Wellcome Foundation Ltd v V.R. Laboratories (Australia) Pty Ltd

[1980] FCA 33

Re: THE WELLCOME FOUNDATION LIMITED
And: V.R. LABORATORIES (AUST.) PTY. LIMITED (1980) 42 FLR 266
No. G. 78 of 1979
Practice

COURT

IN THE FEDERAL COURT OF AUSTRALIA

NEW SOUTH WALES DISTRICT REGISTRY
GENERAL DIVISION
Bowen C.J.(1), Franki(2) and Deane(3) JJ.

CATCHWORDS

Practice - Discovery - Convention Patent - Whether experimental work of inventor before priority date should be discovered.

Practice - Procedure - Discovery - Convention patent - Action for infringement - Counterclaim for revocation on grounds of obviousness and lack of novelty - Order for discovery of documents relating to experimental work before priority date - Relevance of experimental work in England where convention patent sought in Australia - Discretion - Patents Act 1952 (Cth), s. 40 - High Court Rules, O. 38, rr. 8, 18.

HEADNOTE

The plaintiff brought an action in the Supreme Court of New South Wales against the defendant for infringement of a patent. The defendant counterclaimed for revocation of the patent on the grounds, inter alia, that the invention was obvious and was not novel in Australia on the priority date.

Rath J. made an order that the plaintiff make a further and better affidavit of discovery including documents in the following classes: (a) documents relating to research and development and experimental work of the claimed invention both before and after the priority date of the subject letters patent; (b) documents relating to the provisional application for the patent and documents relating to the application for the complete patent, as the case may be, both in the United Kingdom and in Australia in so far as they contained matters relevant to (a).

The plaintiff appealed against that order to the Full Court of the Federal Court of Australia, and argued: 1. That documents in the two classes could not be relevant, and therefore were not discoverable, in the absence of evidence that the state of the art in England was the same as the state of the art in Australia at the relevant time. 2. That it was necessary to show how close the inventor was to an unimaginative skilled technician before the relevance of the experiments could be evaluated. 3. That the primary judge had a discretion which should not have been exercised in favour of the respondent.

Held, that the question of what documents must be discovered is different from the question what interrogatories must be answered. It is sufficient if documents are capable of throwing light on the case.

Whether the documents would be admissible does not determine the question whether they should be discovered.

The respondent was entitled to the orders made and the primary judge's discretion was properly exercised.

HEARING

Sydney, 1980, February 20; March 24. #DATE 24:3:1980

APPEAL.

The material facts appear from the judgment of Franki J.

T. Simos Q.C. and W. M. C. Gummow, for the appellant.

B. A. Beaumont Q.C. and J. J. Garnsey, for the respondent.

Cur. adv. vult.

Solicitors for the appellant: Stephen, Jacques & Stephen.

Solicitors for the respondent: Dawson Waldron.

J.W.K. BURNSIDE

ORDER

1. The appeal is dismissed.

2. The appellant is to pay the respondent's costs of the appeal.

Appeal dismissed with costs.

JUDGE1

I agree with the reasons given and conclusions reached by Franki J. and would dismiss the appeal with costs.

JUDGE2

I agree with the judgment of Franki J.

JUDGE3

This is an appeal from orders made by a judge of the Supreme Court of New South Wales in relation to discovery.

The appellant, the Wellcome Foundation Limited, is the proprietor of patent no. 459109 for "Improvements in or relating to injectable therapeutic compositions." The appellant is the plaintiff in an action in the Supreme Court of New South Wales against the respondent, V.R. Laboratories (Aust.) Pty. Limited, for infringement of the patent. The respondent has counter claimed for revocation of the patent and seeks a declaration that it is and at all material times has been invalid and an order that it be revoked. The particulars given in support of the counter claim, so far as is relevant to this appeal, are:

(a) that the complete specification does not comply with the requirements of s. 40 of the Patents Act 1952,

(b) that the invention, so far as claimed in each claim, was obvious and did not involve an inventive step, having regard to what was known or used in Australia on or before the priority date of each claim,

(c) the invention, so far as claimed in each claim, was not novel in Australia on the priority date of each claim. Particulars of prior publication were then given and embraced eight Australian patent specifications and specified pages of 32 other publications,

(d) the invention, so far as claimed in each claim, is not useful.

No particulars were given in relation to the defence that each claim was obvious. The first claim in the specification is:
"1.An aqueous injectable preparation, as herein defined, which comprises a suspension of a finely divided potentiator, as herein defined, at least 99% of the particles of potentiator in the suspension having a largest dimension less than 50u, in an aqueous solution of a pharmceutically acceptable water soluble salt of a sulphonamide with a strong base, the ratio of sulphonamide to potentiator being within the range from 20:1 to 0.1:1 (W/W) and the pH of the preparation being greater than 9.75."

It is not, however, necessary in these proceedings to consider the technical aspects of the patent.

The learned judge of the Supreme Court of New South Wales had before him a motion by the defendant for certain orders in relation to discovery and he made orders in the following terms:
"1. The Plaintiff file and serve a further and better affidavit of discovery in these proceedings.

2. The said further and better affidavit of discovery shall include inter alia documents in the following classes: -

(a) Documents relating to research and development and experimental work of the claimed invention both before and after the priority date of the subject letters patent;

(b) Documents relating to the provisionsal application for the patent and documents relating to the application for the complete patent, as the case may be, both in the United Kingdom and in Australia insofar as they contain matters relevant to (a) above.

3. Costs shall be costs in the cause."
In addition his Honour limited the second order which he made by the following statement:
"Documents coming into existence after the priority date should be discovered if they refer to research and development and experimental work of the claimed invention before that date; and if the order 2(a) sought is so understood it should properly be made. But the making of such an order will not oblige the plaintiff to discover documents not relevant to work before the priority date."

The patent was obtained under those provisions of the Patents Act relating to convention applications and the basic application was made in Great Britain and had a convention priority date of 13 March 1970.

The appellant's main argument in the appeal was that there was no evidence before the primary judge and therefore before this Court concerning the state of the art at the relevant time in England even though there was evidence concerning the state of the art at the relevant time in Australia. The argument then proceeded that the evidence of any experimental work carried out for the patentee was irrelevant unless it could be shown that at the priority date the state of the art in England was substantially the same as the state of the art in Australia.

The second argument advanced by the appellant was that it was also necessary to show how close the inventor was to "an unimaginative skilled technician" so that the relevance of his experiments could be evaluated. The third argument was based on the submission that the primary judge had a discretion in the matter and he should not have exercised his discretion in favour of the respondent.

The Court of first instance had before it not only the pleadings and particulars but also affidavits from witnesses, apparently expert in the field, dealing with technical matters and filed by both parties as relevant on the question of obviousness. These affidavits were filed pursuant to an order of the Court that expert evidence be given upon affidavit.

It is first necessary to consider the principles applicable in relation to discovery. The Court of Appeal in The Compagnie Financiere et Commerciale du Pacifique v. The Peruvian Guano Company (1882) 11 Q.B.D. 55 considered the matter and Brett L.J. at p. 63 formulated the test as follows:
"It seems to me that every document relates to the matters in question in the action, which not only would be evidence upon any issue, but also which, it is reasonable to suppose, contains information which may - not which must - either directly or indirectly enable the parties requiring the affidavit either to advance his own case or to damage the case of his adversary."
In Halsbury's Laws of England Fourth ed. Vol. 13 para. 38 the above passage is cited and it is followed by the following:
"Documents relate to matters in question in the action whether they are capable of being given in evidence or not, so long as they are likely to throw light on the case."

In Temmler v. Knoll Laboratories (Aust.) Pty. Ltd. (1969) 43 A.L.J.R. 363 Windeyer J. had to consider this question of discovery in relation to an action for infringement of a convention patent. His Honour referred to High Court Rules order 32 rr. 8 and 18 and pointed out that it was essential to the obtaining of an order for discovery and for inspection that the documents in respect of which it was sought must be related to the matter in question in the proceedings. His Honour then continued:
"It may be that documents can be said to relate to a matter in question in the proceeding if they may fairly lead to a train of enquiry which would help to establish the case of the parties seeking discovery . . . But the documents to be discoverable must be related in some way to some question in issue. What matters are in question in the proceedings must depend upon the pleadings, including of course the particulars of objection."

In Mulley v. Manifold (1959) 103 C.L.R. 341 at p. 345 Menzies J. stated the following test:
"Only a document which relates in some way to a matter in issue is discoverable, but it is sufficient if it would, or would lead to a train of enquiry which would, either advance a party's own case or damage that of his adversary."

As to discovery see generally American Cyanamid Co. v. Ethicon Ltd. (1978) R.P.C. 667; Halcon International Inc. v. The Shell Transport and Trading Co. Ltd. (1979) R.P.C. 459 at pp. 464-465 and Beecham Group Ltd. v. Bristol-Myers Co. (1979) V.R. 273. The question of what documents must be discovered is a different question to what interrogatories must be answered. The unreported case of Pulbrook Bros. Pty. Ltd. v. C.W. Donney & Son Pty. Limited before Barwick C.J. deals with interrogatories.

There is no doubt that the pleadings and affidavits which were before the primary judge show that the patentee is alleging that the relevant invention claimed was arrived at after experimentation. No argument to the contrary was addressed to us.

At least in a case where the patentee claims that an invention has been made after relevant experiments have been conducted there is ample authority for the proposition that the evidence of the inventor concerning the work he did before he arrived at the invention is admissible. In Lightning Fastener Co. Ltd. v. Colonial Fastener Co. Ltd. (1934) 51 R.P.C. 349 at p. 367, Lord Tomlin in the Privy Council said:
"It is certain that the general mechanical idea of combining in this class of work all the necessary operations in one machine was novel and a perusal of the evidence of the inventor Sundback given before the Trial Judge satisfies their Lordships that, so far from the combination being obvious, it was only after years of work at the problem of how to produce stringers that the combination was recognised to be desirable or found to be possible, and that the inventive element necessary to constitute subject-matter is made sufficiently evident.
See also Sunbeam Corporation v. Morphy-Richards (Australia) Pty. Ltd (1961) 35 A.L.J.R. 212 at p. 219 (Windeyer J.) and Howaldt Ltd. v. Condrup Ltd. (1937) 54 R.P.C. 119 at pp. 131-132 (Farwell J.).

In addition, at this stage, we do not have to consider whether any of the material for which discovery is sought would be admissible or not at the trial. The knowledge of the experiments conducted by the inventor may be very useful in the formulation of a line of cross-examination of technical witnesses called by the appellant in the action. The question of whether any documents discovered are admissible in evidence would be a matter for the trial judge at the relevant time. I see some difficulty in a view that the admissibility would necessarily depend upon knowing the state of the art in Great Britain, or establishing that the state of the art there was the same as in Australia at the relevant date, or the extent to which the inventor could be classified as an "unimaginative skilled technician." The question now before us is not as to the admissibility of the evidence of the inventor in relation to obviousness but whether what the inventor did should be discovered. This is very different to the question which arose in Lucas Industries Ltd. v. Chloride Batteries Australia Ltd. (1978) 18 A.L.R. 579.

Certainly so far as discovery is concerned I am satisfied that it is relevant for the respondent to know what experiments the inventor carried out in Great Britain. This knowledge would assist the respondent in examining the alleged invention against the background of the state of the art in Australia as particularised in the particulars of objection. Because of the view I take it is not necessary to consider whether there was any evidence before the primary judge of the state of the art in Great Britain. For the same reason it is not necessary to consider whether the order of the primary judge would be justified because of the allegations in the particulars of objection of inutility or that the specification did not comply with the requirements of s.40 of the Patents Act 1952.

I pass now to the third argument that the primary judge should have declined to make the orders he made because the material sought to be discovered was of insufficient importance. For the reasons I have expressed it seems to me that the respondent was entitled to the orders made and that the judge properly exercised any discretion which he had. This is certainly not a case where this Court would be justified in substituting its discretion for that of the primary judge.

No point was taken before the primary judge of any possible difference between experiments carried out by the patentee and those carried out by the inventor.

I would dismiss the appeal with costs.