Aktiebolaget Hassle and Astrazeneca Ltd v Novartis NZ Ltd

O’Regan J, High Court, Auckland, CP51-SL-03, 17 November 2003

This decision relates to three interlocutory applications made in the course of a pharmaceutical patent litigation. 

Application by plaintiff for inspection of defendant’s confidential documents

The plaintiffs sought inspection of documents that had been supplied by the defendant to New Zealand health officials for the purpose of obtaining approval for distribution of a certain pharmaceutical.  Disclosure of the documents was sought to be made to an employee of the second plaintiff (a non-manufacturing New Zealand company in the Astrazeneca group of companies) and to a Swedish patent attorney engaged by the Astrazeneca Group, Mr Carl Engholm. 

The defendant claimed that the documents had been obtained from the manufacturer of the relevant pharmaceutical and that they were held subject to an obligation to maintain the documents’ confidentiality. 

The judge had to determine whether the interests of the pharmaceutical manufacturer in maintaining confidentiality outweighed the normal requirement for full discovery.  Over 4,000 documents were involved and, although it was clear that not all the information was confidential, there was no guidance before the Court as to what proportion of these documents were in fact confidential. 

The judge found that:

(a)  He was not satisfied that disclosure to an employee of the Astrazeneca Group was warranted;

(b)  Disclosure to an appropriate independent expert was required in order to review and assess the contents of the documents;

(c)  If such a review suggested that disclosure of a limited portion of the documents to an employee of the Astrazeneca Group was required, then a further application to the Court could be made;

(d)  The plaintiffs were entitled to select the independent expert of their choice, provided that disclosure to the expert would not effectively be disclosure to Astrazeneca;

(e)  Disclosure to Mr Engholm would be ordered subject to Mr Engholm providing an affidavit establishing his independence, and assuring the Court that disclosure to him would not lead to disclosure to Astrazeneca Group.  A confidentiality undertaking was also required. 

Further and better discovery

The defendant sought discovery of various documents from litigation involving equivalent patents in Australia, UK and USA.  It was ruled that those documents were not relevant to the New Zealand proceedings as those proceedings involved only infringement issues whereas the foreign documents were relevant to validity only. 

The defendant also sought discovery of various internal correspondence documents relating to the amendment of the patent prior to its grant.  The defendant argued that these documents showed how the applicant plaintiff interpreted the patent.  The judge refused to order such discovery holding that evidence of an applicant’s intentions as to interpretation of a patent is not relevant to interpretation from the viewpoint of the nominal skilled addressee. 

Timetabling

The judge altered the timetable laid down for the filing of evidence in order to keep the New Zealand proceeding in line with the equivalent proceedings on foot in Australia.  The judge expressed disappointment and surprise that the Australian timetable was allowed to be amended by Australian counsel without consideration of the impact of that change on the New Zealand proceedings.