CONCLUSIONS ON THE RESPONDENT'S MOTION
10 Reference should be made to the authorities in this area, to which attention was drawn in argument.
11 In Warner-Lambert Co v Glaxo Laboratories Limited (1975) RPC 354, the English Court of Appeal considered the extent and conditions of discovery relating to confidential information in patent proceedings. The defendants had given discovery of their process of manufacture to the plaintiffs' counsel, solicitor, patent agent and an expert, on their undertaking not to divulge this information to any others (including the plaintiffs themselves) and further not to use such information except for the purposes of the action. The defendants were further willing to include, among those persons, another expert appointed by the plaintiffs in the U.K. However, the plaintiffs required disclosure to be given, in addition, to (1) their chief executive (2) their general counsel in the U.S.A., (3) their patent counsel in the U.S.A. and (4) an Italian scientist resident and employed by them in Italy.
12 It was held (as the headnote indicates) - (1) the governing principle was that the court should resolve the conflict of interests of the parties by ordering a controlled measure of discovery to selected individuals upon terms ensuring that there should neither be use nor further disclosure of the confidential information to the prejudice of the defendants, and yet so that the plaintiffs would have a free full degree of disclosure as would be consistent with adequate protection of any trade secret of the alleged infringer; the authorities did not purport to lay down a form of universal order in such circumstances, nor did they indicate that the court might not in appropriate circumstances at a later stage in the action, direct disclosure to a wider class of persons or on a different basis; and that the court must in each case decide what measure of disclosure was appropriate, to whom it should be made and on what terms that disclosure should be given; (2) although parties to litigation were generally entitled fully to know what had been disclosed to their legal and technical advisers, so as to be able to make judgments of their own, this principle must be subject to modification if trade secrets are to be protected, and in appropriate circumstances the court may even be justified in wholly excluding disclosure of secret material from a particular party; (3) as the defendants' process was such that it was impossible to ascertain from the end-product itself which of a number of possible chemical processes had been used in its manufacture, and having regard also to the fact that it was virtually impossible to police any terms imposed upon the disclosure asked for by the plaintiffs, further conditional disclosure should only be given to the plaintiffs' chief executive.
13 Buckley LJ (with the agreement of Russell LJ and Orr LJ) said (at 360 - 361):
"The plaintiff in the present case, being a corporate body, can only acquire knowledge and make decisions by living agents. Its legal and expert advisers are for the relevant purpose its agents to acquire knowledge but they are not authorised to make any major decisions on the company's behalf such as, for instance, a decision whether to continue to abandon the action. Such a decision should be made by the company, not by its legal advisers, and still less by its scientific advisers. It must be made by a duly authorised officer or agent or body of agents such as a managing director or the board of directors of the company. We do not know whether Mr. Burke Giblin, the principal executive officer of the plaintiff company, has sufficient technical knowledge to enable him to understand the niceties of the technical information which has been disclosed in the present case. It may be that he has not, but Mr. Gratwick for the plaintiff company has stated that he finds himself unable to advise Mr. Burke Giblin in any helpful and intelligible sense without either expressly or by implication disclosing the nature of that technical information. In these circumstances I for my part do not consider that it would be right to refuse to let Mr. Burke Giblin know the information. If, however, it is to be disclosed to him, this should, in my judgment, be on terms that he will not disclose it to anyone else without the consent of the defendant or by the leave of the court.
I do not consider, however, that at present, at any rate, disclosure should be made to anyone else. The legal issues which arise are questions of English law. The plaintiff company has English legal advisers of the highest calibre, who by the disclosure already made have full knowledge of the facts. On the patent aspects of the case and the technical issues involved, there will be available to Mr Burke Giblin the advice of the plaintiff company's English patent agent and of one or more nominated scientific experts in this country, all of whom also enjoy or will enjoy full disclosure of the relevant information. If disclosure is to be made to Mr. Burke Giblin himself, there could of course be no objection to his consulting with, and obtaining advice from, any of these advisers. In this way it seems to me that the plaintiff company will have available to it fully adequate means of obtaining technical and professional advice. I do not wish in any way to disparage the distinction or ability of the plaintiff's legal advisers in the United States of America, but they are not qualified experts in the field of United Kingdom patent law. Nor do I in the least question the value of Dr. Arpesella's knowledge, which seems to be extensive, of the process covered by the two patents in suit, but for reasons which seemed good to the learned Judge and with which I agree, connected with the absence of any patent protection in Italy, I do not think that it would be right to order disclosure to Dr. Arpesella.
No satisfactory sanction has been suggested to which recourse could be had if any of the persons to whom disclosure is sought were to fail faithfully to observe any term or undertaking to maintain confidentiality."
14 Warner-Lambert was followed and applied in this country in Ex parte Fielder Gillespie Limited (1984) 2 QdR 339 at 341; in Magellan Petroleum Australia Limited v Sagasco Amadeus Pty Ltd (1994) 2 QdR 37 at 38 - 39; and in Mackay Sugar Co-Operative Association Limited v CSR Limited (1996) 63 FCR 408 at 412 - 413. It was, however, distinguished in Décor Corporation Pty Ltd v Australian Housewares Pty Ltd, 26 October 1998, Sundberg J, unreported (see below).
15 After Warner-Lambert was decided, in Harman v Secretary of State for the Home Department [1983] 1 AC 280, Lord Keith observed (at 308) that discovery forms part of English legal procedure -
"… because the public interest in securing that justice is done between parties is considered to outweigh the private and public interest in the maintenance of confidentiality. But the process should not be allowed to place upon the litigant any harsher or more oppressive burden than is strictly required for the purpose of securing that justice is done."
16 Whilst the general principle stated in Harman has always been accepted in Australia, experience has shown that, in some contexts, its application can be difficult.
17 Thus, in Re Palmer Tube Mills Limited, 10 December 1991, unreported, Lockhart J ordered that a lawyer, who was the partner in charge of the case and also a non-executive director of certain companies, be included in those having conditional access to confidential documents or confidential information. Lockhart J, however, refused access in the case of another lawyer, Mr Rogers, who had commercial interests. His Honour said (at pars 9 - 10):
"9. …. But Mr Rogers is a non-executive director of the three applicants in the case; he is a shareholder in the first applicant and he … has a very good working knowledge of the applicants' business and of the steel tube and pipe industry generally. Mr Rogers is one of the principals of a company, InterFinancial Limited, for whom he works and devotes a large amount of his time. One of the principal clients of that company is one or more of the applicants. The advice which is given by Interfinancial Limited and therefore by Mr Rogers to and in relation to the applicants is on corporate matters which go obviously to the heart of their business and its planning and strategy.
10. Mr Rogers … sets out problems that would arise if confidential documents are not exposed to him in the case and it is obvious to me that he would respect whatever flows from a person having access to confidential documents. But I feel that Mr Rogers' involvement through the directorships of the applicants and through his involvement with Interfinancial Limited and its close link to the applicants is such, in the light of the issues of this case and the parties to this case, that it would not be right that he is included in the category of persons to whom confidential documents may be exposed. Not only do I think that would be not right in itself, but also within the broad but nevertheless still wise maxim that justice must not only be done but appear to be done, it would not give the respondents confidence in the integrity of those who advised the applicants if Mr Rogers were to have access to documents of the kind which I have described. Nor would the community feel any such confidence. That, I think, is an important consideration. I also think that it would not be fair to Mr Rogers himself to allow him to be placed in this position of access to confidential documents. It would put him, I think, in a thoroughly invidious position and I would not like to see him exposed to that and the risks which might flow from it. I emphasise again that I do not suggest for a moment that, if Mr Rogers had access to the documents, he would not do other than respect the orders that would be made for confidentiality. Nor is it suggested that he would not do so."
18 In Mobil Oil Australia Ltd v Guina Developments Pty Ltd (1995) 33 IPR 82, a case, as here, of parties operating in the trade, Hayne JA (with the agreement of Winneke P and Phillips JA) cited Harman (at 86) and went on to say (at 88 - 89):
"It is now commonplace in the courts for material to be made available only to the legal advisers of the parties and nominated experts. Of course such arrangements bring with them their own difficulties and are arrangements that should be adopted only where there is a need to do so; of course they are arrangements that may need to be reviewed as the matter progresses towards trial or as the trial itself proceeds. But they are arrangements that are made and should be made when doing so would strike a fair balance between the completing interests of the party seeking inspection and the party claiming confidentiality. No more specific rule can be laid down - each case will fall for determination, according to its own facts. In particular the nature and the content of the disputed documents is a matter that will usually, if not invariably, be of great importance in forming a conclusion and, if that is so, it will be appropriate for the judge to inspect the documents concerned."