FEDERAL COURT OF AUSTRALIA

Australian Mud Company Pty Ltd v Coretell Pty Ltd [2014] FCA 200

THE COURT ORDERS THAT:

1.    The affidavit of Christopher Bradford sworn 27 November 2012 be redacted so as to exclude those parts of paragraphs 105 to 109 which have been rejected in accordance with the Court’s rulings on the admissibility of those paragraphs.

2.    Costs be reserved.

Note:    Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.

REASONS FOR JUDGMENT

INTRODUCTION

1    In this proceeding the applicants sue the respondents for infringement of Australian Innovation Patent No 2010101356 and Australian Innovation Patent No 2011101041 (the Patents). The first respondent has filed a cross-claim seeking revocation of the Patents. The hearing of the proceeding is fixed to commence before McKerracher J in Perth on 14 April 2014.

2    On 6 November 2013 McKerracher J ordered that the admissibility of paragraphs 105 to 109 of the affidavit Christopher Bradford sworn on 27 November 2012 and filed by the respondent be considered by me on the papers in advance of the trial. The contents of those paragraphs of Mr Bradford’s affidavit are objected to by the applicants on the basis that their contents are privileged by reason of s 200(2) of the Patents Act 1990 (Cth) (Patents Act). They also submit that paragraphs 105 to 109 of Mr Bradford’s affidavit are irrelevant to any issue in the proceeding and should also be rejected on that basis. The applicants also raise objections under ss 135 and 138 of the Evidence Act 1995 (Cth) (Evidence Act).

3    The respondents submit that only the privilege issue should be considered by me. They submit that the submissions made to McKerracher J make clear that the applicants’ claim for privilege is the only point that his Honour contemplated should be decided in advance of the trial by another judge. They also submit that the relevant paragraphs in Mr Bradford’s affidavit do not disclose communications that are privileged, but that if they do, then the privilege has been waived.

THE DISPUTED MATERIAL

4    A copy of Mr Bradford’s affidavit, including paragraphs 105 to 109, was provided to me so that I might review it for the purpose of ruling on the admissibility of those paragraphs. Those paragraphs purport to disclose communications between Mr Bradford, who was then an employee or agent of Imdex Limited (Imdex) trading as Ace Drilling Supplies (which is and was, at relevant times, the first applicant’s parent company) and its patent attorneys.

5    There is a good deal of common ground between the parties as to the nature of the communications the subject of the claim for privilege and the context in which such communications took place. In particular, it is not in dispute that the relevant discussions were between officers or employees of either Imdex or the first applicant, on the one hand, and patent attorneys acting for one or more of those companies in connection with a proposed patent application. It is also accepted by the respondents, at least implicitly, that were it not for the arguments relied upon by the respondents that are considered below, the content of those discussions would be privileged and inadmissible.

THE STATUTORY BACKGROUND

6    The objection taken by the applicant to paragraphs 105 to 109 of Mr Bradford’s affidavit, and the respondents’ answer to it, raises a number of issues including the relationship between s 118 of the Evidence Act and s 200 of the Patents Act.

The Evidence Act

7    Questions of admissibility of evidence in this proceeding must be determined by reference to relevant provisions of the Evidence Act. These include those provisions in Pt 3.10, Div 1 of the Evidence Act which are concerned with legal professional privilege or, as it is also called, client legal privilege. There are two recognised categories of client legal privilege, legal advice privilege (s 118), and litigation privilege (s 119). For present purposes, s 118 of the Evidence Act, which concerns legal advice privilege, is the only category that is relevant. It provides:

118.    Legal advice

    Evidence is not to be adduced if, on objection by a client, the court finds that adducing the evidence would result in disclosure of:

    (a)    a confidential communication made between the client and a lawyer; or

    (b)    a confidential communication made between 2 or more lawyers acting for the client; or

    (c)    the contents of a confidential document (whether delivered or not) prepared by the client, lawyer or another person;

    for the dominant purpose of the lawyer, or one or more of the lawyers, providing legal advice to the client.

Section 117 includes definitions of “client”, “confidential communication”, “confidential document”, “lawyer” and “party”.

8    Section 122 of the Evidence Act is concerned with the loss of client legal privilege. Subsections (2)–(5) relevantly provide:

(2)    Subject to subsection (5), this Division does not prevent the adducing of evidence if the client or party concerned has acted in a way that is inconsistent with the client or party objecting to the adducing of the evidence because it would result in a disclosure of a kind referred to in section 118, 119 or 120.

(3)    Without limiting subsection (2), a client or party is taken to have so acted if:

    (a)    the client or party knowingly and voluntarily disclosed the substance of the evidence to another person; or

    (b)    the substance of the evidence has been disclosed with the express or implied consent of the client or party.

(4)    The reference in paragraph (3)(a) to a knowing and voluntary disclosure does not include a reference to a disclosure by a person who was, at the time of the disclosure, an employee or agent of the client or party or of a lawyer of the client or party unless the employee or agent was authorised by the client, party or lawyer to make the disclosure.

(5)    A client or party is not taken to have acted in a manner inconsistent with the client or party objecting to the adducing of the evidence merely because:

    (a)    the substance of the evidence has been disclosed:

        (i)    in the course of making a confidential communication or preparing a confidential document; or

        (ii)    …

        (iii)    under compulsion of law; or

        (iv)    …

    …

9    The provisions of the Evidence Act are concerned solely with the admissibility of privileged communications and do not apply in the context of pre-trial discovery, production and inspection. Accordingly, the matters of pre-trial discovery, production and inspection of documents which constitute or record communications that are, or are alleged to be, the subject of legal advice privilege are governed by the common law: cf. s 131A of the Evidence Act 1995 (NSW). However, in circumstances where the question that arises concerns the admissibility of documentary or oral evidence of what is said to be a privileged communication, it is the relevant provisions of the Evidence Act which must be applied.

The Patents Act

10    In the present case the applicants rely on s 200 of the Patents Act. Subsections (2) and (2A) provide:

(2)    A communication made for the dominant purpose of a registered patent attorney providing intellectual property advice to a client is privileged in the same way, and to the same extent, as a communication made for the dominant purpose of a legal practitioner providing legal advice to a client.

(2A)    A record or document made for the dominant purpose of a registered patent attorney providing intellectual property advice to a client is privileged in the same way, and to the same extent, as a record or document made for the dominant purpose of a legal practitioner providing legal advice to a client.

Subsection (2C) relevantly defines “Intellectual property advice” to mean “advice in relation to … patents” or “any related matters”.

11    Section 200 has been amended a number of times since the Patents Act came into force. Some of those amendments were made for the purpose of achieving consistency as between s 200 of the Patents Act and s 118 of the Evidence Act. The amendment to subsec (2) and the introduction of subsec (2A) by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (Cth) fall into that category. Both provisions reflect the “dominant purpose” requirement which was adopted for the purposes of s 118 and s 119 of the Evidence Act several years before a majority of the High Court in Esso Australia Resources Ltd v Federal Commissioner of Taxation (1999) 201 CLR 49 overruled Grant v Downs (1976) 135 CLR 674. The intention of the 2012 amendments to s 200 is clear from their terms, and is also confirmed by the Explanatory Memorandum to the Intellectual Property Laws Amendment (Raising the Bar) Act in which it is said at p 93:

The amendment also makes a number of changes to align the wording in the Patents Act with the wording of section 118 of the Evidence Act. Thus the communication, record or document must be for the ‘dominant’ purpose of a patent attorney providing intellectual property advice in order for the communication, record or document to attract the privilege. This will ensure that the test for client-attorney privilege is consistent with the test for client-lawyer ‘advice’ privilege.

…

The privilege is intended to apply in the same way and to the same extent for patent attorneys as is [sic] does for lawyers. In particular, if the Evidence Act would apply to lawyers, then the Evidence Act provisions would govern the privilege that applies to attorneys. It is only in a situation in which a lawyer could rely on the common law privilege that the common law rules would govern the privilege that applies to attorneys. It is not intended that attorney privilege would exist in a situation where there would be no equivalent privilege for lawyers.

The amendment also includes a definition of ‘intellectual property advice’. This limits the scope of the privilege to only those fields in which patent attorneys have specialist qualifications and knowledge.

12    Section 200 therefore protects communications between a patent attorney and his or her client which are made for the dominant purpose of providing intellectual property advice to the client to the same extent as such communications would be protected if they were between a legal practitioner and his or her client. For this purpose the expression “intellectual property advice” has been broadly defined.

CONSIDERATION

Advice

13    The first point relied upon by the respondents in support of the proposition that the relevant communications are not privileged concerns the content of the discussions as deposed to by Mr Bradford. It is submitted by the respondents that the relevant paragraphs of Mr Bradford’s affidavit do not disclose any advice given by the patent attorneys.

14    In considering the scope of the advice privilege as between a patent attorney and his or her client, it is necessary to consider the scope of the advice privilege as between a lawyer and his or her client. So far as communications that are made for the dominant purpose of providing intellectual property advice are concerned, the scope of the advice privilege as between patent attorney and client will be precisely the same as the scope of the advice privilege as between lawyer and client.

15    In Esso the plurality (Gleeson CJ, Gaudron and Gummow JJ) said at [35]:

Legal professional privilege (or client legal privilege) protects the confidentiality of certain communications made in connection with giving or obtaining legal advice or the provision of legal services, including representation in proceedings in a court.

Their Honours’ reference to “communications made in connection with giving or obtaining legal advice or the provision of legal services” reflects the fact that the privilege extends beyond a communication that constitutes advice, or a request for advice, in any narrow sense. The expression “legal advice” in this context is to be broadly construed to encompass communications including some that might not, at first glance, constitute legal advice per se, but which are nevertheless protected because they are sufficiently connected with the giving or obtaining of such legal advice.

16    In Trade Practices Commission v Sterling (1979) 36 FLR 244 at 245, Lockhart J spoke of communications between a party and his professional legal adviser which are made with a view to obtaining or giving “legal advice or assistance”. Similarly, Mostyn v The West Mostyn Coal and Iron Company (Limited) (1876) 34 LT 531 is long standing authority for the proposition that a communication may be privileged even though it is not intended for use in litigation and not strictly speaking made for the purpose of providing legal advice but for the purpose of providing legal assistance. Mostyn was applied by McPherson J in Packer v Deputy Commissioner of Taxation (Qld) [1985] 1 Qd R 275 at 284 and Anderson J in Dalleagles Pty Ltd v Australian Securities Commission (1991) 4 WAR 325 at 332-333.

17    More recently, in AWB Ltd v Cole (2006) 152 FCR 382, Young J accepted at [100] that “legal advice is not confined to telling the client the law but includes professional legal advice as to what should prudently and sensibly be done in the relevant legal context.” Those words are drawn from the judgment of Taylor LJ in Balabel v Air India [1988] Ch 317 at 330. His Lordship’s statement of the law was endorsed by the House of Lords in Three Rivers District Council v Governor and Company of the Bank of England (No 6) [2005] 1 AC 610 and was also applied by Allsop J in DSE (Holdings) Pty Ltd v InterTAN Inc (2003) 135 FCR 151. In that case his Honour said at [45]: “[w]hat legal advice is … goes beyond formal advice as to the law.”

18    The narrow view of the scope of the privilege propounded by the respondents is inconsistent with these authorities. It is also inconsistent with the broad language of s 118 of the Evidence Act. Under s 118, the legal advice privilege extends to a confidential communication made between a lawyer and a client for the dominant purpose of providing legal advice to the client. Such communications include, but are not limited to, communications that constitute or record the advice given or the request for that advice. In this respect there is no material difference between s 118 and the common law.

Waiver

19    In Mann v Carnell (1999) 201 CLR 1 the plurality (Gleeson CJ, Gaudron, Gummow and Callinan JJ) considered the circumstances in which legal privilege may be waived at common law. Their Honours said at [29]:

Waiver may be express or implied. Disputes as to implied waiver usually arise from the need to decide whether particular conduct is inconsistent with the maintenance of the confidentiality which the privilege is intended to protect. When an affirmative answer is given to such a question, it is sometimes said that waiver is “imputed by operation of law”. This means that the law recognises the inconsistency and determines its consequences, even though such consequences may not reflect the subjective intention of the party who has lost the privilege … What brings about the waiver is the inconsistency, which the courts, where necessary informed by considerations of fairness, perceive, between the conduct of the client and maintenance of the confidentiality; not some overriding principle of fairness operating at large.

(footnote omitted)

The decision in Osland v Secretary, Department of Justice (2008) 234 CLR 275 at [49] makes clear that the question whether a limited disclosure of the existence and effect of legal advice is inconsistent with the maintenance of the confidentiality of the advice involves matters of fact and degree. Deciding whether or not such inconsistency exists requires a judgment to be made in the context and circumstances of the particular case, and in light of any consideration of fairness arising from that context or those circumstances: per Gleeson CJ, Gummow, Heydon and Kiefel JJ at [45]. It may be accepted for the purposes of this case that s 122 of the Evidence Act requires that the Court adopt the same approach as that applicable under the common law.

20    The applicants have given discovery of a number of documents that relate to the consultations with the patent attorneys that took place in or about July and August 2004. No claim for privilege was made with respect to these documents. They are described in the respondents’ submissions in these terms:

    An email from Ms Merrilee Gregg of Ace Drilling Supplies to Mr Richard Parfitt of Chardec Consultants Ltd (Chardec) dated 26 July 2004 asking for schematics and drawings relating to the tool to pass on to patent “lawyers” (Document 1).

    An email from Mr Parfitt to Ms Gregg dated 27 July 2004 attaching three AutoCAD drawings relating to the tool “which should prove useful for the patent application” (Document 2).

    An email from Ms Gregg to Mr Parfitt dated 28 July 2004 advising that she had forwarded the drawings “to our lawyers” (Document 3).

    An email from Mr Bradford to Mr Parfitt dated 24 August 2004 in which Mr Bradford states that he had “conducted a brief meeting with a patient (sic) attorney” and had been asked certain questions regarding the operation of the tool. Mr Bradford referred the questions to Mr Parfitt to provide an answer for the patent attorneys, since he says that “We have tried to relate our knowledge to the attorney, without much success and think it would be simpler and certainly more accurate if you could shed some light on these matters” (Document 4).

    An email from Mr Parfitt to Mr Bradford dated 24 August 2004 in which Mr Parfitt provides the details of the working of the tool required by the patent attorneys (Document 5).

21    The respondents submitted that by reason of the publication of various patent applications relating to the tool the subject of the innovation patents and public use of the tool since 2004, any privilege in the patent attorney/client communications that took place in 2004 had been lost. No authority was cited in support of this submission and it was not developed in any meaningful way. The lodgement and subsequent publication of a patent application does not give rise to a waiver of the privileged communications between the patent attorney by whom it was prepared and his or her client. It is not inconsistent for a patentee to file such an application and later maintain a claim for privilege in relation to confidential communications he or she had with a patent attorney in connection with the preparation of such an application.

22    The other conduct which is said to give rise to the waiver consists of the act of disclosure that took place in the course of discovery as a result of the production for inspection of Documents 1–5. It was not suggested by the respondents that the applicants have sought to deploy any of those documents for any forensic purpose. Rather, it is submitted that the disclosure of them in the course of discovery was inconsistent with the applicants’ claim for privilege in relation to Mr Bradford’s communications with the patent attorneys.

23    I will now consider each of the relevant documents in turn.

Documents 1 – 3

24    These documents include a request from Ms Gregg for drawings which might be provided to the patent attorneys and Mr Parfitt’s response to that request which included copies of three drawings. None of these documents indicate what advice was sought from the patent attorneys or what advice was provided by them. However, I accept that it may be inferred from the emails that the drawings attached to the response were provided to the patent attorneys for the purpose of obtaining their professional advice or assistance.

Documents 4 and 5

25    In the first of the emails Mr Bradford informs Mr Parfitt as follows:

We have just conducted a brief meeting with a patient [sic] attorney and we have been asked the following questions relating to the operational process of the Core Orientator.

Firstly, how does the display unit know which way to flash before it forms a solid rectangle indicating the desired “high side” has been reached.

[A]nd secondly, would it be possible for you to describe, very simply the sequential steps of how the unit functions internally.

We have tried to relate our knowledge to the attorney, without much success and think it would be a lot simpler and certainly more accurate if you could shed some light on these matters.

Mr Parfitt responded with an email which appears to answer both parts of Mr Bradford’s request. Mr Parfitt’s response includes a description of the design and operation (or at least aspects thereof) of a core orientator tool which was, it may be inferred, given to the patent attorneys to assist them in preparing the patent application.

26    The applicants submitted that Documents 1–5 were not themselves privileged from production and the applicants were compelled to give discovery on that basis. I am not satisfied that this is correct. I think the applicants’ submission overlooks the decision of the Full Court in Pratt Holdings Pty Ltd v Commissioner of Taxation (2004) 136 FCR 357 which settled, so far as this Court is concerned, a lingering controversy as to the scope of the legal advice privilege at common law. That case is authority for the proposition that legal advice privilege may be attracted where a client has authorised a third party to bring a document into existence for the dominant purpose of communicating the document or its contents to his or her legal advisers in order to obtain legal advice even though the third party who prepared the document might not have done so as agent of the client. As Finn J (with whom Merkel J agreed) observed at [41]:

To deny that a third party is an agent in such circumstances does not, though, provide a sufficient or principled reason for denying privilege to the documentary communication (or contents) it has authored. The important consideration in my view is not the nature of the third party’s legal relationship with the party that engaged it but, rather, the nature of the function it performed for that party. If that function was to enable the principal to make the communication necessary to obtain legal advice it required, I can see no reason for withholding the privilege from the documentary communication authored by the third party. That party has been so implicated in the communication made by the client to its legal adviser as to bring its work product within the rationale of legal advice privilege.

27    As to the admissibility of evidence under s 118, the position is not materially different because that provision extends its protection to the contents of a confidential document (whether delivered or not) prepared by the client, lawyer or another person for the dominant purpose of the lawyer providing legal advice to the client: see s 118(c) of the Evidence Act.

28    In the present case, each of the relevant documents appears to me to have been created by its author for the dominant purpose of enabling the party who authorised its creation to obtain the professional advice and assistance of the patent attorneys in relation to the proposed patent application. However, given the applicants’ submission that none of the relevant documents was privileged, the admissibility of Mr Bradford’s affidavit cannot be approached on the basis that there has been an inadvertent disclosure of such material by the applicants. Rather, the matter should be approached on the basis that the first applicant has not sought to assert privilege over such documents even though it was open to it to do so. The question then is whether this constitutes conduct that is inconsistent with its claim to privilege in relation to the communications between Mr Bradford and the patent attorneys which are referred to in the relevant paragraphs of his affidavit.

29    To the extent that the relevant paragraphs of Mr Bradford’s affidavit relate directly to the communication to the patent attorneys of the information provided by Mr Parfitt in response to Ms Gregg’s and Mr Bradford’s emails then I accept that it would be inconsistent for the applicants, after having voluntarily disclosed such information to the respondents through the discovery process, to object to Mr Bradford giving evidence of such matters.

30    In light of the foregoing I rule as follows:

    Paragraphs 105, 107 and 108 are inadmissible – the communications recorded in these paragraphs are the subject of patent attorney/client privilege which has not been waived.

    The first two sentences of para 106 are not inadmissible on the ground of patent attorney/client privilege because the privilege in the communications recorded in those sentences has been waived.

    The last two sentences of para 106 and the last sentence of para 109 are inadmissible to the extent they might encompass any description of the design or operation of the tool beyond that provided by Mr Parfitt. However, the wrapped-up way in which the evidence is presented does not permit me to disentangle what is privileged from what is not privileged.

In the result, the first two sentences of para 106 should be admitted and the balance of that paragraph rejected. Paragraphs 105, 107 and 108 should also be rejected. The last sentence of para 109 should be rejected.

31    As to other arguments relied upon by the applicants in support of their contention that the relevant paragraphs are inadmissible, these are matters for the trial judge to consider should the need for him to consider them arise. In the event there is any further argument on the admissibility of any of the relevant paragraphs (including the first two sentences of para 106) the respondents would need to explain to his Honour what possible relevance any such evidence has to any pleaded issue in the case.

32    Costs to be reserved.

Associate:

Dated:    13 March 2014