H Lundbeck A/S v Sandoz Pty Ltd - [2011] NSWSC 1297

Supreme Court

New South Wales

Medium Neutral Citation: H. Lundbeck A/S v Sandoz Pty Ltd [2011] NSWSC 1297
Hearing dates: Wednesday, 26 October 2011
Decision date: 26 October 2011
Jurisdiction: Equity Division
Before: Brereton J
Decision:
Defendant restrained from disclosing terms of, or part of, settlement agreement between defendant and plaintiff.

Catchwords: INJUNCTIONS - Plaintiff and defendant parties to confidential settlement agreement in relation to prior litigious dispute - defendant seeks to disclose terms of agreement to law firm acting for defendant and other parties in proceedings before Administrative Appeals Tribunal - proceedings on foot in Administrative Appeals Tribunal pertain to patent the subject of the settlement agreement - no evidence terms of settlement agreement in public domain - settlement agreement potentially exposes terms on which plaintiff willing to compromise litigation - impossible for law firm acting for defendant and other parties to put out of its mind the terms of the agreement in developing tactics and undertaking negotiations on behalf of and for benefit of its other clients - injunction granted restraining disclosure.
Legislation Cited: (CTH) Administrative Appeals Tribunal Act, 1975, s 40, s 43
(CTH) Patents Act, 1990, s 70, s 223
Cases Cited: AG Australia Holdings v Burton [2002] NSWSC 454
Carindale Country Club Estate Pty Ltd v Astill and Others (1993) 42 FCR 307
Drake v Minister for Immigration and Ethnic Affairs (1979) 46 FLR
Maggbury Pty Ltd and Another v Hafele Australia Pty Ltd and Another (2001) 210 CLR 181
Category: Principal judgment
Parties: H. Lundbeck A/S (plaintiff)
Sandoz Pty Ltd (defendant)
Representation: Counsel:
Mr D Shavin SC with Mr G Raffell (plaintiff)
Mr D Studdy SC with Mr A Fox (defendant)
Solicitors:
Corrs Chambers Westgarth (plaintiff)
Griffith Hack Lawyers (defendant)

File Number(s): 2011/269958

Judgment (ex tempore)

HIS HONOUR: The plaintiff H. Lundbeck A/S ('Lundbeck') is the registered proprietor of an Australian patent which claims a pharmaceutical substance known as escitalopram. In 2006, the defendant Sandoz Pty Ltd ('Sandoz'), applied to the Federal Court of Australia for an order revoking the patent on various grounds. Those proceedings were ultimately settled, as between Lundbeck and Sandoz, on terms and conditions contained in a settlement agreement made in or about February 2007. That agreement contains the following relevant terms:

1. Release by, and obligations of, Sandoz

Sandoz:

(c) agrees to keep confidential the terms of this Agreement indefinitely and to keep confidential the existence of this Agreement until 20 February 2007. To avoid doubt, as from 20 February 2007, the mere fact that the parties have agreed to settle the Proceedings is not confidential ...

...

2. Release by, and obligations of, Lundbeck

Lundbeck Denmark and Lundbeck Australia jointly and severally:

(a) agree to keep confidential the terms of this Agreement indefinitely and to keep confidential the existence of this Agreement until 20 February 2007. To avoid doubt, as from 20 February 2007, the mere fact that the parties have agreed to settle the Proceedings is not confidential ...

Subsequently, further proceedings have ensued. The patent expired…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

Keep reading for free

Create a free CaseChat account to read H Lundbeck A/S v Sandoz Pty Ltd and more:

Read every judgment in full
Ask AI and get answers linked to paragraphs
See how each paragraph was cited in later cases
Download judgments as PDF or Word

Continue with Google

One click creates your free account or signs you in.

By continuing you agree to the Terms and Privacy Policy.

Details

Case: [2011] NSWSC 1297
Decision Date: 26 October 2011

CaseChat Overview and Summary

In the matter of H Lundbeck A/S versus Sandoz Pty Ltd, the dispute arose from a confidential settlement agreement between the parties, which was executed to resolve a prior litigious dispute. The plaintiff, H Lundbeck A/S, sought an injunction to prevent the defendant, Sandoz Pty Ltd, from disclosing the terms of the settlement agreement to the law firm representing the defendant and other parties in proceedings before the Administrative Appeals Tribunal. The subject matter of the Administrative Appeals Tribunal proceedings was a patent that was the focus of the settlement agreement.

The court was required to determine whether the defendant's intention to disclose the terms of the settlement agreement to its law firm would breach the confidentiality provisions of the agreement and if such disclosure would result in any prejudice to the plaintiff. The court held that there was no evidence that the terms of the settlement agreement were already in the public domain, and the agreement potentially revealed the terms on which the plaintiff was willing to compromise the litigation. The court concluded that it would be impossible for the law firm to disregard the terms of the agreement while developing tactics and negotiating on behalf of the defendant and other parties, which could ultimately prejudice the plaintiff.

The court granted the injunction, restraining the defendant from disclosing the terms of the settlement agreement to its law firm and other parties involved in the Administrative Appeals Tribunal proceedings. This injunction aimed to protect the confidentiality of the settlement agreement and prevent any potential prejudice to the plaintiff arising from the disclosure of the terms. The final orders of the court included the injunction, as well as the preservation of the confidentiality of the settlement agreement between the parties.

Orders