Conor Medsystems, Inc. v The University of British Columbia

REASONS FOR JUDGMENT 1 It was once a fundamental principle that a party could not be ordered to produce a document unless he (or she) had directly or indirectly admitted it to be in his possession and that it was relevant: Daniell's Chancery Practice (7th ed, 1901) 1565; Storey v Lennox (1836) 1 Keen 341. A party's oath that a particular document was irrelevant (which would include an indirect statement imputed from the omission of a document from an affidavit of documents) was conclusive unless the court was reasonably satisfied from certain definite sources that the party had in his possession other relevant documents: Lyell v Kennedy (1884) 27 Ch D 1, 20. The sources to which the court could turn were the affidavit of documents itself (Hall v Truman, Hanbury, & Co (1885) 29 Ch D 307, 319), a document referred to in the affidavit (Lyell v Kennedy), the pleadings (Jones v Monte Video Gas Co (1880) 5 QBD 556) and documents referred to in answers to interrogatories. British Association of Glass Bottle Manufacturers, Limited v Nettlefold [1912] 1 KB 369 extended the sources to include any that contained an admission of the existence of a discoverable document. 2 Generally speaking, it was not possible to file a contentious affidavit to show that a party had not discovered all relevant documents: Compagnie Financiere et Commerciale du Pacifique v Peruvian Guano Company (1882) 11 QBD 55, 61. The only remedy which a party had in order to show that an adversary's affidavit of documents was deficient was to obtain leave to administer interrogatories for that purposes: Jones v Monte Video Gas Co (1880) 5 QBD 556, 558; Newall v Telegraph Construction Company (1866) LR 2 Eq 756. The circumstances in which leave to administer interrogatories would be allowed were considered in Hall v Truman, Hanbury, & Co (1885) 29 Ch D 307. When the court was satisfied that a party might have other relevant documents, it could order a further affidavit confined to the particular documents believed to have been omitted (Vyse v Foster (1872) LR 13 Eq 602) or a further general affidavit (Saull v Browne (1874) LR 17 Eq 402). 3 To relax the conclusiveness of the affidavit of documents a rule was introduced allowing the court to order specific discovery by requiring a party to state whether one or more specified documents are or have been in his possession or power: White v Spaffard & Co [1901] 2 KB 241; Weir v Greening [1957] VR 296, 298. In the Federal Court the rule is O 15, r 8. The requirements to be met by a party applying for particular discovery were considered in Beecham Group Ltd v Bristol-Myers Co [1979] VR 273, 278-282. In substance, to justify the making of an order the party applying must identify the document in issue and satisfy the court that there is a "reasonable ground for being fairly certain" that the document is relevant and is (or has been) in his opponent's possession. 4 The issue here is whether the applicant should make particular discovery in relation to its claim of insufficiency, one of the grounds upon which the validity of the patents in suit are challenged. The sufficiency of a patent (as to which see s 40(2)(a)) is a pure question of fact in respect of which there may be discovery (F Hoffman-La Roche AG v Chiron Corporation (2000)171 ALR 295, 299). The question to be answered is whether "the disclosure [will] enable the addressee of the specification to produce something within each claim without new inventions or additions or prolonged study of matters presenting initial difficulty": Kimberly-Clark Australia Pty Ltd v Arico Trading International Pty Ltd (2001) 207 CLR 1, 17. There is some uncertainty regarding the date at which sufficiency is to be determined. According to Blanco White's Patents for Inventions (1983)at [4-508] it is the date of the publication of the specification. On the other hand in Pfizer-Overseas Pharmaceuticals v Eli Lilly and Co [2005] FCAFC 224, [328] the Full Federal Court decided that sufficiency should be assessed in light of the common general knowledge and the art immediately before the priority date. The priority dates of the patents in suit are 19 July 1993. 5 The present application has come about in the following way. The applicant has developed (outside Australia) and sells (outside Australia) a stent, known as "the CoStar stent" which the respondents contend, if it were to be manufactured and sold in Australia, would fall within several claims of one or more of the patents in suit. On that basis the respondents assert that it is likely that documents describing the development of the CoStar stent will bear on the sufficiency of the patents in suit. In particular they contend that it is relevant to know whether the applicant produced a prototype of the CoStar stent "without undue experimentation or inventive ingenuity" and that this information may be gathered from reports that relate to the research, development or experimental work leading to the production of a workable prototype of the CoStar stent. Particular discovery is sought of these documents. 6 The applicant has tendered evidence that it did not rely on the patents in suit to design the CoStar stent. Mr Shanley, Chief Technical Officer and a director of the Applicant, described in detail the process of research and experimentation leading up to the CoStar stent prototype. He said that "[n]either the Respondent's Patents or the [Respondent's stent] could have assisted our development effort." Mr Litvack, the Applicant's CEO, said "we did not obtain our first sample of the [Respondent's stent] until 2003, after we had independently designed our product and were already in human clinical trials." Moreover, the Applicant says that since its stent was developed in 2002, as the relevant date for testing sufficiency is the priority date (19 July 1993), the documents which are sought to be produced would be at least six years old and so could not possibly be relevant. The applicant also says that the substantial time and expense involved in locating and examining the documents would be disproportionate to any benefit that might be gained from their production. 7 That the applicant may not have copied the respondents' patents is important but not determinative of the issue. I think that Ms Howard is correct when she says that the nature of the work undertaken by the applicant in developing its own prototype stent may (and I emphasis the word "may") be relevant to what work would be required by a person skilled in the art to make something within the claims. The relevance of the work (if it be relevant at all) in large measure will be dependent upon the respondents establishing, first, similarity between the CoStar stent and the stent the subject of the patents in suit and, second, that the state of knowledge of the relevantly skilled person was the same in the United States (where the applicant's work was undertaken) as it was in Australia at the priority dates. I have no means of knowing whether these propositions will be established. In any event, they are matters that cannot easily be determined on an application for particular discovery. 8 I am also not much persuaded by the applicant's points relating to time and expense. The first does not deny relevance, though it does cast some doubt on the utility of the exercise. The second goes against the applicant. 9 The position I have reached is this. I am neither satisfied that the applicant has nor that it does not have in its possession documents which bear on sufficiency. But I suspect that the applicant may not have undertaken a sufficiently thorough examination of the documents that are in its possession to determine whether any might bear on sufficiency. This suspicion is based on the applicant's evidence about the time and expense involved in making further discovery. This suggests to me that nothing along these lines has been done thus far. There is therefore the possibility that the applicant has not made proper discovery. 10 In these circumstances it is appropriate that there be an order for particular discovery. The order that best meets the circumstances of this case is one that requires the applicant to file an affidavit in which it states either that it has no documents in its possession that relate to the issue of sufficiency, or, if it does (or did) have such documents, to identify the documents so that (if available) they may be inspected. I certify that the preceding ten (10) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Finkelstein.