Re Astrazeneca AB

• Jurisdiction: Ireland
• Judge: Mr. Justice Barrett
• Judgment Date: 01 April 2014
• Neutral Citation: [2014] IEHC 189
• Court: High Court
• Date: 01 April 2014

Irish Patent Number EP 1085877, In re

IN THE MATTER OF IRISH PATENT NUMBER EP 1085877 FILED ON THE 10 TH DAY OF JUNE 1999 AND REGISTERED IN THE NAME OF ASTRAZENECA AB IN RESPECT OF AN ALLEGED INVENTION FOR "USE OF A COMPOSITION COMPRISING FORMOTEROL AND BUDESONIDE FOR THE PREVENTION OR TREATMENT OF AN ACUTE CONDITION OF ASTHMA"

AND

IN THE MATTER OF THE PATENTS ACT 1992 AND THE PATENTS (AMENDMENT) ACT 2006

[2014] IEHC 189

[No. 1 PAP/2013]

THE HIGH COURT

Practice & Procedure – Disclosure – Relevance – Proportionality – Litigious Advantage – Patent – Rules of the Superior Courts 1986 .

Facts: This judgment was one of an overall set of proceedings regarding the validity of an Irish patent granted for an asthma drug. In these particular proceedings the petitioner, pursuant to Order 31, Rule 12 of the Rules of the Superior Courts 1986, made an application for discovery of five categories of documents.

Held by Barrett J, that first category of documents should be disclosed with a time constraint as the petitioner was able to show why the documentation may be relevant. As regards the second category of documents these would also be disclosed as again the petitioner was able to show that they may be of relevance. However, Justice Barrett narrowed the scope of disclosure from this category in order to comply with the principle of proportionality. The documents in Category 3 were ordered to be disclosed without any constraints as the standard of disclosure was met while those of Category 4 were disclosed with a time constraint as Barrett J held that if the documents weren"t disclosed this would result in 'a classic litigation disadvantage.' Disclosure of the documents in Category 5 was refused on the basis that these may be disclosed in the previous categories and, even if they aren"t, an order of disclosure during these proceedings would have been premature.

RSC O.31 r12

P J CARROLL & CO & ORS v MIN FOR HEALTH & ORS UNREP KELLY 9.12.2005 2005/50/10582 2005 IEHC 432

MEDTRONIC INC & ORS v GUIDANT CORPORATION & ORS UNREP KELLY 23.2.2007 2009/39/8203 2007 IEHC 37

SCHNEIDER (EUROPE) GMBH v CONOR MEDSYSTEMS IRELAND LTD 2007 2 ILRM 300 2007/55/11697 2007 IEHC 63

FRAMUS LTD & ORS v CRH PLC & ORS 2004 2 IR 20 2004 2 ILRM 439 2004/18/4116 2004 IESC 25

RYANAIR PLC v AER RIANTA CPT 2003 4 IR 264 2004 1 ILRM 241 2003/46/11374

COMPAGNIE FINANCIERE ET COMMERCIALE DU PACIFIQUE v PERUVIAN GUANO CO 1882 11 QBD 55

AQUATECHNOLOGIE LTD v NATIONAL STANDARDS AUTHORITY OF IRELAND (NSAI) & ORS UNREP SUPREME 10.7.2000 2000/1/209 2000 IESC 64

HANNON v CMSR PUBLIC WORKS UNREP MCCRACKEN 4.4.2001 2001/11/3168 2001 IEHC 59

MEDINOL LTD v ABBOTT IRELAND & ORS UNREP FINLAY GEOGHEGAN 19.1.2010 2010/33/8372 2010 IEHC 6

COOPER FLYNN v RADIO TELEFIS EIREANN & ORS 2000 3 IR 344 2001 1 ILRM 208 2000/4/1394

TAYLOR v ANDERTON (POLICE COMPLAINTS AUTHORITY INTERVENING) 1995 2 AER 420 1995 1 WLR 447

Facts

1 1. This is an application for discovery made in the context of proceedings that are concerned with the alleged invalidity of an Irish patent granted in respect of an asthma treatment drug. Specifically the petitioner in these proceedings is seeking an order pursuant to Order 31, Rule 12 of the Rules of the Superior Courts, 1986, as amended, directing the respondent to make discovery of various specified documents.

Discovery in Ireland and England

2 2. A distinct feature of the proceedings to which the present application for discovery relates is that almost equivalent proceedings will soon be adjudicated upon in England. Indeed the English court of trial will have regard to substantially the same pleadings as arise in the present case. Moreover, the jurisprudence by which the English proceedings will be decided is substantially the same as that which will apply in the Irish proceedings when these proceedings come to trial. However, there is at least one significant difference between the two sets of proceedings: the rules of discovery in England and Ireland are not the same. Though they are directed to a common end, which is to advance the interests of a fair and proper determination of a hearing between the parties, the Irish rules appear more liberal in terms of what may be discovered.

3 3. Despite the fact that the present proceedings have been commenced in Ireland before an Irish court, concern matters of Irish law and are subject to the Irish rules of discovery, the respondent has nonetheless suggested that to save time, cost, and avoid conflicts of evidence between the two sets of proceedings, it would be practical and sensible to confine the discovery process to what has been obtained in England. Thus, it has been suggested in correspondence by the respondent's solicitors that:

"We see no reason why your client should depart from its position in England for these proceedings, or use this jurisdiction to seek to obtain more discovery here than it believes is necessary...in England. This jurisdiction should not be used as some sort of haven for discovery."

4 4. It might perhaps be contended that there is at least one entirely legitimate reason why the petitioner would depart from its position in England, namely that in coming before this Court the petitioner is no longer in England. The present proceedings have been brought in a separate jurisdiction with its own laws, rules and traditions. The notion that to invoke Irish laws and rules in proceedings before the Irish courts is to use Ireland as a "haven for discovery" is not one with which this Court concurs. While it would of course be open to the petitioner to agree to a suggestion such as that which was made by the respondent, it has elected, and is entitled, not to do so.

Principles to be applied

5 5. Before considering whether or not to allow the discovery sought, it is helpful to assess briefly the applicable jurisprudence. An expansive consideration is not required as there is already a comprehensive excursus on the relevant issues in the judgments of Kelly J. in P.J. Carroll and Co. v. Minister for Health and Children [2005] IEHC 432 and Medtronic Inc. & Others v. Guidant Corporation and Others [2007] IEHC 37 and the judgment of Finlay Geoghegan J. in Schneider (Europe) GmbH v. Conor Medsystems Ireland Ltd. [2007] 2 I.L.R.M. 300.

6 6. In essence, Order 31, Rule 12 of the Rules of the Superior Courts requires that an applicant for discovery demonstrate that the documents sought are both relevant and necessary, with Murray J. noting in Framus v CRH plc [2004] 2 I.R. 20 at p. 38, that:

"[T]he primary test is whether the documents are relevant to the issues between the parties. Once that is established it will follow in most cases that their discovery is necessary for the fair disposal of those issues."

7 7. What was described by Fennelly J. in Ryanair p.l.c. v. Aer Rianta c.p.t. [2003] 4 I.R. 264 at 275 as "the universally accepted test of what is the primary requirement for discovery, namely the relevance of the documents sought" received its classic expression in Compagnie Financiere du Pacifique v. Peruvian Guano Co. (1882) 11 Q.B.D. 55, a decision of the English High Court, in which Brett L.J., at p. 63, indicated to be discoverable any documents that:

" may - not which must - either directly or indirectly enable the party requiring the affidavit either to advance his own case or to damage the case of his adversary". [Emphasis added].

8 8. In the Supreme Court decision in Aquatechnologie v N.S.A.I. [2000] IESC 64 at para. 24, Murray J. likewise indicated that an applicant for discovery:

"must show it is reasonable for the court to suppose that the documents contain information which may enable the applicant to advance his own case or to damage the case of his adversary". [Emphasis added].

9 9. There have been occasional discordant notes in the general 'may, not must' thrust of the applicable jurisprudence. Thus, in Hannon v Commissioner of Public Works [2001] IEHC 59, McCracken J., having referred, at para. 3, with approval to the Peruvian Guano case, noted, at para. 6, that inter alia:

"The...