World Medical Manufacturing Corporation v Phillips Ormonde & Fitzpatrick

SUPREME COURT OF VICTORIA
COMMERCIAL AND EQUITY DIVISION	Not Restricted

No. 6725 of 1999

WORLD MEDICAL MANUFACTURING CORPORATION	Plaintiff
v
PHILLIPS ORMONDE & FITZPATRICK LAWYERS (a firm)	First Defendant
and
PHILLIPS ORMONDE AND FITZPATRICK (a firm)	Second Defendant

---

JUDGE:	Gillard J
WHERE HELD:	Melbourne
DATE OF HEARING:	31 March; 3, 4, 5 and 6 April 2000
DATE OF JUDGMENT:	18 May 2000
CASE MAY BE CITED AS:	World Medical Manufacturing Corporation v Phillips Ormonde & Fitzpatrick Lawyers & Anor
MEDIUM NEUTRAL CITATION:	[2000] VSC 196

---

Solicitors and patent attorneys – acting for and against client – one retainer terminated – injunction sought to restrain acting in Federal Court proceeding – jurisdiction of Supreme Court – principles – no confidential information adverse to interest – injunction refused.

---

APPEARANCES:	Counsel	Solicitors
For the Plaintiff	Mr R. Garratt QC with Mr A. Maryniak	Baker & McKenzie
For the Defendants	Mr A. Archibald QC with Mr G. McGowan	Ebsworth & Ebsworth

TABLE OF CONTENTS

INTRODUCTION........................................................................................................................................................................... 1

PARTIES.......................................................................................................................................................................................... 1

TWO RETAINERS......................................................................................................................................................................... 2

JURISDICTION OF THIS COURT............................................................................................................................................. 7

PRINCIPLES TO APPLY........................................................................................................................................................... 11

FACTS........................................................................................................................................................................................... 21

INFRINGEMENT PROCEEDING.............................................................................................................................................. 33

CONFIDENTIAL INFORMATION?......................................................................................................................................... 34

RELEVANCE OF INFORMATION AND POSSIBLE ADVERSE USE IN THE LITIGATION?.................................... 37

RISK OF DISCLOSURE............................................................................................................................................................. 38

PLAINTIFF'S SUBMISSIONS.................................................................................................................................................. 39

A.    Fiduciary..................................................................................................................................................................... 39
B.     Legal professional privilege.............................................................................................................................. 42
C.     Control over solicitors....................................................................................................................................... 42

CONCLUSION............................................................................................................................................................................. 43

HIS HONOUR:

Introduction

This is the return of a summons in a proceeding instituted by originating motion by the plaintiff seeking an order that each of the defendants be restrained from acting as solicitors and patent attorneys, respectively, in a Federal Court proceeding and be restrained from disclosing any information acquired during the course of acting for the plaintiff.

Parties

The plaintiff, World Medical Manufacturing Corporation ("World Medical") is a company incorporated in the State of Florida in the United States of America. It has developed and manufactures a product known as the Talent stent-graft device which is used in the treatment of aortic diseases. The company also sells other devices used in the treatment of the diseases.

In December 1998 a company called Arterial Vascular Engineering Inc acquired all shares issued in World Medical and subsequently the former company was acquired by Medtronic, Inc.

At all relevant times World Medical was the owner of a US patent No. PCT/US96/17233 in respect of the Talent stent-graft device.

From about July 1996 to mid April 1999 a patent attorney and lawyer, Paul Frederick Bawel, acted as agent for World Medical in the prosecution of its Talent patent application in Australia and the rest of the world.

The first defendant, Phillps Ormonde & Fitzpatrick Lawyers ("POF Lawyers"), is a firm of legal practitioners carrying on practice at 367 Collins Street, Melbourne on the twenty first floor.

At all relevant times there were two partners of that firm, Greg Chambers and John Gibbs.

POF Lawyers hold themselves out as experts in the area of intellectual property law. It is noted that Messrs Chambers and Gibbs hold science degrees in addition to their legal qualifications.

The second defendant, Phillips Ormonde and Fitzpatrick ("POF Attorneys") is a firm of patent and trade mark attorneys.

The firm is a well-known and respected firm of patent attorneys and has been conducting business in Australia in excess of 100 years.

At all relevant times there were at least 19 partners of the firm, some of whom were qualified lawyers.

Messrs Chambers and Gibbs, the partners in POF Lawyers, were partners in POF Attorneys.

The main office of the firm is in Melbourne but it has offices in Sydney and Auckland.

Its managing partner was Malcolm Royal.

Its office in this State is also at 367 Collins Street and it occupies floors 20, 21 and 22, although the main office area is on the 21^st floor.

Both firms occupy the 21^st floor. POF Lawyers were located in one section of the floor and the POF attorneys were in the other but were not physically separated in any way.

Two retainers

In June 1997, Mr Chambers had a meeting with representatives including a US representative of a company called Cook Inc which is a United States company. It also manufactures and sells endovascular stent grafts and is in direct competition with World Medical. The purpose of the meeting was to discuss who would be able to provide professional services to Cook Inc in respect of an alleged infringement of its Australian patent 581464 by the distribution by World Medical of its Talent stent‑graft in Australia.

In August 1997, POF Attorneys were retained by patent attorneys acting for Cook Inc in the United States to advise Cook Inc as to the potential infringement and the institution of legal proceedings.

Mr Chambers handled the matter. At this stage Mr Chambers was performing services on behalf of POF Attorneys.

A search was conducted by POF Attorneys to see whether there was any possible conflict of interest and the search revealed that there was none. Thereafter POF Attorneys performed substantial work on behalf of Cook Inc and in late 1997/early 1998 approached senior counsel Mr Lyons QC for advice and obtained same. Although counsel's brief was delivered in the name of POF Lawyers, no file was opened by that firm.

In the meantime, Mr Bawel, faxed POF Attorneys on 24 February 1998 informing them that he was seeking an agent to represent his client, World Medical, before the Australian Patent Office for a PTC application. PCT stands for Patent Convention Treaty and it was noted that the application was to enter the national stage by 30 April 1998. He informed POF Attorneys that the device for which the patent was sought "is a vascular stent-graft, placed via a catheter".

He made the following request of POF Attorneys –

"Is your firm able to represent WMMC before the Australian Patent Office for such an application?"

He also asked what information was required to file a national stage patent in Australia.

It is common ground that in seeking to ascertain whether POF Attorneys could act for World Medical he was asking them to determine whether or not there was any conflict of interest or any other impediment which would preclude them from acting.

On 25 February 1998 Mr Royal informed Mr Bawel by facsimile that POF Attorneys would be pleased to act for him in Australia.

His letter stated –

"We can enter the national phase and prosecute the application without any signed forms or other documents. We simply need you to identify the international application by its PCT number. We can obtain all of the necessary information from the Australian Patent Office."

The evidence revealed that Mr Royal did search the records of POF Attorneys and satisfied himself that there was no conflict of interest or any other impediment to the firm acting. The records did not reveal the work being performed by Mr Greg Chambers involved World Medical.

Mr Royal forwarded to Mr Bawel details of POF Attorneys and some forms that would assist him in instructing POF Attorneys.

Mr Bawel responded by noting that he "would like to submit a different set of claims for consideration." I interpolate to note that he never did send a different set of claims for consideration.

On 4 March Mr Royal informed him that the procedure for amendment was to lodge a statement either with or shortly after the entry to the national phase. It would appear that the procedure was not complex as Mr Royal stated that the cost was likely to be about A$200.

On 21 March 1998, Mr Bawel sent a facsimile to Mr Royal confirming the retainer which was to assist the national phase entry of the World Medical patent No. 17233.

It was noted that Mr Bawel was to be the point of contact for prosecution of the application and it was noted that he was copying all correspondence to an employee of World Medical.

Mr Bawell also informed Mr Royal that the stent-graft had received two US patents, 5,591,195 and CIP 5713917.

Thereafter POF Attorneys processed the application and it will be necessary to return to what they did in some detail hereafter.

It is noted at this stage that Messrs Tadgell, Gehrig, Cowin, Royal and MacBeth of POF Attorneys at various times handled World Medical's patent application file.

Meanwhile POF Lawyers through Mr Chambers, members of his legal staff and members of POF Attorneys staff were considering and working on the retainer from Cook Inc.

A decision was made in about August 1998 to take proceedings against World Medical and in that month POF Lawyers opened a file which was physically located in their offices.

At that point the POF Lawyers involved in the Cook transaction were Messrs Chambers, Jordan, Schlict and Bell and Margaret Ryan.

Those who had handled the Cook file on behalf of POF Attorneys were Messrs Chambers, Bell, Schlict and Cruise.

When POF Lawyers opened the file in their office no further search was made to determine whether or not there may have been any conflict of interest or any impediment to the firm acting in the proposed Federal Court proceeding.

On 10 February 1999, Cook Inc instituted a patent infringement proceeding in the Federal Court in its Victorian registry against World Medical. The statement of claim settled by Mr Lyons QC contained particulars of the alleged infringements by World Medical of the Cook Inc patent. Cook Inc claims, inter alia, permanent injunctions, damages or account of profits.

It was necessary for an application to be made to serve the proceeding out of Australia and Goldberg J made an order in March 1999.

On 8 April 1999, the court documents were served upon World Medical in the United States of America.

At this stage a patent agent and also a lawyer, Susan Marion Schmitt who was employed by Medtronic Inc and located in California was handling the intellectual property matters on behalf of World Medical. She had recently become involved. She was in the process of terminating the retainer of Mr Bawel who was located in Pennsylvania.

On 19 April 1999 Mr Richard Gough, a solicitor from Baker & McKenzie in Sydney rang Mr Chambers and informed him that Mr Chambers was in a conflict position in that POF Lawyers were acting against World Medical in the Federal Court proceeding and at the same time POF Attorneys were prosecuting World Medical's patent application in Australia.

Thereafter, correspondence took place between the parties, Baker & McKenzie requested certain information some of which was not forthcoming and this made World Medical more convinced that there was a conflict situation and risk of disclosure of confidential information.

Soon after the initial approach by Mr Gough on 26 April 1999 Mr Chambers on behalf of POF Lawyers informed Baker & McKenzie that it was proposed that the attorney's file should be transferred to another firm of patent attorneys.

Thereafter, further correspondence took place and on 21 June 1999 Miss Schmitt on behalf of World Medical requested POF Attorneys to transfer the file to Griffith Hack Patent Attorneys located in Sydney. This was done.

On 3 September 1999 an originating motion was issued in this court seeking the restraining orders against both defendants.

Jurisdiction of this court

The patent infringement proceeding is in the Federal Court of Australia. The question of the defendants acting in the proceeding was raised before Goldberg J who raised doubt whether the Federal Court had jurisdiction to restrain the defendants from so acting.

The plaintiff instituted in this court the motion for restraining orders and at an early stage the defendants raised the issue of jurisdiction in this court. The parties filed submissions in relation to the issue but the issue was left for the trial of the principal relief.

Mr Archibald QC who appeared with Mr McGowan for the defendants did not abandon the jurisdiction argument but in fairness to him the argument was faintly pressed.

Mr Archibald QC referred to the written submissions filed with the court and in substance argued that it was inappropriate for this court to interfere with the jurisdiction of the Federal Court. The written submissions assert that this court has no jurisdiction to entertain the present proceeding.

This court is a superior court of record in this State with unlimited jurisdiction. Its jurisdiction is only confined by its territorial limits and any legislative intervention. Indeed it may have further jurisdiction conferred upon it by statute. (See s.85(4) of the Constitute Act 1975).

It has jurisdiction to hear and determine all common law and equitable causes of action.

Section 85(1) of the Act provides –

"Subject to this Act the court shall have jurisdiction in or in relation to Victoria its dependencies and areas adjacent thereto in all cases whatsoever and shall be the superior court of Victoria with unlimited jurisdiction."

Not only does it have unlimited jurisdiction but it has inherent jurisdiction. In Marriner v Smorgon (1989) VR 485, Murphy J at 490-1 said –

"The Supreme Court of Victoria undoubtedly does have powers flowing from its inherent jurisdiction as the superior court of the State of Victoria with unlimited jurisdiction. …
The jurisdiction of the court which is comprised within the terms "inherent" is that which enables it to fulfil itself properly and effectively as a court of law."

A consideration of the Court's establishment and the wide ambit of the words of s.85(1) of the Act demonstrates the very wide jurisdiction that this court has.

The colony of Victoria was established by an Imperial Act entitled "An Act for the Better Government of Her Majesty's Australian Colonies" which received the royal assent on 5 August 1850.

The Act provided for the establishment of the Supreme Court of the Colony of Victoria which was to be established by letters-patent.

The arrangements contemplated for the establishment by letters-patent of the Supreme Court were not carried out and within a short time of the establishment of the new colony the Supreme Court was established by Victorian statute 15 Vic No. 10.

The Act was assented to on 6 January 1852 and provided that the court was to be a court of record and to have within Victoria the common law jurisdiction of the three superior courts of common law at Westminster, the criminal jurisdiction of the court of Queen's Bench and the central criminal court in London and the equitable, common law and domiciliary jurisdiction of the Lord High Chancellor of England.

See ss.2, 9, 10, 11 and 14 of the 1852 Act.

The Constitution Act 1975 now provides for the court's jurisdiction and does not expressly refer to the jurisdiction of the courts of Great Britain but the history of its establishment and the very wide words used in s.85(1) establish the extreme width of the jurisdiction of this court.

The written submissions of the defendants assert that the court has no jurisdiction.

The court does have a complete and wide jurisdiction in respect to common law and equitable matters. Indeed if there is any conflict between the common law and rules of equity, the rules of equity are to prevail. See s.29 of the Supreme Court Act 1986.

It has been the law for centuries that equity has had an original and independent jurisdiction to grant an injunction to restrain a breach of confidence.

Writing in 1878, Mr Kerr in his famous book on the Law and Practice of Injunctions, 2^nd ed. stated this at p.436 –

"The High Court of justice will, in the exercise of its equitable jurisdiction to correct abuse of confidence, restrain by injunction the disclosure of confidential communications papers and secrets. In all cases where a confidential relationship can be shown to exist, the court fastens an obligation on the conscience of the party who has derived any confidential information through that relationship, and will enforce it against him in the same manner as it enforces against a party, to whom a benefit is given, the obligation of performing a promise on the faith of which the benefit has been conferred. Upon this principle, persons in whose possession, or to whose knowledge, papers documents copies of books and etc have come in the course of their employment, whether as solicitors agents accountants merchants clerks assistants etc will be restrained from making them public or communicating their contents to a stranger."
(Emphasis added.)

The learned author went on to discuss the privilege between solicitor and client. He emphasised that the jurisdiction to restrain a solicitor not only rests upon the confidence itself but upon the necessity of preserving it. He went on to state –

"It is for the interests of justice that the most full, free, and complete communication should take place between a client and his solicitor, for if that did not take place, it would be impossible to conduct a suit or to obtain justice, or for a man to defend himself and to prevent an injustice. The privilege is not confined to litigation actually commenced or in contemplation, but extends to all communications which pass between them in the cause, and for the purposes of the business. A solicitor may not, after determination of a suit disclose any confidential communications made during its progress."

A more recent statement as to the rationale for the cause of action and relief was stated by Deane J in Moorgate Tobacco Co Ltd v Phillip Morris Ltd (No. 2) (1983) 156 CLR 414 at 437-38 when his Honour said –

"It is unnecessary, for the purposes of the present appeal, to attempt to define the precise scope of the equitable jurisdiction to grant relief against an actual or threatened abuse of confidential information not involving any tort or any breach of some express or implied contractual provision, some wider fiduciary duty or some copyright or trademark right. A general equitable jurisdiction to grant such relief has long been asserted and should, in my view, now be accepted: see the Commonwealth v John Fairfax and Sons Ltd. Like most heads of exclusive equitable jurisdiction its rational basis does not lie in proprietary right. It lies in the notion of an obligation of conscience arising from the circumstances in or through which the information was communicated or obtained. Relief under the jurisdiction is not available, however, unless it appears that the information in question has 'the necessary quality of confidence about it' (per Lord Greene MR Saltman) and that it is significant, not necessarily in the sense of commercially valuable (see Argyll v Argyll) but in the sense that the preservation of its confidentiality or secrecy is of substantial concern to the plaintiff."

(Emphasis added.)

This court clearly has jurisdiction to restrain a person from disclosing confidential information in appropriate circumstances. The jurisdiction does not depend upon the fact that the person sought to be restrained is a solicitor and an officer of the court or that he be an agent who is not an officer of the court.

The jurisdiction is based upon the equitable obligation to keep a confidence.

Goldberg J in the present proceeding in the Federal Court did raise a doubt about the Federal Court having jurisdiction to restrain the defendants from acting in the proceeding. It is submitted in the written submissions that he is wrong.

It is not for me to determine whether or not the Federal Court does have jurisdiction. It is a court created by statute and accordingly its powers have to be found within the four corners of its statute or any other statutory instrument which gives it jurisdiction.

In my opinion, this court does have jurisdiction. It is not obliged to exercise that jurisdiction – see s.87 of the Constitution Act 1975 – where there is jurisdiction given to any other court.

This court as an act of comity and to ensure that courts do not interfere with each other's jurisdiction may decline to exercise its jurisdiction in a case such as the present if the other court was seized with the matter and proposed to proceed with it. That is not the case here.

Any order that this court may make will not interfere with the due and proper conduct of the Federal Court proceeding. A simple and inexpensive procedure is available to enable a litigant to change his or her solicitor in the proceeding.

Goldberg J has cast doubt upon whether the Federal Court has the jurisdiction and indicated that rather than spend time and incur expense to determine same it was appropriate that this court should determine the matter and in my opinion this court should proceed as clearly it does have jurisdiction and there is no question of it being an inappropriate forum.

See observations in CSR Ltd v Cigna Insurance Australia Limited (1997) 189 CLR 345 at 389 et seq.

Principles to apply

This court has a wide and ample jurisdiction to grant a permanent injunction. The jurisdiction is enshrined in statute and the court is empowered to grant an injunction "if it is just and convenient to do so" - see Supreme Court Act 1986 s.37(1). The remedy in discretionary. The courts have however laid down princples to guide them in the normal exercise of the jurisdiction.

In the unreported decision of Peter Nicholas Yunghanns & ors v Elfic Limited & ors delivered 3 July 1998, I discussed the principles which guide the court in the exercise of the jurisdiction in respect of a solicitor acting against a former client.

It is convenient to briefly summarise the principles.

The application is for a permanent injunction and the court's jurisdiction to grant a permanent injunction is dictated by the twin statutory considerations.

The cases in this area which go back as far as Cholmondley v Lord Clinton (1815) 19 Ves 261; 34 ER 575 discuss a number of bases for the jurisdiction to restrain solicitors from acting in litigation against a former client.

First, that the relationship between a solicitor and client is one of confidence and this relationship of confidence obliges a solicitor not to reveal any information obtained during the course of that relationship without the express or implied approval and consent of the client. In addition, some of the information may be protected from disclosure because of legal professional privilege.

Secondly, the relationship between solicitor and client is a fiduciary one and this imposes obligations of trust, integrity and confidence.

The third basis for the jurisdiction is what could be described as the "administration of justice factor". As I said in the Yunghanns case – "It is vital to the proper administration of justice that clients are confident in the expectation that their confidence and trust will be maintained. To permit a legal practitioner to put that obligation at risk by permitting him to act against his former client requires the court to approach the task with caution. To permit a legal practitioner to change sides is an act which cuts across what the average person would consider was right and proper and has the potential to bring the legal profession into disrepute".

This basis for the jurisdiction is fortified by the ethical rules which require a legal practitioner to avoid a conflict of interest and the clear obligation on the solicitor to put at his client's disposal his skill and knowledge which creates a problem if part of his knowledge was gained from a former client against whom he is now acting. See Spector v Ageda (1973) Ch 30 at 48. In addition, the court has a general jurisdiction to control and punish solicitors as officers of the court if they behave in a manner which is not in accordance with the high standards expected of a member of the legal profession.

The point was made by Mr Kerr in the passage to which I referred to above, which is that the rule which protects from disclosure of confidential information between solicitor and client rests not only upon the confidential relationship but also in the interests of justice that the communications between client and solicitor must be full, free and complete.

In my opinion, the main and important basis for the jurisdiction is the necessity of maintaining a confidence.

There is no doubt in a case such as the present that there was a relationship of confidence existing between the plaintiff and the second defendant POF Attorneys and this obligation of confidence continues even though POF Attorneys have ceased to act for World Medical. But the real question is to whether POF Attorneys have obtained any information which could be misused if the first defendant, POF Lawyers, was permitted to continue to act for Cook Inc in the Federal Court proceedings and POF Attorneys were permitted to assist and provide services to POF Lawyers in support of the litigation?

There has been some controversy in respect to the jurisdiction concerning the test to apply with respect to the risk of the former solicitor or indeed the former professional body breaching obligations and misusing the information.

In Yunghanns v Elfic Ltd I adopted and applied the test of Hayne J stated in Farrow Mortgage v Mendall Properties (1995) 1 VR 1 at p.5 where his Honour said –

"Although it is necessary to be acutely conscious of the fact that the court is asked to interfere with the right of a litigant to be represented by the solicitor of the litigant's choice, it is not necessary to conclude that harm is inevitable (or well nigh inevitable) before acting to restrain a possible breach of the duty that a solicitor owes to clients and former clients to keep confidential information given to the solicitor in confidence and not use that information against the interests of the client who gave it to the solicitor. For present purposes I do not need to consider whether anything turns on the difference in expression of the test as given by Parker LJ and Ipp J. It is enough to say that I consider that an injunction should go if there is a real and sensible possibility of a misuse of confidential information."
(Emphasis added.)

Since delivering my judgment the House of Lords have considered the question in relation to both lawyers and accountants.

Prior to the House of Lords consideration there was some controversy about what was the appropriate test in England.

The House of Lords has laid to rest that controversy at least for English courts.

In Prince Jefri Bolkiah v KPMG (a firm) (1999) 1 All ER 517, the defendant firm of accountants were employed as auditors of an investment agency which managed the general reserve funds of the government of Brunei. The plaintiff had been chairman of that agency until his removal in 1998. For a period of 18 months between 1996 and 1998 the plaintiff acting in his personal capacity retained the defendants to act for him or one of his companies in private litigation in which he was then engaged. In the course of acting for the plaintiff in that litigation the defendant firm provided extensive litigation support services of the sort usually undertaken by solicitors. In so doing the defendants were entrusted with or acquired extensive confidential information about the plaintiff's assets and financial affairs. The defendant employed 168 personnel on his litigation which was settled in March 1998.

The plaintiff was dismissed from his position as chairman of the agency and in June 1998 the Brunei government commenced an investigation into the affairs of the agency. The government wished to retain the defendant firm to assist the investigation.

The defendants took the view that they could accept the instructions because they had ceased to act for the plaintiff but were aware of the possible conflict of interest and the firm erected an information barrier (a so-called Chinese wall) around the department carrying out the investigation on behalf of the Brunei government.

The plaintiff sought and obtained an injunction against the defendant firm which was set aside by the Court of Appeal. He appealed to the House of Lords.

The leading speech was given by Lord Millett.

It is clear from the reasons given that the members of the House of Lords did not draw any distinction between solicitors and accountants with respect to the exercise of the jurisdiction in the circumstances of that case. It was conceded that the firm of accountants should be treated "for present purposes in the same way as a solicitor" – ibid at p.526(d).

The controversy which was caused by the Court of Appeal decision of Rakusen v Ellis Munday & Clarke (1912) 1 Ch 831 was put to rest by it being overruled. Criticisms had been levelled at that decision because the tests laid down by the Court of Appeal were too demanding and placed a heavy burden on the client or former client to obtain an injunction.

Lord Millett at p.526 made it clear that the basis for the court's intervention is not founded on the avoidance of any perception of possible impropriety "but on the protection of confidential information."

He stated the jurisdiction by adopting the submission put by counsel for Prince Jefri. It was expressed in this way at p.526 –

" … accepting that there was no ground on which the court could properly intervene unless two conditions were satisfied: (i) that the solicitor was in possession of information which was confidential to the former client and (ii) that such information was or might be relevant to the matter on which he was instructed by the second client. This makes the possession of relevant confidential information the test of what is comprehended within the expression 'the same or a connected matter'."

His Lordship continued –

"My Lords, I would affirm this as the basis of the court's jurisdiction to intervene on behalf of a former client."

As his Lordship pointed out, that is a different situation to where the court's intervention is sought by an existing client. In that situation a fiduciary cannot act at the same time both for and against the client and his firm is in no better position and accordingly the court intervenes on that basis.

But that is not the position in the present matter.

Lord Millett at p.527 stated the law for England as follows –

"Where the court's intervention is sought by a former client, however, the position is entirely different. The court's jurisdiction cannot be based on any conflict of interest, real or perceived, for there is none. The fiduciary relationship which subsists between solicitor and client comes to an end with the termination of the retainer. Thereafter the solicitor has no obligation to defend and advance the interests of his former client. The only duty to the former client which provides the termination of the client relationship is a continuing duty to preserve the confidentiality of information imparted during its subsistence.
Accordingly it is incumbent on a plaintiff who seeks to restrain his former solicitor from acting in a matter for another client to establish (i) that the solicitor is in possession of information which is confidential to him and to the disclosure of which he has not consented and (ii) that the information is or may be relevant to the new matter in which the interest of the other client is or may be adverse to his own. Although the burden of proof is on the plaintiff it is not a heavy one. The former may readily be inferred; the latter will often be obvious. I do not think that it is necessary to introduce any presumptions rebuttable or otherwise, in relation to these two matters. But given the basis on which the jurisdiction is exercised, there is no cause to impute or attribute the knowledge of one partner to his fellow partners. Whether a particular individual is in possession of confidential information is a question of fact which must be proved or inferred from the circumstances of the case."
(Emphases added.)

His Lordship went on to consider the extent of a solicitor's duty and observed that although the former client cannot be protected completely "he is entitled to prevent his former solicitor from exposing him to any avoidable risk; and this includes the increased risk of the use of the information to his prejudice arising from the acceptance of instructions to act for another client with an adverse interest in a matter to which the information is or may be relevant." (Emphases added.)

As his Lordship pointed out it does then become a question of the degree of risk. He stated that if there was no risk of disclosure or misuse of confidential information then there was no basis for granting relief.

After referring to the criticisms made of Rackusen v Ellis Munday and Clarke to the effect that it placed an unfair burden on the former client he went on to say this –

"It is in any case difficult to discern any justification in principle for a rule which exposes a former client without his consent to any avoidable risk, however slight, that information which he has imparted in confidence in the course of a fiduciary relationship may come into the possession of a third party and be used to his disadvantage. Where in addition the information in question is not only confidential but also privileged, the case for a strict approach is unanswerable."

It was in that context that his Lordship made reference to "proper administration of justice" and emphasised how important it was that a person in possession of confidential and privileged information "should not act in any way that might appear to put that information at risk of coming into the hands of someone with an adverse interest." See at p.528.

His Lordship on the same page stated the test concerning risk of disclosure as follows –

"I prefer simply to say that the court should not intervene unless it is satisfied that there is no real risk of disclosure. It goes without saying that the risk must be a real one, and not merely fanciful or theoretical. But it need not be substantial."

This statement concerning the risk goes further in my opinion than what Hayne J said in Farrow Mortgage. Lord Millett is placing an onus upon the confidante in that if the court is satisfied that confidential information has been imparted which could be adverse to the interests of the former client then it should grant the injunction unless it is satisfied there is no real risk of disclosure.

Hayne J in my opinion puts the onus upon the plaintiff seeking the injunction to show that there is a real and sensible possibility of the misuse of confidential information.

Lord Millett concluded, "I am not satisfied on the evidence that KPMG have discharged the heavy burden of showing that there is no risk that information in their possession which is confidential to Prince Jefri and which they obtained in the course of a former client relationship may unwittingly or inadvertently come to the notice of those working on Project Gemma." (Emphasis added.)

The House of Lords held that Prince Jefri should have his injunction.

The decision of Bolkiah v KPMG was considered by the Full Court of South Australia in the decision of Pradham v East Side Day Surgery Pty Ltd, unreported, delivered on 18 June 1999 and the court held that the principles stated by Lord Millett should be applied in South Australia. In Newman as Trustee for the Estates of Littlejohn v Phillips Fox (a firm), Steytler J in the Supreme Court of Western Australia, (unreported, delivered on 15 September 1999) helpfully discussed all the authorities and also concluded that the tests laid down by the House of Lords should be applied in Western Australia.

In my opinion, the principles laid down by Lord Millett in the Bolkiah decision should also be followed in this State.

It means that the court is concerned with a step by step consideration of the issues as follows –

(i) Is the former supplier of services whether it be a solicitor, accountant or a patent attorney or some other person providing services, in possession of information provided by the former client which is confidential and which the former client has not consented to disclosure?;

(ii) Is or may the information be relevant to the new matter in which the interest of the other client is or may be adverse to his own;

(iii) If the answers to the first two issues are yes, then is there a risk which is real and not merely fanciful nor theoretical that there will be disclosure?

(iv) If there is that risk then the evidential burden which is heavy, rests upon the provider of the services to establish that there is no risk of disclosure and this may be established in exceptional cases by the provision of a 'Chinese wall' but this is rarely of sufficient protection.

(v) Should a permanent injunction be granted?

In some circumstances it is nearly impossible to put in place a regime which would ensure that there was no risk of confidential information being inadvertently disclosed. I adverted to the difficulties with the Chinese wall concept in the Yunghanns case where in the circumstances of that case I likened the proposed steps to a Dutch dyke with the ever present risk of seepage of information.

What is confidential information in a given set of circumstances will depend upon those circumstances. I emphasised in the Yunghanns case what I described as the "getting to know you" factors which in my opinion are of considerable importance to former clients who feel that their trust and loyalty has been betrayed when a solicitor acts against them in a later piece of litigation.

At p.10 of the unreported judgment I stated the following –

"But the degree of particularity of the confidential information must depend upon all the circumstances. Often it cannot be identified for fear of disclosure. In considering this factor it must be borne in mind that a solicitor makes notes, forms views and opinions of clients and observes things that the client may have forgotten or overlooked. In some cases the circumstances of the retainer and the nature of the legal work will be sufficient to establish the nature of the confidential information. In this regard the relationship between solicitor and client may be such that the solicitor learns a great deal about his client, his strengths, his weaknesses, his honesty or a lack thereof, his reaction to crisis, pressure or tension, his attitude to litigation and settling cases and his tactics. These are factors which I would call the 'getting to know you' factors. The overall opinion formed by a solicitor of his client as a result of his contact may in circumstances amount to confidential information that should not be disclosed and more importantly used against the client."

There are no such factors present in this proceeding.

Mr Garrett QC who appeared with Mr Maryniak of counsel for the plaintiff placed much emphasis on the fiduciary relationship between solicitor and client and also patent attorney and client. Their argument proceeded on the basis that there was some separate and independent basis for the jurisdiction resting upon the mere relationship. Of course if there is a subsisting fiduciary relationship then it is not open for a solicitor or another provider of services to act for both interests. But where the retainer has terminated then the position is different.

Further, Mr Garrett QC submitted that "the administration of justice factor", that is, the importance to the administration of justice of an appearance of loyalty and integrity and the fact that the legal profession is brought into disrepute when former lawyers act against former clients is a separate basis for the jurisdiction.

He drew attention to what the Court of Appeal of this State said in the matter of McVeigh & Anor v Linen House Pty Ltd & ors, an unreported decision delivered 3 September 1999.

In the course of an ex tempore judgment Batt JA said this –

"The authorities establish that a court will restrain a solicitor from acting for a litigant not only in order to prevent disclosure of confidence of a client or a former client, but also to ensure that the solicitor's duty of loyalty to the former client is respected, notwithstanding termination of the retainer, and to uphold as a matter of public policy the special relationship of solicitor and client."

His Honour went on to refer to what Burchett J said in Wan v McDonald (1992) 33 FCR 491 at 512 and what Phillips J said in Holdsworth v M.R. Anderson & Associates, unreported, delivered 26 August 1994.

However, in considering what his Honour said it must be borne in mind what were the circumstances of that case. In that case a solicitor was seeking to act against a former client in the continuation of the same matter.

As Batt JA said –

"In my opinion, it could only be in a rare and very special case of this latter kind that a solicitor could properly be permitted to act against his former client whether or not any real question of the use of confidential information could arise."

His Honour was referring to a situation where one solicitor, having acted for both parties, seeks to act against one of his former clients and in the interest of the preferred client "in litigation arising out of the very matter in which he himself acted for both".

This was also the position in the Wan and Hollsworth cases.

In the present case there is no suggestion that the defendants are seeking to act in a litigation against the interests of the plaintiff after acting for the plaintiff in the litigation. The defendants have not acted for the plaintiff in the litigation in the Federal Court.

Facts

There is no real dispute between the parties as to the facts. The contest between them concerns the inferences that should be drawn from them.

The plaintiff in support of its application relied upon a number of affidavits from Ms Schmitt, the plaintiff's in-house intellectual property attorney both patent and legal, a solicitor Mr Rees from the plaintiff's solicitors Baker & McKenzie, and the affidavit of Mr Paul Bawel who at all relevant times was the independent patent agent acting for the plaintiff in the United States of America.

Each deponent was cross-examined.

The plaintiff also relied upon an affidavit of Mr Rathbone who is the divisional manager in Australia for Medtronic.

The defendants filed a substantial number of affidavits. The main two witnesses were Mr Malcolm Royal who at all relevant times was a partner of POF Attorneys and the managing partner, and Mr Gregory Chambers, a partner in both POF Lawyers and POF Attorneys. Both men were cross‑examined at some length. In addition a number of deponents of affidavits filed on behalf of the defendant were also cross-examined but not to any great extent.

At the outset it is important to state four facts which are not in dispute.

First, that no distinction is drawn between POF Lawyers and POF Attorneys and that for the purposes of the present application they are to be treated as one and the same entity. This fact not only emerged in the course of evidence but no argument was addressed to the court by defendants' counsel drawing a distinction between both entities. Indeed, the facts clearly demonstrate that Mr Greg Chambers at all relevant times was acting for Cook Inc as a patent attorney on behalf of POF Attorneys and as a lawyer for POF Lawyers. Other employees of both firms acted for Cook Inc.

Secondly, the evidence demonstrates and no argument was put to the contrary, that the plaintiff World Medical engaged POF Attorneys.

Thirdly, all contact between World Medical and POF Attorneys was by correspondence in the form of letters or facsimiles. There were no face to face meetings or telephone calls involving anybody from World Medical and anybody from POF Attorneys at any time, nor were there any telephone conversations.

There was no contact between POF Attorneys and World Medical which could in any way be described as "getting to know you". POF Attorneys did not acquire any information as to what the attitude of World Medical was to any issue or how it would act and behave in any litigation. In the course of performing services the question of amending the specification was raised by Mr Bawel but never followed up by Mr Bawel who was discussing matters with representatives of World Medical in the United States of America.

The contact between World Medical and POF Attorneys was impersonal.

The fourth fact was that the information passing between the World Medical and POF attorneys was confidential.

The first relevant contact between any of the parties occurred in June 1997 when representatives of Cook Inc travelled to Melbourne and had a conference with Mr Chambers in the latter's office. The discussions centred around the question of Cook Inc retaining patent attorneys and lawyers to advise it with respect to a possible infringement of its patent by World Medical and to act for it.

It is necessary to go back in time. In October 1984, Cook Inc obtained a patent in respect to its stent-graft device. It had a priority date of 1984.

In October 1995, World Medical made a patent application in America with the earliest priority date being October 1995.

On 7 January 1997 World Medical's US patent 5591195 file wrapper was open to public inspection in the United States of America.

On 16 January 1997 World Medical's Australian patent application number designation was advertised in Australia and on 9 May 1997 World Medical's patent application PCT/US96/17233 had an international publication date.

On 22 May 1997 World Medical's patent application Australian 74794/96 was published.

It was in that background that the Cook Inc discussions with Mr Chambers took place in June 1997.

From June onwards Mr Chambers reviewed various documents and the like and in August 1997 Cook Inc wrote to Mr Chambers requesting him to advise on a number of matters including the potential infringement of its Australian patent by the sale of stent grafts by World Medical in Australia.

A conflict search by Mr Chambers disclosed no difficulties in POF Attorneys acting.

There is some confusion in the evidence as to whether or not POF Lawyers were also acting for Cook Inc at this time but taking into account the other evidence it is unnecessary to decide that.

In January 1998, POF Lawyers briefed Mr Lyons QC on behalf of Cook Inc in relation to possible patent proceedings. However, POF Lawyers did not at this stage open any file in respect to the matter. Advice was obtained from Mr Lyons QC.

On 24 February 1998, Mr Paul Bawel, patent attorney located in Pennsylvania US of A wrote to POF Attorneys and the first two paragraphs of his facsimile stated –

"I am seeking an agent to represent my client before the Australian Patent Office for a PTC application. The PTC application must enter the national stage by April 30 1998.
My clients are World Medical Manufacturing Corporation, 14794N.W. 4^th Street, Bldgs. 210 and 211, Sunrise, Florida, 33325, U.S.A. The device for which a patent is sought is a vascular stent graft placed via a catheter."

He then asked were "POF Attorneys able to represent World Medical"? His facsimile was handed to Mr Royal, the managing partner of POF Attorneys and he carried out a standard conflict check which did not reveal any conflict.

On that day Mr Royal sent a facsimile to Mr Bawel and after informing him that they would be pleased to act for him in Australia wrote –

"We can enter the national phase and prosecute the application without any signed forms or other documents. We simply need you to identify the international application by its PCT number. We can obtain all of the necessary information from the Australian Patent Office."
(Emphasis added.)

It is significant that all the necessary information concerning the application could be obtained from the Australian Patent Office.

Mr Royal went on to say that the official fees and charges were A$1,180 and the charge for claiming priority was A$70.

Mr Royal forwarded by mail details of the firm and forms that could assist Mr Bawel in instructing POF Attorneys.

In response to that facsimile Mr Bawel sent a facsimile on 1 March 1998 and stated that once the information was received by mail he would be in contact. He then went on to state –

"If the information is not included in the mailed package, would you please inform me of the procedure and cost to amend the claims? I would like to submit a different set of claims for consideration."

At no stage thereafter did Mr Bawel ever submit a different set of claims for consideration or to amend the claims. He never revealed what he or his client had in mind.

The complete file of POF Attorneys was placed in evidence and is Exhibit MJR4 to the affidavit of Mr Royal sworn 3 December 1999.

A perusal of the file shows correspondence which raised a number of issues concerning the prosecution of World Medical's application in Australia.

POF Attorneys informed Mr Bawel concerning the procedure for amending patent claims, an issue arose as to who was the applicant and the proposed assignment to World Medical of rights by two inventors and the obtaining by POF Attorneys of information from the Australian Patent Office computer. On 24 March 1998 POF Attorneys lodged the patent application and told Mr Bawel by facsimile.

At this point Mr Royal handed over the file to a Mr Downie.

Further steps were taken with the allotment of the official application number by the Patent Office, a reminder facsimile concerning the assignment of patent rights from the inventors to World Medical, a letter from Mr Bawel to Mr Royal concerning details of the inventors and ultimately a letter from the Patent Office on 10 June 1998 to POF Attorneys.

This letter required Mr H.J. Leonhardt who was one of the inventors to make a request under s.44(2) of the Patents Act 1990 to make an examination of the above patent request and complete specifications relating to that application. It was noted that the application, i.e. World Medical's application, would lapse unless the direction was complied with within six months. This was a procedural step that must be followed in the course of prosecuting the application.

On 25 June 1998 Mr Mark Williams on behalf of POF Attorneys wrote to Mr Bawel informing him of the Commissioner's direction and requesting his advice whether he required POF Attorneys to request examination and "whether we should request regular or modified examination." He informed Mr Bawel of the cost of the examinations and requested instructions preferably by 12 October 1998.

In the meantime POF Attorneys and probably POF Lawyers were continuing to perform services for Cook Inc in relation to its possible claim against World Medical.

On 8 August 1998 Mr Bawel asked POF Attorneys to request the examination at their earliest convenience and on 10 August 1998 POF Attorneys filed a request for examination with the Australian Patent Office.

On the same day POF Attorneys informed Mr Bawel of that fact and informed him that when the examiner's report was received they would forward it to him with their comments.

World Medical's file was then handed over to Mr Philip Gehrig an attorney with POF Attorneys.

He examined the file in accordance with an office practice of POF Attorneys.

The practice had been put in place because over a period of some years prior to 1998 there had been an increase in the number of patents applications held invalid or ineffective on grounds relating to the form of the specification. In order to avoid problems POF Attorneys, when asked by the client to request examination by the Patent Office, reviewed the file "to determine whether amendments would be appropriate to bring the specification into accord with usual Australian practice."

The request to do same did not come from a client but was a practice put in place by POF Attorneys and it was only if instructions were given to make amendments that they would charge for their services.

Mr Gehrig considered the file and sent a facsimile to Mr Bawel dated 21 August 1998 in which he informed him that he had reviewed the file and he made a number of recommendations concerning amendments to the specification.

At this stage the file comprised correspondence with World Medical and documents which had been obtained from the Patent Office. Mr Gehrig wrote –

"Based on our review we recommend the following amendments:

(i) Inclusion in the description of statements of invention consistent with the independent claim;

(ii) Re-expression of the stated objects of the invention as advantageous outcomes achievable by various embodiments of the invention;

(iii) Including of a statement to make it clear that the word 'compromise' as it is used throughout the description and claims is not intended to exclude additional features; and

(iv) Insertion of an omnibus claim."

Mr Gehrig opined the view that the amendments would improve the specification and could be made without incurring any further fees. He warned that the option may not be available after examination and wrote, "The application may proceed directly to acceptance." He pointed out the difficulty of amendment after acceptance and the cost factor.

He also suggested to Mr Bawel to consider any amendment to "the claims in the light of prior art which may have come to your attention since the drafting of the current claims."

I am satisfied on the evidence at this stage that what Mr Gehrig was considering was something that was available through the Australian Patent Office and which would become generally available to the public at some stage thereafter. He was not considering documents which had come into the possession of POF Attorneys from Mr Bawel or World Medical itself.

Mr Gehrig also raised the question of the inventor and the necessity to transfer the application to World Medical by assignments from the two inventors. This followed on from a query raised by the Patent Office. Mr Tadgell of POF Attorneys was requested to handle the issue concerning the name of the applicant.

In September 1998 or thereabouts POF Lawyers opened their file in relation to the Cook Inc matter.

Because of the problems concerning the applicant for the patent, Mr Leonhardt one of the inventors through POF Attorneys on 3 September 1998 requested the making of an examination of the application.

By letter dated 27 October 1998 the Patent Office provided a commentary on the examination and it is noted that the examiner based his report on the pamphlet which was a copy of the application in the United States of America and was freely available.

The examiner opined the view that there were lawful grounds of objection to the application and these were listed. The two main objections were that first there was no notice of entitlement on the file and secondly, that the specification did not comply with s.40(4) of the Patents Act because it did not relate to one invention only or to a group of inventions linked as to form a single general inventive concept. The examiner said that he found there were different inventions which he specified.

On 5 November Mr Gehrig wrote to Mr Bawel informing him that the application had been examined and the first official report was attached. It was pointed out to Mr Bawel that if the application was not accepted with 21 months of the first report date it would elapse.

The first item of objection of the examiner concerned the name of the applicant. Request was again made for assignment documents evidencing the transfer from the two inventors to World Medical.

Mr Gehrig explained the Australian test for "unity" which was concerned with the second objection.

He finished his letter by saying –

"We look forward to receiving your instructions for responding to this report in due course."

In December 1998, or early January 1999, a radiologist handed a Talent stent graft to Mr Chambers to examine. This was for the purposes of the Cook Inc claim.

On 10 February 1999, POF Lawyers instituted on behalf of Cook Inc the infringement of patent proceeding in the Federal Court against a number of respondents, including World Medical.

During the period from 5 November 1998 to the institution of the proceeding in February 1999 no response was provided by Mr Bawel or World Medical in answer to the queries raised by the Patent Office examination and Mr Gehrig's letter of 5 November.

On 8 April 1999 World Medical was served with the Federal Court papers and on 16 April it instructed Messrs Baker & McKenzie Solicitors to act for it in relation to the patent proceeding.

It was on 19 April that Mr Gough from Baker & McKenzie raised the issue of conflict with Mr Chambers over the telephone and on the following day Mr Royal wrote to Mr Bawel on the letterhead of POF Attorneys a letter in which he said –

"It has come to my attention that we act for Cook Inc in an action against World Medical Manufacturing Corporation related to Stents of the type described in your Australian patent application 74794/96.
While this does not in itself create a position of conflict, there is a concern that by continuing to act in the application, a situation of conflict could arise."

Mr Royal then suggested that the file should be transferred to another patent attorney.

In the meantime, Medtronic AVE Inc had taken over World Medical and Susan Schmitt, an employee of Medtronic, was directed to handle the matter. She stated that she anticipated responding to POF Attorneys letter of 5 November 1998. On 29 April 1999 Mr Gehrig responded to a letter from Ms Schmitt taking up the question of the assignment but interestingly did not make any mention of any conflict, nor any suggestion of transferring the file. I think it is a fair inference that both Miss Schmitt and Mr Gehrig were unaware of the issue of conflict at that stage.

On 21 May 1999 Mr Royal raised with Miss Schmitt the question of transferring the file and enclosed a copy of the facsimile directed to Mr Bawel on this topic. He ended up by saying –

"Do you have alternative attorneys in Australia to whom this file could be transferred or would you like a recommendation from us?"

Surprisingly, on 1 June 1999 Miss Schmitt sent to Mr Williams of POF Attorneys a copy of the assignment to World Medical by one of the investors and requested that a copy be sent to the Patent Office.

On 10 June 1999 Mr Royal again wrote to Miss Schmitt and again requested what was to be done concerning the conflict.

I accept the evidence of Miss Schmitt that in April/May she was under a lot of pressure and did not appreciate the necessity at that time of transferring the file.

On 21 June 1999 Mr Cowin of POF Attorneys in the absence of Mr Royal by facsimile again requested that the file be transferred to avoid any conflict and stated in the absence of any instructions would return the file to Miss Schmitt.

This prompted swift action and on the same day by facsimile Miss Schmitt requested Mr Royal to transfer the file to another patent attorney located in Sydney.

She ended her facsimile by saying –

"I confirm that we are most concerned about the conflict of interest which we believe your firm has created in preparing for and commencing proceedings against WMMC on behalf of Cook Incorporated at the same time that it acted for WMMC in relation to this patent application.

Our legal representatives in Australia will contact you separately and in more detail about this conflict."

The file was transferred to Mr Sharp of Griffith Hack Patent Attorney in Sydney.

In July 1999 the POF firms did an extraordinary and surprising thing. They sent their whole POF Attorneys file to a barrister requesting him to advise whether there was any potential for conflict of interest. Evidently, counsel said there was not. It was an extraordinary thing in that the POF firms had no right to disclose any part of their file to anybody without the permission or consent of their client, World Medical.

The fact that independent counsel opined the view that there was no conflict and accordingly POF Lawyers could continue to act are matters which are not relevant to my consideration of the issues in this application.

It was on 3 September 1999 that the plaintiff, World Medical, instituted the motion in this court.

The totality of information which POF Attorneys had is contained in the file which is Exhibit MJR4.

There can be no doubt that the information which was supplied was confidential but the information within the file concerning World Medical's stent graft device was already in the public domain either in the USA or Australia or would come into the public domain at some point thereafter. But whilst the information did not come into the public domain there is no doubt that POF Attorneys were obliged to keep the information confidential.

Although members of each firm acted in relation to the Cook Inc proceeding I am satisfied that no member of the POF Lawyers firm had anything to do with World Medical's application in Australia. Further, I am satisfied that no person employed by POF Attorneys who looked at or performed services in respect of, the World Medical application provided any services, or advice in respect of the Cook Inc matter or was aware of the Cook Inc proceeding instituted by POF Lawyers. Likewise I am satisfied that no person employed by POF Attorneys who assisted on the Cook Inc matter knew of, or had any contact with the World Medical file.

Many of the deponents of affidavits filed on behalf of the defendants were cross‑examined but I am satisfied that there was no disclosure of any iinformation concerning World Medical's application by POF Attorneys to any person in POF Lawyers or POF Attorneys who was handling the Cook Inc proceeding.

It is important to consider the issues in the Federal Court proceeding because of the importance of the question of the relationship of the confidential information to the issues.

Infringement proceeding

The infringement of a patent occurs when a product is supplied by one person to another in circumstances where it is an infringement of the patent unless the supplier is the patentee or a licensee of the patent. See s.117(1) of the Patents Act 1990.

In order for Cook Inc to prove infringement it has to establish –

(i) that it is the patentee;

(ii) what constitutes the patent;

(iii) that World Medical has infringed the patent by supplying its product, the Talent Stent Graft, to another.

World Medical has not filed and served a defence in the Federal Court proceeding and accordingly its defences are not known. No evidence was adduced or submissions made as to any defences. One can assume that it will put Cook Inc to its proof but whether it seeks to establish any positive defences at this stage is not known.

An important issue in the proceeding is the construction of the specification which sets out the claims of the invention. It will be necessary for the court to construe the claims. They must be read in the light of what is contained in them and must be construed by reference to what a craftsman endowed with the common general knowledge of the art, would understand by them. This would involve the calling of expert evidence. The question is one of law and no doubt much time will be spent at trial on this question, to determine the limits of the monopoly which is claimed by Cook Inc.

The next issue concerns the question of whether World Medical by supplying its device has infringed the patent.

In order to fully consider and present their rival cases, it would be necessary for the patentee and the alleged infringer to analyse and fully comprehend the nature, character and essentials of each other's products. No doubt much expert evidence will be called in relation to these matters.

In summary, the main issues are the construction of the specification and the scope of the monopoly ascertained by reference to the claims made; secondly, whether the alleged infringing acts of World Medical are of such a nature that they are capable of amounting to a breach of the patent rights and thirdly, whether World Medical has any defence including excuse under some statutory provision.

It is most likely the main issue will focus on the nature and type of the devices supplied by Cook Inc and World Medical.

In my opinion it will not be an issue in the Federal Court proceeding to consider the possible patent right of World Medical's device over the Cook patent. Whether or not World Medical could have or has a valid patent is not relevant to the question of the infringement of the Cook patent.

This is significant when considering whether there was any confidential information known by POF Attorneys and gained in the course of the retainer of World Medical which could be used adversely to their interests in the litigation.

Confidential information?

The court requested Mr Garratt QC to identify what important confidential information was supplied to the POF firms which may be relevant to the Federal Court proceeding. In my opinion in most cases particulars of the confidential information must be given. In this case it was necessary.

In the decision of In re a firm of solicitors (1997) Ch. 1 at p.10, Lightman J said –

"On the issue whether the solicitor is possessed of relevant confidential information: (a) it is in general not sufficient for the client to make a general allegation that the solicitor is in possession of relevant confidential information if this is in issue; some particularity as to the confidential information is required: see Bricheno v Thorp, Jac. 300 and Johnson v Marriott (1833) 2 C. and M. 183. But the degree of particularity required must depend upon the facts of the particular case, and in many cases identification of the nature of the matter on which the solicitor was instructed, the length of the period of original retainer and the date of the proposed fresh retainer and the nature of the subject matter for practical purposes will be sufficient to establish the possession by the solicitor of relevant information."

In final address Mr Garratt QC identified the following, namely –

"(a)WMMC's disclosure of its intentions to substitute a new set of claims;
(b)the patent examiner's advice in the first report that the claims in the patent were defective in that they claimed more than one invention;
(c)POF Attorney's advice to World Medical suggesting amendments to the patent application as to the clear deficiencies of form that could affect the validity of the patent granted."

On the question of the relevance of these pieces of confidential information Mr Garratt QC submitted that the information could be used by Cook Inc to "erode any argument on behalf of the respondent s (in the Federal Court proceedings) that the Talent stent graft device embodies new technology and not existing technology."

I am satisfied that World Medical did provide confidential information to POF Attorneys and did not consent to its disclosure except insofar as it was necessary to process the application in Australia.

Save for the letter from Mr Gehrig which highlighted matters that should be attended to, to ensure the application accorded with Australian practice and to protect the patent rights in the event the patent was granted, all other information which passed between World Medical and POF Attorneys was either public or capable of being discovered or deduced by any interested observer of World Medical business affairs.

World Medical published in Australia prior to 21 March 1998 its Talent brochure which listed relevant patent numbers including but not limited to the two US patents equivalent to the Australian application. A search of the well-known Derwent database would reveal World Medical's Australian application number which was advertised in Australia in any event on 16 January 1997. The fact that World Medical intended to enter the Australian national phase was forecasted in its PCT pamphlet published in Australia on 22 May 1997 and national phase entry was due no later than 30 April 1998.

This publicly available information established the date of national phase entry, date of examination, deadline for Australian acceptance and the details of the complete specification and relation specifications. Errors concerning the identification of who was to be the applicant and who were the inventors would have been apparent to any observer by looking at and comparing the PCT pamphlet, the US patents which issued from it and also comparing it with other publicly available national phase entry documents.

It was immediately apparent to the Australian Patent Office. It would have also been equally apparent to an interested observer that amendments were likely first to conform to Australian law and second, because of the likely duality of claims in the PCT claims which in the United States had resulted in two separate patents issuing.

No hint was ever given to POF Attorneys of the kind of amendments World Medical had in mind. On no view could this fact be relevant to any issue in the Federal Court proceedings, let alone be used adversely to the interests of World Medical in the litigation.

The second piece of confidential information relied upon by World Medical, namely, the patent examiner's advice in the first report, will be disclosed in mid 2000 and hence become public knowledge. However, one can confidently say that any person prior to the public revelation experienced in patents in Australia on a cursory examination would conclude it was arguably defective in that it claimed more than one invention.

However, the information at this stage was confidential.

The third concerns the letters of advice written by Mr Geghrig but all he is saying is that the application should be amended to accord with Australian law in order to protect the interests of World Medical in its application in Australia. I accept the submission that there is nothing in his advice which would not be apparent to any competent patent attorney viewing the published PCT claims and nothing else. The advice concerns the requirements of adding the named inventors, assignment from the inventors to the corporate entity, formal amendments of international specifications to comply with the local Australian practice and duality of claiming.

It follows that although the information was given confidentially, much of it was in the public domain or about to become in the public domain, or was the type of information that any experienced patent attorney or patent lawyer could have ascertained for himself upon examination of the publicly listed documentation concerning the World Medical's Talent stent graft.

Relevance of information and possible adverse use in the litigation?

The disclosure of World Medical's intention to substitute a new set of claims or amend same in my opinion is not relevant in any way to any issue in the Federal Court proceedings and could not in any way be described as a piece of information which could be used adversely to the interests of World Medical in that proceeding.

The second piece of confidential information, namely, the patent examiner's advice in his report in my opinion is also not relevant to any issue in the Federal Court proceeding and could not adversely affect the interests of World Medical in that proceeding if it was disclosed.

First, because the question of the patentability of World Medical's specification over the Cook patent is not an issue in the proceeding. Secondly and more importantly, the fact that World Medical's application in Australia is defective at this stage could not in any way be relevant to any issue in the Federal Court proceeding.

But in any event the information will cease to be confidential by the time the application is heard in the Federal Court.

Finally, POF Attorneys' advice to World Medical suggesting amendments to their application again in my view would not be relevant in any way to any of the issues before the Federal Court. Further, the alleged deficiencies could be easily ascertained and determined by an experienced patent attorney.

It follows that in my opinion none of the confidential information which was supplied to POF Attorneys by World Medical would be of any consequence in the Federal Court proceeding, could not be used adversely to the interests of World Medical in that proceeding and further, is the type of information that ultimately is or will be in the public domain or by the hearing easily ascertainable by an experienced patent attorney.

Further, I am satisfied that none of the information has been made available to the POF Lawyers handling the Cook Inc litigation and although there may be a risk that some of the information may be ascertained it is in my opinion of such inconsequence that it would not be used adversely in the litigation.

Risk of disclosure

Questions 3 and 4 do not arise for determination in the light of my finding that there is no confidential matter of relevance to the Federal Court proceeding which could be used adversely to the interests of World Medical in that proceeding.

Nevertheless it is appropriate I should make some observations in relation to the issues. No suggestion was made of erecting Chinese walls to provide protection. So it must be accepted that there is a risk which is not fanciful or theoretical there could be disclosure.

However, in my view the information is of such little moment in relation to the issues in the Federal Court proceedings that one could not really see any employee of POF Attorneys wishing to disclose any of the information to POF Lawyers or indeed any employee of POF Lawyers associated with the litigation who would be really interested in the information. The latter will be concerned with the issues in the litigation and they do not concern progress of World Medical's application for a patent in Australia.

It follows that the plaintiff has not established a basis for an injunction restraining either of the defendants from being engaged in the Federal Court in accordance with the principles laid down by the courts in respect of solicitors acting against former clients in litigation.

Plaintiff's submissions

The plaintiff's counsel put a number of submissions.

A. Fiduciary

The primary submission put on behalf of World Medical was that at all relevant times POF Attorneys owed a fiduciary duty to World Medical and even though the retainer ceased in April-June 1999 an injunction should be granted to restrain POF Attorneys from breaching that fiduciary duty and also POF Lawyers being a party to a breach. I accept that the courts hold fiduciaries to high standards of behaviour to deter breaches of faith and to maintain high standards of professional conduct and further because the consequences of disloyalty are often difficult to determine.

There is no doubt that a solicitor owes a fiduciary duty to his client. See Nocton v Ashburton (1914) AC 932, Clark Boyce v Mouat (1994) 1 AC 428 at 437 and Maguire v Makaronis (1997) 188 CLR 449.

In my opinion it is strongly arguable that POF Attorneys owed a fiduciary duty to World Medical not only in accordance with general principle establishing a fiduciary relationship – see Hospital Products Limited v United States Surgical Corporation (1984) 156 CLR 41 at 69-70 and 96-97 – but because the relationship for some purposes was principal-agent which is a well-known relationship establishing a fiduciary duty.

In the Hospital Products Limited case, supra, Gibbs CJ at p.68 said –

"The authorities contain much guidance as to the duties of one who is in a fiduciary relationship with another, but provide no comprehensive statement of the criteria by reference to which the existence of a fiduciary relationship may be established. The archetype of a fiduciary is of course the trustee, but it is recognised by the decisions of the courts that there are other classes of persons who normally stand in a fiduciary relationship to one another – e.g. partners, principal and agent, director and company, master and servant, solicitor and client, tenant-for-life and remainderman. There is no reason to suppose that these categories are closed."

For present purposes I will proceed on the assumption that during the course of the retainer of POF Attorneys, the firm was in a fiduciary relationship with World Medical. But that conclusion does not per se establish the nature and extent of the duty owed.

As a general proposition the minimum duties which are owed are first, that a fiduciary must not make a personal profit from his position and secondly, he must not allow personal interest and duty to conflict.

In Macguire v Makaronis, supra, the relationship was solicitor and client but as the court stated at p.464 it is necessary to determine the particular obligation that is allegedly broken.

Brennan CJ, Gaudron, McHugh and Gummow JJ said –

"Nevertheless, even here, to say the appellants stood as fiduciaries to the respondents, calls for the ascertainment of the particular obligations owed to the respondents in considering of what acts and omissions amounted to failure to discharge those obligations."

In the present matter World Medical retained POF Attorneys to prosecute their application for a patent in Australia. During the course of that retainer POF Attorneys owed an obligation to not place their own personal interests in conflict with their duty to World Medical.

But once the retainer ceased then in my opinion the obligation ceased.

This is made clear by what Lord Millett said in the Bolkiah case at p.527 quoted above. He said -

"The fiduciary relationship which subsists between solicitor and client comes to an end with the termination of the retainer."
(Emphasis added.)

This in my opinion provides an answer to the plaintiff's submission that the duty of loyalty and to act only in the interests of one's client and not in the interests of another does not survive the cessation of the fiduciary relationship.

But assuming I am wrong in that conclusion, and that the fiduciary obligations continue despite the cessation of the retainer, the question is what is the nature of the fiduciary duty that continues? This leads in my opinion to the same issue that arises when the principles stated in Bolkiah apply, namely, the duty to preserve confidentiality of information obtained which of course includes any communication protected by legal professional privilege.

In my opinion the plaintiff's submission seeking to rely upon the continuation of the fiduciary obligations fails, one, because the duty ceases on the termination of the retainer but if I am wrong, leads to the same issue that applies when application is made to restrain a solicitor from imparting confidential information.

World Medical's counsel submitted that POF Attorneys did not acquit themselves of the consequences of disloyalty arising from their breach of duty by ceasing to act for both by ridding itself of one principal. It was submitted that its breach of faith remains and the courts hold fiduciaries to high standards of behaviour to deter breaches of faith, to maintain high standards of professional conduct and because the nefarious consequences of disloyalty are often impossible to know.

In support of that proposition counsel referred to what was said in Davies v Clough (1837) 59 ER 105 at 106-7 cited by J.D. Phillips J in Holdsworth v Anderson and Associates Pty Ltd, unreported 26 August 1994 at p.21. Those cases were concerned with lawyers acting in the same litigation for different parties at different times. That is not the position here.

B. Legal professional privilege

World Medical's counsel submitted that some of the communications between POF Attorneys and World Medical were privileged information and according injunctive relief should be granted because POF Attorneys was in possession of privileged material the contents of which it was not at liberty to disclose.

On the assumption that some of the communications would be covered by legal professional privilege there is no evidence which supports a conclusion that there is any risk that POF Attorneys or POF Lawyers may disclose any privileged information.

C. Control over solicitors

World Medical's counsel also submitted that there was a separate basis for granting the injunction, namely, the control by a court over solicitors and the undoubted power the court has to prevent solicitors acting contrary to their obligations ensuring the maintenance of public trust and confidence in professional standards.

The cases do show that the jurisdiction is exercised where a solicitor acts in the same litigation at various times for different parties. That is not the case here and in my opinion the principle does not apply even assuming it forms the basis for granting an injunction separate from the principles stated in the Prince Jefri case.

Whilst I accept that it is a relevant consideration that the administration of justice be weighed in considering whether an injunction should be granted, in my opinion it is not a factor which per se justifies the exercise of the jurisdiction save in the most exceptional cases. The observations in the cases were made with respect to the legal profession and whilst it may be arguable that the profession of patent attorneys should also maintain the same degree of integrity I am not persuaded in this case that the facts justify the granting of an injunction on the basis of the perception of the legal profession or patent attorney profession being brought into disrepute. This is not a case of a professional person changing sides in the litigation or related litigation.

What occurred in this case is unfortunate. It is clear that the recording mechanisms used by both defendants in the past left a lot to be desired and this situation should never have been allowed to occur. Even the old card system employed in solicitors' offices in days long gone, in both offices of the defendants would have picked up the potential for conflict and an efficient computer system should have made it a very simple task. The fact is that the control mechanisms within the defendants' offices were lamentably inadequate.

But when one stands back from what has occurred, one can realistically describe what POF Attorneys were doing was providing nothing more than a convenient conduit for an American company to make application for the grant of a patent in Australia. It was nothing more than that in my opinion and nothing that they did and what POF Lawyers did amounts to an affront to one's confidence in the legal profession, the patent attorneys' profession or the administration of justice.

Conclusion

In my opinion the plaintiff has failed to establish a case for the grant of an injunction and accordingly I dismiss its proceeding.

I will hear the parties on the question of costs.

---

Actions

Download as PDF Download as Word Document

Citations

World Medical Manufacturing Corp v Phillips Ormonde & Fitzpatrick Lawyers [2000] VSC 196

Most Recent Citation

Spincode Pty Ltd v Look Software Pty Ltd [2001] VSC 287

Cases Citing This Decision

13

Asia Pacific Telecommunications Ltd v Optus Networks Pty Ltd [2005] NSWSC 550

Belan v Casey [2002] NSWSC 58

Hatzis & Hatzis [2022] FedCFamC1F 745

Cases Cited

7

Statutory Material Cited

0

Council of the City of Sydney v Goldspar Australia Pty Ltd [2006] FCA 472

PT Bayan Resources TBK v BCBC Singapore Pte Ltd [2015] HCA 36

[2000] VSC 196

18 May 2000