction. All that is necessary is that production be required "for the purposes of this Act". I would note also that the power to require production predates the 1990 Act and the IPAC report and although little used under the 1952 Act there has never been any suggestion, implied or otherwise, that the power is limited to "substantive" matters however they may be defined.
Section 210 is silent on the scope and nature of production but I believe it is appropriate as in the Federal Court (see O. 15 r. 13) to consider production as being limited to documents or articles within the possession, custody or power of a particular party. Hence while documents sought may not have been within the possession or custody of Ms Wales or HGS generally, I believe it also had an obligation to produce any documents within its power. "Power" has been interpreted as "an enforceable right to obtain possession from another person" (Turner v Davies [1981] 2 N.S.W.L.R. 324). The question then is whether HGS has a right to obtain possession of any notes in relation to telephone conversation as set out at paragraphs 1 and 2 of the notice that may be held by Davies Collison Cave.
The High Court case in Julie Breen V Cholmondeley W Williams 186 CLR 71 is instructive in this matter and I note in the decision of Dawson and Toohey JJ:
"The general principle is that documents brought into existence by an agent while in the employ of a principal belong to the principal and not to the agent [Leicestershire County Council v Michael Faraday and Partners Ltd (1941)2 KB 205 at 216]. Of course, sometimes in a relationship between a professional and a client, the professional may act as an agent in the course of providing services in which case documents brought into existence may be the property of the client. For example, a contract or deed produced by a solicitor for a client and paid for by the client is the property of the client. On the other hand, as was observed in Chantrey Martin v Martin [(1953) 2 QB 286 at 292-293. See also Wentworth v De Montfort (1988) 15 NSWLR348 where the authorities are discussed.]:
"Even in the case of a solicitor there must, we should have thought, be instances of memoranda, notes, etc, made by him for his own information in the course of his business which remain his property, although brought into existence in connexion with work done for clients." "
MacKinnon LJ in Leicestershire County Council indicated:
"If an agent brings into existence certain documents while in the employment of his principal, they are the principal's documents and the principal can claim that the agent should hand them over, but the present case is emphatically not one of principal and agent. It is a case of the relations between a client and a professional man to whom the client resorts for advice. I think it would be entirely wrong to extend to such a relation what may be the legal result of the quite different relation of principal and agent. ...(The documents in question) are documents which he has prepared for his own assistance in carrying out his expert work, not documents brought into existence by an agent on behalf of his principal, and, therefore, they cannot be said to be the property of the principal."
While patent attorneys may act as agents in relation to the preparation and filing of patent applications and other applications and notices under the Patents Act they also provide professional advice. From the authorities above it would appear that records kept of telephone conversations made for the attorneys benefit in responding to a clients inquiry or request for advice are not normally the property of the client nor can be it said that a client has "an enforceable right to obtain possession". In the absence of any contra-indication I do not believe HGS had an obligation to request of Davies Collison Cave any documents falling within paragraph 1 and 2 of the notice.
Turning to the searches referred to at paragraph 4 of the notice I accept HGS' statement that those documents are not within its possession having not been located in a search of Ms Wales' files. I have nothing before me to suggest that inquiries should have been made with any other officer within HGS and hence find that HGS has lawful excuse for not producing those documents.
There remains the issue of the redacted documents. Confidentiality is not a lawful excuse as is indicated in Eli Lilly v Novo Nordisk A/S, supra . This decision is however precedent for the view that portions of produced documents that are not relevant to proceedings can be redacted and that in the first instance, and subject to particular circumstances, the party producing the documents is the best person to identify the relevant portions. While Attorney-General (N.T.) v. Maurice, (1986) 161 CLR 475 is an authority for the principle that privilege cannot be retained in relation to part of a document, this is the case only if it deals with a single subject matter. Hence I believe privilege may be maintained in those portion of Dr Hughes' letter that are not related to the present proceedings or patent application 710696 and given that Ms Wales has made a statutory declaration that the redacted portions are not relevant I do not think in this case it is necessary for the Commissioner to view the document or act as arbiter.
Conclusion
I find that HGS has complied with the notice requiring production given that lawful excuse has been shown in relation to the documents or information not produced or redacted. Since a further notice requiring production is outstanding it is not appropriate at this point to decide the section 223 application. I will however do so when the matter of the further notice is resolved allowing for further submissions if that is appropriate.
In relation to the further notice I am aware of a letter from Mr Cox indicating that all files relating to these proceedings had been transferred to Wrays and note the various submissions already made concerning privilege, imputed waiver of privilege and confidentiality in relation to the subject material (if it exists). This suggests a number of future scenarios including the possibility of significant additional delay and expense which in the context of these proceedings appears unjustified. Consequently I urge both parties to act expeditiously in these matters consistent with their interests but also in consideration of the public interest in the orderly and efficient administration of the patent system.
COSTS
Award of costs is reserved pending my decision in relation to the application under section 223.
J Werner
Deputy Commissioner of Patents
Patent attorneys for Genentech Inc.: F. B. Rice and Co., Melbourne
Patent attorneys for Human Genome Sciences Inc : Wray & Associates, Perth
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