Smithkline Beecham Plc v FH Faulding and Co Ltd

[2004] FCA 999

FEDERAL COURT OF AUSTRALIA

Smithkline Beecham PLC v FH Faulding & Co Ltd [2004] FCA 999

SMITHKLINE BEECHAM PLC & ORS v FH FAULDING & CO LTD & ORS

V105 OF 2003

FH FAULDING & CO LTD v BEECHAM GROUP PLC & ORS

N398 OF 2003

EMMETT J
2 AUGUST 2004
SYDNEY

IN THE FEDERAL COURT OF AUSTRALIA

NEW SOUTH WALES DISTRICT REGISTRY

V105 OF 2003

BETWEEN:

SMITHKLINE BEECHAM PLC

FIRST APPLICANT

BEECHAM GROUP PLC

SECOND APPLICANT

GLAXOSMITHKLINE AUSTRALIA PTY LIMITED
THIRD APPLICANT

AND:

FH FAULDING & CO LIMITED

FIRST RESPONDENT

GENRX PTY LTD

SECOND RESPONDENT

FAULDING HEALTHCARE PTY LTD
THIRD RESPONDENT

N398 OF 2003

BETWEEN:

FH FAULDING & CO LIMITED
FIRST APPLICANT

AND:

BEECHAM GROUP PLC

FIRST RESPONDENT

SMITHKLINE BEECHAM PLC

SECOND RESPONDENT

GLAXOSMITHKLINE AUSTRALIA PTY LIMITED
THIRD RESPONDENT

JUDGE:

EMMETT J

DATE OF ORDER:

2 AUGUST 2004

WHERE MADE:

SYDNEY

THE COURT ORDERS THAT:

1.The SB parties (applicants in V105 of 2003; respondents in N398 of 2003) have leave to file a notice of motion for further discovery returnable on 6 August 2004 at 9.30am.

2.        The cost of the eCourt application for further discovery be reserved.

Note:   Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.

IN THE FEDERAL COURT OF AUSTRALIA

NEW SOUTH WALES DISTRICT REGISTRY

V105 OF 2003

BETWEEN:

SMITHKLINE BEECHAM PLC
FIRST APPLICANT

BEECHAM GROUP PLC
SECOND APPLICANT

GLAXOSMITHKLINE AUSTRALIA PTY LIMITED
THIRD APPLICANT

AND:

FH FAULDING & CO LIMITED
FIRST RESPONDENT

GENRX PTY LTD
SECOND RESPONDENT

FAULDING HEALTHCARE PTY LTD
THIRD RESPONDENT

N398 OF 2003

BETWEEN:

FH FAULDING & CO LIMITED
FIRST APPLICANT

AND:

BEECHAM GROUP PLC
FIRST RESPONDENT

SMITHKLINE BEECHAM PLC
SECOND RESPONDENT

GLAXOSMITHKLINE AUSTRALIA PTY LIMITED
THIRD RESPONDENT

JUDGE:	EMMETT J
DATE:	2 AUGUST 2004
PLACE:	SYDNEY

REASONS FOR JUDGMENT

1. The applicants (SB), who alleged infringement of their patents by the respondents, seek more particular discovery from the respondents (Faulding).  The scope of the further discovery is set out in submissions of 16 June 2004, which incorporate reference to earlier correspondence between the parties concerning the question of further discovery.  The dispute relates to three categories of documents as follows:

   (a)the General Marketing Application submitted by Faulding in relation to the registration with the Therapeutic Goods Administration of the paroxetine hydrochloride tablets distributed by Faulding in Australia under various brand names;

   (b)documents relating to the packaging and labelling of such tablets;

   (c)correspondence between Faulding and its supplier of such tablets relating to matters other than the manufacture of such tablets.

2. Subsequent to the request for determination of the dispute, the solicitors for SB requested that the matter be deferred pending questions of further joinder of parties.  The deferral is opposed by Faulding.

3. On the material presently before me, I am not persuaded that there should be orders for more particular discovery in respect of the categories of documents identified.  The matter is listed for directions generally on 6 August 2004.  If required I would give leave to SB to file and serve any notice of motion for further discovery returnable on that day.  The costs of the eCourt topic to date should be reserved pending the determination of any such motion.

I certify that the preceding three (3) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Emmett.

Associate:

Dated:            2 August 2004

V105 of 2003
Solicitor for the Applicants:	Allens Arthur Robinson
Solicitor for the Respondents	Freehills
N398 of 2003
Solicitor for the Applicant	Freehills
Solicitor for the Respondents	Allens Arthur Robinson
Date of Hearing:	2 August 2004
Date of Judgment:	2 August 2004