FEDERAL COURT OF AUSTRALIA

Arrow Pharmaceuticals Limited v Merck & Co Inc. [2004] FCA 983

ARROW PHARMACEUTICALS LIMITED v MERCK & CO INC.

N 1211 OF 2002

GYLES J

10 JUNE 2004

SYDNEY

THE COURT ORDERS THAT:

The respondent produce the document numbered 6957 in Schedule 1 Part 2 of the respondent’s list of documents certified on 9 October 2003.

Note:    Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.

REASONS FOR RULING

1                     An application was made this morning for leave to file a motion, returnable instanter, to raise issues as to the completeness of discovery, and in particular as to claims for privilege in relation to certain documents.  At my invitation counsel for the applicant identified a series of particular documents.  I in turn indicated to counsel for the respondent that the most sensible way forward was for such of those documents as I thought may have raised any question at all to be isolated and reviewed by their side.

2                     As a result of that process it seems to me that there are only two documents that might call for any review of the situation.  The first is an email of 18 August 1996.  In relation to that document however it is really a question of whether or not it has been otherwise disclosed and I do not say any more about that at the moment.

3                     The other is document 6957 which was described in the privilege log as a communication for the purpose of rendering legal advice regarding patent issues.  When the document was reviewed it was put rather on the basis that it would disclose legal advice.  It is the fact that one of the recipients of the document is Anthony Sabatelli who was employed in the patent department of Merck and is a member of the Bar as well as a patent attorney and who was by then, I know from other evidence, involved in consideration as to patentability.  The other recipients as far as I can tell, have all been identified, and certainly most of them are not lawyers, but are either on the marketing side or the technical side of the company.

4                     Whilst reference is made in the document to patentability and some views are expressed about that, in my opinion those views do not, on their face, record or disclose any legal advice.  Rather the document is a consideration of some practical steps that might be taken to advance the cause.  Counsel for the respondent has made it quite clear that the claim of privilege is maintained.  There is no concession made and I rule, contrary to that submission, that the document is not entitled to legal professional privilege.  I have taken into account in making that decision not simply the authorities in this country, but also have had in mind the United States authority which the expert evidence considered on the application in relation to the earlier privilege question which was argued. 

Associate:

Dated:              30 July 2004