Vringo Infrastructure Inc v ZTE (Australia) Pty Ltd (No 3) [2014] FCA 983
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IN THE FEDERAL COURT OF AUSTRALIA |
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Applicant | |
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AND: |
ZTE (AUSTRALIA) PTY LTD (ACN 110 578 428) Respondent |
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DATE OF ORDER: |
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WHERE MADE: |
THE COURT ORDERS THAT:
1. Nothing in this Order will operate as a waiver of any right of a party to this Proceeding (Party) pursuant to statute or any regulation (including any right under the rules of this Court) or the common law, including without limitation any claim of privilege.
Suppression and Non-Publication Order
2. Pursuant to section 37AF of the Federal Court of Australia Act 1976 (Cth), and on the basis that this Order is necessary to prevent prejudice to the proper administration of justice, this Order applies to any document:
(a) disclosed by or on behalf of a Party (Discloser) to another Party (Disclosee), or a person who receives the document on behalf of the Disclosee, in relation to this Proceeding, and
(b) which the Court has ordered, on the application of the Discloser, is subject to this Order,
until further Order.
Interim Suppression and Non-Publication Order
3. Pursuant to section 37AF of the Federal Court of Australia Act 1976 (Cth), and on the basis that this Order is necessary to prevent prejudice to the proper administration of justice, this Order applies to any document:
(a) disclosed by or on behalf of the Discloser, and
(b) which the Parties have agreed in writing is confidential and subject to this Order,
until such time as a Party seeks in the Proceeding to tender or read the document or otherwise rely in Court upon the contents thereof or information contained therein or information derived or notes taken or reports or other documents generated therefrom, including copies of such documents, at which time the Discloser must satisfy the Court that an order in accordance with paragraph 2 of this Order should be made in relation to the document.
4. In this Order, a document that falls within paragraphs 2 or 3 will be referred to as a Discloser Confidential Document.
Discloser Confidential Material
5. Each Discloser Confidential Document, the contents thereof and information contained therein or information derived or notes taken or reports or other documents generated therefrom, including copies of such documents as may be made by the persons referred to below (Discloser Confidential Information) will be confidential in this Proceeding, and they and all and any information contained in them:
(a) may only be disclosed to:
(i) external solicitors and patent attorneys for the Disclosee;
(ii) external counsel for the Disclosee;
(iii) paralegals, litigation support personnel, computer services personnel, secretarial staff and other administrative staff employed or engaged by those persons named in sub-paragraphs 3(a)(i) - (ii) (inclusive);
(iv) subject further to paragraph 8 of this Order, in relation to any Discloser Confidential Document where the Applicant is the Disclosee:
A. Mr Jason Charkow, Senior Intellectual Property Counsel; and
B. Dr Saswat Misra, Intellectual Property Counsel,
(Disclosee Representatives);
(i) subject further to paragraph 8 of this Order, any independent expert nominated on behalf of the Disclosee (Disclosee Expert);
(ii) subject further to paragraph 7 of this Order, employees of third party legal process outsourcing providers retained by or on behalf of the Disclosee in relation to this Proceeding (Disclosee LPOs); and
(iii) such other persons as to whom the Discloser consents in writing (provided that the Discloser must not unreasonably withhold consent) or the Court may order,
(collectively, Disclosee Disclosure Persons);
(a) will not be open to public inspection, disclosed in open Court or, subject to paragraphs 13 and 14 of this Order, disclosed in the open part of any Court transcript; and
(b) may be used only for the purposes of this Proceeding.
6. External solicitors for the Disclosee and any Disclosee Expert to whom any Discloser Confidential Documents or Discloser Confidential Information (hereafter, collectively referred to as Discloser Confidential Material) is disclosed under this Order will be bound by this Order.
7. Discloser Confidential Material may only be disclosed to Disclosee LPOs where such persons and their employer have, prior to disclosure, each signed a confidentiality undertaking to maintain the confidentiality of the Discloser Confidential Material in the form set out in the Schedule to this Order (Confidentiality Undertaking). The Disclosee will at all times be responsible for ensuring the confidentiality of any Discloser Confidential Material disclosed to Disclosee LPOs.
8. Discloser Confidential Material may only be disclosed to Disclosee Representatives or Disclosee Experts where such persons have, prior to disclosure, each signed a Confidentiality Undertaking.
9. Discloser Confidential Material will be used, handled, kept and stored by the Disclosee Disclosure Persons subject to the following directions:
(a) Discloser Confidential Material will be used, handled, kept and stored in such a manner as will at all times preserve its confidentiality;
(b) no copies of Discloser Confidential Material will be made by any Disclosee Disclosure Persons except as may be reasonably required for the purpose of this Proceeding;
(c) subject to sub-paragraph (b) above, any copies of Discloser Confidential Material made by or on behalf of any of the Disclosee Disclosure Persons will be subject to the provisions of this Order relating to Discloser Confidential Material (as if such copies were Discloser Confidential Material); and
(d) no Discloser Confidential Material will, without the prior written consent of the Discloser, be disclosed to or inspected by any persons other than the Disclosee Disclosure Persons.
Confidentiality - General
10. No affidavit filed in this Proceeding by or on behalf of the Disclosee, may contain any Discloser Confidential Material, save in an annexure to such an affidavit marked ‘Confidential’ and such annexures will be confidential to the relevant parties, and will not be used, inspected or disclosed except as provided in this Order.
11. No written submissions filed in this Proceeding by or on behalf of the Disclosee, may contain any Discloser Confidential Material, save in an annexure to such submissions marked ‘Confidential’ and such annexures will be confidential to the relevant parties, and will not be used, inspected or disclosed except as provided in this Order.
12. Nothing in this Order will prevent disclosure of any Discloser Confidential Material to:
(a) any judge, employee or other personnel of this Court; or
(b) any person associated with recording transcript at any hearing in this Proceeding,
for the purposes of this Proceeding.
13. Nothing in this Order will prevent the Disclosee from disclosing Discloser Confidential Material at any interlocutory or final hearing in this Proceeding, provided that any oral disclosure is made in closed Court.
14. Where Discloser Confidential Material is orally disclosed in any interlocutory or final hearing in this Proceeding, the transcript of that portion of the hearing will be confidential, with access thereto limited to the persons who have liberty to view such material under this Order.
15. Subject to paragraphs 16 and 17 of this Order, within 28 days after the final determination of this Proceeding, or any appeal therefrom or on the expiry of any applicable appeal period (whichever is the later) (Final Determination) the Disclosee's solicitors will take all necessary steps to retrieve from any Disclosee Expert, Disclosee Representatives and Disclosee Service Provider, in the case of Discloser Confidential Material all Confidential Material disclosed to or in the possession, custody or control of such persons.
16. Within 28 days of Final Determination the Disclosee's solicitors will take all necessary steps to ensure that any Disclosee Expert or Disclosee Service Provider has permanently deleted all Discloser Confidential Material which has been stored electronically by such persons.
17. Within 45 days of Final Determination the Disclosee's solicitors will certify to the Discloser's solicitors that they have carried out the steps set out in paragraphs 12 and 13.
18. Subject to paragraph 1, nothing in this Order will prevent disclosure of any Confidential Material beyond the terms of this Order if the Discloser consents in writing to such disclosure, or if the Court orders such disclosure.
19. Subject to paragraph 1, no obligation of confidentiality shall exist, or continue to exist as the case may be, in respect of any material that:
(a) becomes publicly available or public knowledge otherwise than through the default of any person under an obligation of confidence;
(b) appears in any patent or other printed and published document otherwise than through the default of any person under an obligation of confidence;
(c) is subsequently received from a third party not under any obligation of confidentiality;
(d) the parties to this Proceeding agree, or the Court determines, is public knowledge; or
(e) in relation to which, the Discloser has, by notice in writing, notified the Disclosee that the relevant material is no longer subject to these Orders.
20. No admission
Subject to paragraphs 2, 3 and 19, a designation of, or failure to designate, material as Discloser Confidential Material, or its treatment in conformity with, or failure to treat in conformity with, such designation, will not be construed as an admission or agreement by any Party that the designated material does or does not constitute or contain any Discloser Confidential Material.
21. The provisions of this Order will continue after the final determination of this Proceeding and this Court will retain jurisdiction to deal with any issues relating to this Order including without limitation, its enforcement.
22. There will be liberty to apply on 3 days’ written notice.
SCHEDULE
Undertaking
I, [Name] of [address], [qualifications] do hereby acknowledge that I have read the Order dated [insert date] 2014 (Order) made in respect of Discloser Confidential Material (as defined in the Order) in Proceeding No NSD 1010 of 2013 before the Federal Court of Australia (this Proceeding) and I HEREBY UNDERTAKE the following to the Court with respect to the Discloser Confidential Material.
1. Each document comprising any of the Discloser Confidential Material which comes into my possession:
(a) will, subject to paragraphs 2 and 3 of the Order, be used by me only for the purposes of this Proceeding;
(b) will be kept confidential by me at all times; and
(c) will not be disclosed by me to the Disclosee (as defined in paragraph 2 of the Order), the Disclosee's solicitors, in-house lawyers, counsel or any independent experts retained on behalf of the Disclosee or any other person,
except as provided in the following paragraphs.
2. Each document comprising or containing any Discloser Confidential Material which comes into my possession will be used, handled, kept and stored by me in such manner as will keep it at all times safe from disclosure except as may be required for me when working with:
(a) the Disclosee's external solicitors and external counsel;
(b) the Disclosee's Representatives;
(c) paralegals, litigation support personnel, computer services personnel, secretarial staff and other administrative staff employed or engaged by those persons named in sub-paragraph 2(a);
(d) legal process outsourcing providers engaged by the Disclosee;
(e) any independent experts (unless I am an independent expert); and
(f) such other person as the Parties to this Proceeding may agree or as the Court may order,
or as may be required (but subject to any order for protection of the confidentiality of the same, including the Order) in my giving evidence in this Proceeding.
3. I will not make any copy of any document comprising or containing any Discloser Confidential Material which comes into my possession (Copy Confidential Material) except as may be reasonably required by me for the purposes stated in paragraph (2) above.
4. Subject to paragraph (3) above, I will make and keep a written record of all Copy Confidential Material generated by me from any hard copy Discloser Confidential Material which comes into my possession.
5. I will treat all Copy Confidential Material and information derived or notes taken or reports or other documents generated from the Discloser Confidential Material by me as subject to the obligations contained in this Undertaking.
6. Within 7 days of receiving notice of Final Determination of this Proceeding in accordance with paragraph 15 of the Order, I will:
(a) deliver up to the solicitors of the Disclosee all hard copies (including computer disks) such Discloser Confidential Material and documents described in the preceding paragraph as are in my possession; and
(b) permanently delete any Discloser Confidential Material stored in any electronic storage facility owned or used by me (subject always to paragraph (3) above) so as not to be retrievable by any means, and confirm in writing to the Disclosee's solicitors that I have done so within the time stated in this paragraph.
Dated the day of
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…………………………………….. Signature …………………………………….. Printed name of person giving undertaking |
…………………………………….. Signature of witness …………………………………….. Printed name of witness …………………………………….. Printed address of witness |
Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.
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NEW SOUTH WALES DISTRICT REGISTRY |
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GENERAL DIVISION |
NSD 1010 of 2013 |
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BETWEEN: |
VRINGO INFRASTRUCTURE, INC. Applicant |
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AND: |
ZTE (AUSTRALIA) PTY LTD (ACN 110 578 428) Respondent |
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JUDGE: |
YATES J |
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DATE: |
15 SEPTEMBER 2014 |
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PLACE: |
SYDNEY |
REASONS FOR JUDGMENT
1 Save for one matter, the parties have reached agreement on the form of order that should be made with respect to the preservation of the confidentiality of information that will be disclosed compulsorily or advanced as evidence in the proceeding. The matter in dispute is whether one of the applicant’s employees, Jason Charkow, should be a recipient of documents and information to be disclosed by the respondent as part of the confidentiality regime that has been otherwise agreed.
Background
2 There is no dispute between the parties concerning the relevant facts. The facts are disclosed in correspondence between the parties on this question. The correspondence was tendered by the applicant without objection.
3 The applicant sues the respondent for alleged infringement of certain claims of Patent No. 2005212893 and certain claims of Patent No. 773182. The preparation of the applicant’s case will involve a consideration of confidential technical information relevant to the accused products supplied by the respondent. A certain part of that information is held by the respondent and is required to be disclosed under orders for discovery that were made after a contested interlocutory hearing on 25 February 2014. I have been informed that the discovery that has been ordered includes some 300 primary technical documents emanating from the respondent. These documents will be included in the confidentiality regime that has been agreed between the parties.
4 The agreed confidentiality regime is complex. It prescribes in considerable detail how a document defined as a Discloser Confidential Document and derivative matter defined as Discloser Confidential Information are to be treated by the parties and those to whom access is permitted, as well as how this material is to be used by the parties in the proceeding. The regime includes the giving of a written undertaking to the Court by those having access to the material as recipients. The undertaking includes an obligation to keep the material confidential, subject to limited disclosure to certain persons on certain conditions. The undertaking includes an obligation not to copy the material except to the extent reasonably required for the purposes of the proceeding. This is part of a more generally expressed obligation to use the material only for the purpose of the proceeding. The undertaking includes obligations to deliver up the material or delete it, when stored in electronic form, at the conclusion of the hearing. Other limitations and obligations will be apparent from the form of the general order and attached form of undertaking that prefaces these reasons.
5 As I have noted, Mr Charkow is an employee of the applicant. He holds the position of Senior Intellectual Property Counsel. Mr Charkow is a member of the New York Bar. He was admitted to practice in 2002. Prior to joining the applicant, Mr Charkow was in private practice with two large firms operating internationally. He is an experienced litigator and has been included in numerous confidentiality regimes in proceedings conducted in the United States of America. The parties are also engaged in a parallel patent infringement proceeding in the United Kingdom. Mr Charkow is included in the confidentiality regime in force in that proceeding. It has not been suggested that Mr Charkow has not complied with the obligations of confidentiality imposed on him in either that proceeding or the other proceedings to which I have referred.
The competing positions
6 In the course of negotiating the agreed confidentiality regime, the respondent, through its solicitors, informed the applicant, through its solicitors, that, in its view, it would be inappropriate to permit “highly confidential technical information … to be provided to an unlimited number of unidentified in-house Counsel”, even though such persons have given a confidentiality undertaking. The respondent argued that, to do so, would create an unacceptable risk that confidential information would be “inadvertently or subconsciously disclosed” to the applicant’s employees who are not in-house counsel or who have not signed a confidentiality undertaking. Further, the respondent argued that there would be an unacceptable risk that confidential information would be used impermissibly for purposes unrelated to the present proceeding.
7 The applicant responded by nominating three of its in-house counsel, as persons to whom such information should be disclosed: David Cohen, who is employed by the applicant as Chief Legal and Intellectual Property Officer; Mr Charkow; and Saswat Misra, who is employed by the applicant as Intellectual Property Counsel. Dr Misra reports to Mr Charkow. Mr Charkow reports to Mr Cohen. In responding, the applicant argued that nominating a single member of the applicant’s in-house counsel as a recipient of confidential technical information would be “insufficient and impracticable”. The applicant’s solicitors explained:
Mr Cohen and Mr Charkow are our principal instructors in this proceeding. We are instructed that they are both in the “confidentiality club” as permitted disclosees under the regime applying to documents disclosed by ZTE Entities in the UK proceedings.
Dr Misra leads our client’s in-house team on technical matters in relation to this proceeding.
8 The respondent considered the disclosure of confidential technical information to three nominees to be unsatisfactory. It raised no objection to disclosure being made to Dr Misra, under appropriate arrangements. However, it objected to disclosure to Mr Cohen and to Mr Charkow. The respondent raised two objections. First, in order to convey informed instructions on technical matters, it was only necessary for Dr Misra to be a recipient of the information. The respondent argued:
… Disclosure of the confidential information to Dr Misra strikes a fair balance between your client’s interests in inspecting the information and our client’s interests in maintaining the confidentiality of the information and ensuring that it is not improperly used for purposes extraneous to this proceeding.
9 Secondly, any regime that permitted disclosure of the confidential technical information to Mr Cohen or to Mr Charkow posed an unacceptable risk of that information being used, subconsciously or inadvertently, to further the applicant’s commercial interests and position in the United Kingdom proceeding.
10 The applicant did not press for disclosure to Mr Cohen. It did, however, press for disclosure to Mr Charkow. The applicant explained:
… [D]isclosure to Dr Misra alone is insufficient to allow us to seek and our client to provide appropriate instructions in relation to this proceeding. At this time, our client can limit the required in-house counsel to Dr Misra and Mr Charkow. Mr Charkow has primary responsibility for the day to day conduct of this proceeding within Vringo, and provides us with instructions across all matters relevant to this proceeding. Within that broader framework, Dr Misra instructs us at a specialist technical level. The combination of Mr Charkow and Dr Misra is required to provide informed instructions.
11 In later correspondence, the applicant reiterated its position that the inclusion of Mr Charkow in the confidentiality regime is necessary. It described the roles of Mr Charkow and Dr Misra as “different and complementary”. The applicant argued:
Information relating to the technical features and functionality of your client’s products is highly relevant to the legal and strategic considerations connected with our client’s overall management of this proceeding. Mr Charkow has a primary responsibility for the latter. He will not be in a position to seek appropriate advice and provide informed instructions unless he has the benefit of being able to discuss the technical detail with Dr Misra and his external advisors.
12 It is in this position of stalemate that the applicant has pressed its claim to have Mr Charkow included in what is otherwise an agreed regime providing for the confidentiality of material emanating from the applicant and the respondent, respectively.
Relevant authority
13 A similar question was considered by Besanko J in AstraZeneca AB v Medis Pharma Pty Ltd [2014] FCA 549 in relation to a confidentiality regime which was sought to be extended to in-house legal advisers to the applicants who had commenced a proceeding for patent infringement against the respondent. His Honour summarised the background to that proceeding, as follows:
2 The parties anticipated that confidential information of the respondent would be disclosed during the proceeding, including the Common Technical Document Module 3 Quality for the generic esomeprazole capsule products proposed to be marketed by the respondent (“the Module”), and documents, samples or other information provided by the respondent, or its solicitors, relating to the respondent’s generic esomeprazole capsule products, over which the respondent claims confidentiality. They agreed a confidentiality regime, which was then embodied in an order of the Court made on 30 April 2014. The regime involved the specification of the persons who could receive the confidential information, subject to the execution of a written undertaking specified in a schedule to the order. The written undertaking was to be provided to the respondent’s solicitors. The group of persons entitled to receive the confidential information are defined in the order as the “Confidentiality Club”, and include partners, employees, and administrative and secretarial staff of the applicants’ solicitors, counsel and nominated experts, and their administrative and secretarial staff. At present, there is no-one within the Confidentiality Club from the applicants, including the person or persons responsible for providing instructions in this proceeding. The definition of the Confidentiality Club includes the following:
Any other person nominated by the Applicants, subject to obtaining the Respondent’s prior written consent, such consent not to be unreasonably withheld.
3 It is implicit in this provision that the Court would resolve any dispute between the parties as to the persons to be included in the Confidentiality Club and, in any event, the Court retains control over the confidentiality of documents.
14 As to the legal principles to be applied, his Honour said:
10 The relevant legal principles are as follows:
(1) The onus of establishing a claim for confidentiality is on the party making the claim: Alphapharm Pty Ltd v Lundbeck Australia Pty Ltd [2006] FCA 1358 (“Alphapharm v Lundbeck Australia”), at [17] per Lindgren J.
(2) The question of whether a claim for confidentiality should be upheld or refused involves a balancing exercise in which the competing considerations are the risk of inadvertent or accidental disclosure on the one hand, and the benefits of a party having access to relevant information so that appropriate advice can be given to the client and informed instructions received from the client, on the other: Conor Medsystems at [9] per Finkelstein J, referring to Warner Lambert Co. v Glaxo Laboratories Limited [1975] RPC 354, at 356 per Buckley LJ.
(3) In determining where the balance lies in a particular case, a number of matters are relevant, including the following:
(i) the nature and content of the confidential information: Mobil Oil Australia Ltd and Another v Guina Developments Pty Ltd and Another (1996) 33 IPR 82, at 87 88 per Hayne JA (as his Honour then was);
(ii) the extent to which, if the confidential information is disclosed to a particular person, that person will have occasion to use the information to further a party’s commercial interests: Conor Medsystems, at [15]; Alphapharm Pty Ltd v Lundbeck Australia, at [20]. In this context, involvement or lack of involvement in competitive decision making will be relevant. It will also be relevant to consider whether the person to whom it is proposed to disclose the information owes or may owe contractual, statutory or fiduciary duties to their principal in relation to competitive decisions: Luxottica Retail Australia Pty Ltd v Specsavers Pty Ltd (No 3) [2011] FCA 793, at [52] per Perram J;
(iii) the professional attributes of the persons to whom it is proposed to disclose the information and the extent to which they have participated in confidentiality clubs in the past: Conor Medsystems at [15]; Interpharma Pty Ltd v Commissioner of Patents [2008] FCA 1422 (“Interpharma v Commissioner of Patents”), at [4] [7] per Sundburg J;
(iv) the extent to which the Court can be satisfied that, if confidential information is released to a person, that person, or the organisation for which the person works, has in place a security system that will protect the confidentiality of the information: Interpharma v Commissioner of Patents, at [11] [12];
(v) undertakings given by the proposed recipient of the confidential information or the party seeking disclosure to meet any loss caused by inadvertent or accidental disclosure: Conor Medsystems at [15]; Interpharma v Commissioner of Patents, at [13];
(vi) although the above five matters are directed, primarily at least, to the risk of inadvertent or accidental disclosure of the confidential information and the likely loss if that occurs, on the other side of the equation, it is relevant to consider the extent to which a party’s ability to seek advice and provide instructions may be hampered if a claim for confidentiality is upheld. In this context, it is worth noting that a claim for confidentiality in relation to certain persons is not necessarily to be upheld because there is already one person able to seek advice and provide instructions. It may be appropriate for a number of people from within an organisation to have access to confidential information in order to seek appropriate advice and provide informed instructions, particularly in the case of a large organisation and complex litigation. Whether that is so or not depends on the outcome of weighing the relevant factors.
15 In the event, his Honour decided that three of the four nominees should be included in the Confidentiality Club. A significant factor informing that conclusion was the effect confidentiality orders would have on the applicant’s ability to seek appropriate advice and provide informed instructions: see at [12].
The respondent’s submissions
16 The gravamen of the respondent’s submissions is that extending the pool of recipients of the confidential technical information would lead to an increased risk of inadvertent disclosure, including in the parallel United Kingdom proceeding.
17 The respondent referred to the fact that the discovery to be given in this proceeding is different to the discovery given in the United Kingdom proceeding where, rather than discovering primary technical documents, a summary document on technical matters has been prepared and verified.
18 The prospect of such a document being provided in the present case was not raised when the question of discovery was argued before me on 25 February 2014. I do not know the precise issues in the United Kingdom proceeding. It may well be that different technical questions arise in each proceeding.
19 I proceed on the basis, therefore, that, although the same general subject matter may be involved, there is no necessary correlation between the scope of discovery to be given in this proceeding and the scope of discovery given in the United Kingdom proceeding, with the consequence that recipients of confidential technical information emanating from the respondent in this proceeding may well be privy to particular information that has not been disclosed, and will not be disclosed, in the United Kingdom proceeding. I also proceed on the basis that Mr Charkow is involved in both proceedings as a person accepting advice and giving instructions.
20 However, it is not suggested that the information in the United Kingdom proceeding is inconsistent with the confidential technical information that will be disclosed under the agreed regime, where that information concerns the same technical subject matter, or that the confidential technical information will fill gaps in the verified information provided in the United Kingdom proceeding. To argue otherwise would be to suggest that the information provided in the United Kingdom proceeding is, as a matter of substance, incomplete or deficient, and perhaps misleading, with respect to the same subject matter. Therefore, I understand the focus of the respondent’s concerns to be the inadvertent disclosure of confidential technical information that is extraneous or superfluous to the issues to be decided in the United Kingdom proceeding.
21 The respondent submitted that the non-inclusion of Mr Charkow in the confidentiality regime would not prohibit Dr Misra communicating with Mr Charkow on technical matters that are already public knowledge. In this connection, the respondent referred to the fact that the applicant had already formed the view that the accused products infringe certain claims of the respective patents and that, based on his own analysis of the technical information in the discovered documents, Dr Misra would be able to confirm or correct that view in communications with Mr Charkow, without disclosing the confidential technical information itself.
Consideration
22 I am not persuaded that the inclusion of Mr Charkow as a permitted recipient of documents and information within the confidentiality regime will lead to any significantly increased risk of inadvertent disclosure of confidential information. The confidentiality regime is very prescriptive. There is no dispute about the fact that Mr Charkow is an experienced litigator who has previously participated in such regimes. There is no reason to doubt that, as an experienced litigator, Mr Charkow will be acutely aware of the particular requirements that the regime places on recipients of protected information. There is no reason to doubt that Mr Charkow will be also acutely aware that information emanating from the respondent as a result of its disclosure obligations in this proceeding, can only be used for the purpose of this proceeding. I have no reason to doubt that Mr Charkow will bring that awareness to bear when dealing with information – and, in particular, the respondent’s confidential technical information – received pursuant to the regime. His training and practical experience as a lawyer will equip him to do so.
23 It is not suggested that Mr Charkow has any involvement in the commercial or technical aspects of the applicant’s business, beyond his role as legal adviser on intellectual property matters. He does, however, have primary responsibility for the day-to-day conduct of this proceeding on behalf of the applicant. I am persuaded that, in undertaking that role, it is highly likely that he will not be in a position to seek appropriate advice or provide informed instructions unless he has appropriate access to such technical information as he might require, including from the respondent’s discovered documents, as well as the freedom to discuss such information with Dr Misra and the applicant’s external advisers. I do not accept that his role can be adequately performed in the way suggested by the respondent, with Mr Charkow simply being the recipient of publicly-known information or the beneficiary of conclusions reached by Dr Misra.
24 In my view, the exclusion of Mr Charkow from more informed knowledge would be an unwarranted fetter on the applicant’s ability to conduct this proceeding. This exclusion would result in significant prejudice to the applicant, without any real corresponding benefit to the respondent so far as concerns the protection of confidential information, bearing in mind the strict limitations placed upon the recipients of documents and information by the confidentiality regime itself.
25 Dr Misra should be free to discuss technical matters with Mr Charkow without the concern that, in doing so, he might be in breach of his own confidentiality obligations to the Court and to the respondent. Correspondingly, these communications should be subject to the restrictions of the confidentiality regime which will allow Mr Charkow to receive advice and give instructions on a fully-informed basis, within a circle of participants subject to the same obligations of confidentiality.
Disposition
26 For these reasons, I will order that Mr Charkow be a permitted recipient of information within the confidentiality regime proposed by the parties and reflected in the general confidentiality order I will make.
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I certify that the preceding twenty-six (26) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Yates. |
Associate:
