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Australia – Collateral Use Of Discovered Documents: What Constitutes Special Circumstances?

22 April, 2014

 

Legal News & Analysis – Asia Pacific – Australia – Dispute Resolution

 

CSL Limited v Novo Nordisk Pharmaceuticals Pty Ltd [2013] FCA 1307

 
What You Need To Know

 

  • This proceeding concerned the release of confidential documents discovered during the course of patent litigation in 2008.
  • CSL applied to have the discovered documents released for use before the Technical Board of Appeal of the European Patent Office.
  • This case demonstrates the difficulties in establishing that special circumstances exist which justify the grant of leave to use discovered documents for a purpose not connected to the proceedings in which they were discovered.

 
Background

 
In 2008, CSL Limited (CSL) commenced proceedings against Novo Nordisk Pharmaceuticals Pty Ltd (Novo Nordisk) for infringement of Australian Patent No. 716747, which related to a method for the preparation of stabilised growth hormone formulation. The allegedly infringing conduct was Novo Nordisk’s manufacture, supply and sale of liquid human growth hormone products called NORDITROPIN SIMPLEXX and NORDITROPIN NORDIFLEX. The dispute settled in 2012, with CSL surrendering its Australian Patent.

 
During the course of the proceedings, documents were discovered by Novo Nordisk subject to confidentiality undertakings, but because the matter settled they were not received into evidence.

 
Present Application

 
As is commonly the case in patent litigation, CSL and Novo Nordisk were engaged in proceedings regarding equivalent patents and the Norditropin products in other jurisdictions. In the European Patent Office (EPO), this matter was the subject of a Technical Board of Appeal (Technical Board) hearing early in 2014.

 
Relevantly, the Technical Board does not allow discovery of documents or cross examination, which meant that Novo Nordisk’s research and development documents regarding its Norditropin products, which had been discovered in the Australian proceeding, could not be obtained by an order in the Technical Board proceeding.

 
In late 2013, CSL applied to the Federal Court for leave to permit the discovered documents to be used for a purpose other than a purpose connected to the now settled Australian proceeding, in an attempt to introduce them as evidence before the Technical Board.

 
Harman Undertaking

 
Where a party is compelled to disclose documents or information for discovery in proceedings in Australia, the party receiving the documents is subject to the Harman Undertaking, which requires them to not use the discovered documents for any purpose other than the purpose for which the documents were given, unless they are received in evidence subject to the court’s orders. The Harman Undertaking works to safeguard a party from abuse of its discovered documents, and also covers the solicitors acting for a company which receives discovered documents during the course of proceedings.

 
Leave Refused

 
Although the court has the power to grant leave to allow documents to be used outside a proceeding, the authorities indicate that this power “is not freely exercised, and will only be exercised where special circumstances appear”.

 

Novo Nordisk opposed the application by CSL on the basis that there were no special circumstances that would justify the grant of leave, and that it would be prejudiced if CSL was permitted to introduce the documents to the Technical Board.

 
Both parties presented evidence from European patent attorneys regarding the practices and procedures of the Technical Board and summarising the steps in that proceeding to date. A key point of contention between the patent attorneys was whether or not the Technical Board would, irrespective of what occurred in the Australian court, exercise its discretion to admit the evidence at a late stage of proceedings. Besanko J considered the fact that the Opposition Division of the EPO had handed down its decision four years earlier would result in the applicant facing a “substantial hurdle” to persuade the Technical Board to admit the documents at such a late stage of the appeal.

 
In addition to the challenges that the applicant would face to get the evidence before the Technical Board, the fact that the EPO’s procedures meant any confidential documents would likely be accessible to the public weighed heavily in his Honour’s rejection of the application. Although there was debate between the parties as to whether confidentiality still existed in the documents created between 1991 to 1998, his Honour considered that this was a substantial risk nonetheless.

 
His Honour also considered it highly relevant that the EPO does not allow for discovery. His Honour said:

 

It seems to me that I should assume that the EPO is satisfied that it can do justice … without material of the kind presently in issue.

 
Overall the significance of the documents to the applicant’s case before the Technical Board was outweighed by the stage of the proceedings, concerns about confidentiality and a reluctance to interfere with proceedings in a different legal system. The combination of these factors and challenges led Besanko J to conclude that there were no “special circumstances” to justify the release (collateral use) of the discovered documents.

 

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For further information, please contact:

 

Kellech Smith, Partner, Ashurst
[email protected]


Phoebe Vertigan, Ashurst
[email protected]

 

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