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IN
THE SUPREME COURT OF JUDICATURE
CHPCI
98/0145/3
IN
THE COURT OF APPEAL (CIVIL DIVISION)
ON
APPEAL FROM CHANCERY DIVISION (Patents Court)
(MR
JUSTICE LADDIE)
Royal
Courts of Justice
Strand
London
WC2
Tuesday
19 May 1998
B
e f o r e:
LORD
JUSTICE ROCH
LORD
JUSTICE ALDOUS
-
- - - - -
VISX
INCORPORATED
Plaintiff/Respondent
-
v -
NIDEX
CO
BIRMINGHAM
OPTICAL GROUP LIMITED
OPTIMAX
LASER EYE CLINICS (A FIRM)
Defendant/Appellant
-
- - - - -
(Transcript
of the handed-down Judgment of
Smith
Bernal Reporting Limited, 180 Fleet Street,
London
EC4A 2HD
Tel:
0171 421 4040
Official
Shorthand Writers to the Court)
-
- - - - -
MR
R ARNOLD
(Instructed by Messrs Rowe & Maw, London EC4V 6HD) appeared on behalf of
the First Defendants/Appellants.
MR
A BOYLE QC
and
MR
J TURNER
(Instructed by Messrs Lovell White Durrant, London EC1A 2DY) appeared on behalf
of the Plaintiffs/Respondents
-
- - - - -
J
U D G M E N T
(As
approved by the Court)
-
- - - - -
©Crown
Copyright
JUDGMENT
LORD
JUSTICE ALDOUS:
The
appeals before us are against judgments of Laddie J dated 27 January l998 and
l0 March l998 in which he refused the first defendant’s application to
amend their pleadings and rejected the plaintiff's claim to privilege in
respect of transcripts of depositions and answers to interrogations produced in
US Interference proceedings.
The
action is a patent action in which the plaintiff, Visx Incorporated, alleges
infringement of EP 0151869 (869) and EP 0207648 (648). They relate to
inventions for apparatus for performing ophthalmological surgery.
The
inventor of 869 was Dr L'Esperance. It claims priority from a US application
filed on l7 December l983. The inventor of patent 648 is named as the
plaintiff. It also claims priority from a US application which was filed on 6
June l985.
At
the time when the invention of patent 869 was made Dr L'Esperance was working
in the same department at Columbia University as a Dr Trokel. In l989 Dr
Trokel commenced Interference proceedings against Dr L'Esperance claiming that
he had the prior right to patent the invention of 869.
In
the UK, patents rights stem from the date of filing, in this case the date of
filing in the US. In the USA the first to invent is entitled to priority over
other persons who claim to have made the same invention. Any publication by an
applicant within a year prior to his application does not invalidate his patent
in that country. The difference in the law in the US and UK can create
difficulty for US inventors and it may have done in this case. To succeed in
the US Interference proceedings, the parties needed to prove early reduction to
practise which could be done by establishing prior use or disclosure; whereas
proof of disclosure prior to the date of application could invalidate any
European patent that was obtained claiming priority for the US application.
As
part of the Interference proceedings, depositions were taken by both sides.
They were due to be filed at the US Patent Office and when filed would have
been open for inspection by the public. Before that happened, the proceedings
were settled and the right to 869 became vested in the plaintiff. The
depositions were not filed and therefore they were not made available to the
public. However, some documents were filed at the US Patent Office and copies
were obtained by the first defendant in this action. The information in them
has been used by the first defendant to formulate and plead invalidity attacks
based on prior disclosure.
The
plaintiff is seeking to enforce in other countries patent rights corresponding
to those, the subject of this action. In Canada the first defendant in this
action is also a defendant. In that country the depositions and the answers to
the interrogations have been disclosed on discovery, but the first defendant is
precluded from making use of the information in them, save for the purpose of
those proceedings, in the same way that a litigant in this country is precluded
from using documents disclosed on discovery save for the purpose of the action.
The
first defendant in their Particulars of Objection pleaded disclosures which
they say invalidated the patents. At the end of last year they sought to amend
their Particulars of Objection by adding nine further particulars of prior
disclosures using information in the published documents which had been filed
in the US Patent Office in the Interference proceedings. The plaintiffs
objected to the amendments upon the ground that the details given did not
comply with the requirements of O.104 r.6. That submission was accepted by the
Judge. In his judgment of 27 January l988 he said:
"In
support of his submission that getting the pleadings right first is the correct
approach, Mr Turner referred me to
Avery
Ltd v Ashworth, Son & Co Ltd
32 RPC 560 and
Intalight
International NV v Cellular Ceilings Ltd (No 1)
(1987) RPC 532. Both of those cases can be distinguished on the facts, but
with some reluctance I accept that they do appear to suggest that the proper
course is for the pleadings to be properly drafted first and for discovery to
follow on from them. Therefore he is entitled to complain that these pleadings
do not meet the requirements of the rules and should not be allowed to go
forward simply as a vehicle for justifying wider discovery. This is a matter
which may be of some significance because it may well be that the material
currently in the plaintiff's possession in the United States proceedings
disclosed prior users or prior oral disclosures which would invalidate the
patent in suit. It would be most unfortunate if a patent which is invalid is
allowed to stay on the patent register if such material exists and is known to
the plaintiff."
The
Judge gave leave to appeal and the first appeal before the Court is against
that judgment.
In
patent actions, discovery is limited to documents coming into existence during
a particular period, commonly called "the window". In the present case the
Judge widened the window anticipating that at least certain of the depositions
taken in the Interference proceedings would be disclosed as being relevant to
the pleaded grounds of attack. The plaintiff accepted that a number of
depositions and answers to the interrogatories by Dr Trokel were relevant and
included them in a list of documents, but claimed they were privileged. That
claim was disputed by the first defendant and therefore the Judge had to decide
whether the claim to privilege was justified. He held in a judgment, delivered
on l0 March l998, that the depositions were not privileged and in any case any
privilege there might have been had been waived. He refused leave to appeal.
The plaintiff applied to this Court for leave. I ordered the application to be
listed to be heard at the same time as the first defendant’s appeal, with
the appeal to follow if leave was given. At the outset of the hearing before
us this Court gave leave to appeal. The plaintiff's appeal against the
judgment of l0 March l998 is the second appeal before us.
At
the conclusion of the hearing of the appeals, judgment was reserved, but the
parties were told that the appeal against the refusal to allow the amendments
would be allowed, save in respect of two of the particulars, and that the
appeal by the plaintiff against the Judge's order refusing the claim to
privilege in the depositions would be dismissed. The question of whether
privilege could be claimed for the answers to the interrogatories was left for
further consideration.
The
First Appeal
The
basic requirements of pleading an attack on a patent are contained in O.104,
r.6. The relevant parts of that rule provide:
"6-1(A)
A party to an action concerning a patent who either challenges the validity of
the patent or applies by counterclaim in the action for revocation of the
patent must, notwithstanding Order l8, rule 2, serve his defence or
counterclaim (as the case may be), together with particulars of the objections
to the validity of the patent on which he relies, within 42 days after service
upon him of the statement of claim.
(2)
Particulars given pursuant to paragraph ... (lA) must state every ground on
which the validity of the patent is challenged and must include such
particulars as will clearly define every issue which it is intended to raise.
(3)
If the grounds stated in the particulars of objections include want of novelty
or want of any inventive step, the particulars must state the manner, time and
place of every prior publication or user relied upon and, if prior user is
alleged, must -
(a) specify
the name of every person alleged to have made such user,
(b) state
whether such user is alleged to have continued until the priority date of the
claim in question or of the invention, as may be appropriate, and, if not, the
earliest and latest date on which such user is alleged to have taken place,
(c) contain
a description accompanied by drawings, if necessary, sufficient to identify
such user, and
(d) if
such user relates to machinery or apparatus, state whether the machinery or
apparatus is in existence and where it can be inspected."
The
Particulars of Objection alleged invalidity of 869 upon the ground that the
patent lacked novelty and was obvious having regard to certain disclosures.
Particulars are given of six published documents and six oral disclosures. The
oral disclosures are pleaded in this form:
"(g) The
oral disclosure by John Taboada to Stephen Trokel of the Edward S Harkness Eye
Institute made during the evening of March l5 l983 at Mr Trokel's apartment in
New York that Excimer Lasers, particularly using l93nm ArF radiation, could be
used advantageously in corneal surgery, either to make precise incisions (as in
radial keratotomy) or to remove corneal tissue. He emphasised the
exceptionally rapid healing process achieved in the cornea when such radiation
was used, and the significant advantages thus achievable over the known KrF
248nm radiation.
(h) The
oral disclosure of the same matters by John Taboada and Stephen Trokel to Dr
Richard Keates and Mr Francis L'Esperance at a meeting of the International
Ophthalmic Laser Symposium on l0 April l983.
(i) The
oral disclosure on 21 September l983 by Dr Stephen Trokel at a meeting with
inter
alia
Bernard Klimt of Lambda-Physik USA Inc that he had (with the assistance of Dr
Srinivasan) been using excimer laser made by Lambda-Physik and owned by IBM for
experimental corneal refractive surgery. In particular he disclosed the use of
such a laser to ablate corneal tissue in various predetermined patterns using
masks and had controlled the depth of the ablations by varying the fluence of
the beam. The parties then discussed the possibility of designing a fully
automatic machine to measure automatically the curvature of the patient's eye
and laser sculpt the eye under the control of a computer to correct curvature
errors.
(j) The
oral disclosure of the substances of the disclosure set out in (h) above by Mr
Klimt to Dr L'Esperance at the Fifth International Congress of Lasers in
Medicine at the Westin Hotel, Detroit between 6th and 9th October l983.
(k) Dr
Trokel's "public disclosures of the invention beginning in September l983"
referred to in his Notice of Deposition of 28 December l989 in the Interference
Case No 102, 026 Trokel v L'Esperance before the Board of Patent Appeals and
Interferences of the US Patent and Trade Mark Office.
(l) The
oral presentation by Dr Taboada of the paper referred to in (c) above, to the
Annual Meeting of the Aerospace Medical Association in San Antonio, Texas, May
l98l."
No
application has been made to strike out those particulars on the ground that
they do not comply with O.104, r.6, but an application has been made for
further and better particulars.
The
amendments sought are in this form:
"(m) The
oral disclosure by Dr Trokel to Reinhardt Thyzel, a researcher, at some time
prior to l7 November l983, of his work (said work having taken place in the
summer of l983) on the recontouring of corneas using the Lambda-Physik excimer
laser.
(n) The
subsequent oral disclosure by Mr Thyzel to Dr L'Esperance (again prior to l7
November l983) of what Dr Trokel had told him.
(o) The
oral and/or written disclosure by Dr Trokel of his work on the recontouring of
corneas using the Lambda-Physik excimer laser in the course of a talk given by
him to the US Ophthalmic Laser Surgery Society on 20 September l983.
(p) The
disclosure of the invention by Dr L'Esperance to Dr Trokel on or before May
l8th l983.
(q) The
disclosure of the invention by Dr Trokel to Dr L'Esperance in about August l983.
(r) The
disclosure by Dr Srinivasen to Dr Trokel in the summer of l983 of his earlier
work on excimer laser photoablation of human tissue (as later published in US
patent 4,784,135), said work including scanning in the context of laser
sculpting of the cornea.
(s) The
public disclosure and demonstration of the invention by Dr Trokel (using a
Lambda Physik excimer laser) at the laboratories of the Columbia Presbyterian
Medical Center, 635 West 165th Street, New York, USA in or about August l983,
and in particular to Dr L'Esperance in about August l983.
(t) The
public disclosure and demonstration of the invention by Dr Trokel and Dr
Srinivasen (using a Lambda Physik excimer laser) at the IBM Thomas J Watson
Research Center, Yorkton Heights, New York, between about August and October
l983."
The
allegations of invalidity made against 648 are not identical to those pleaded
against 869. Certain documents are relied on as invalidating disclosures, but
no oral disclosures are pleaded. By amendment the first defendant seeks to
add:
"(d) The
public lecture by Dr John Marshall at the International Laser Seminar at
Interlaken, Switzerland, in the afternoon of June 5th l985, at which he
disclosed the idea of performing wide area ablation on the cornea and varying
the energy and/or exposure time applied to different areas of the cornea in
order to control reprofiling. In particular he disclosed 2 alternative methods
of varying energy and/or exposure time: the use of graded intensity masks and
variation of the size of the exposed area over time."
As
appears from the extract of the Judge's judgment that I have read, the Judge
was reluctant to refuse the amendments, but believed that
Avery
Ltd v Ashworth, Son & Co Ltd
32 RPC 560 and
Intalite
International NV v Cellular Ceilings Ltd (No 1)
(1987) RPC 532 laid down that the proper course in a patent action was for the
pleadings to be properly drafted before discovery takes place. As the
amendments sought did not contain the appropriate particulars and they could
not be supplied until after discovery, it was correct to refuse the amendment.
The
plaintiffs supported the decision of the Judge for the reasons he gave. The
first defendant submitted that neither of the cases referred to by the Judge
supported the proposition that pleadings in patent cases had to be fully
particularised before discovery took place. In certain cases, of which this
was one, detailed particulars could await discovery.
In
Avery
the plaintiff alleged infringement of two patents. The first, No 7411, had
been amended to differentiate the prior art. The first defendant alleged that
both patents were invalid upon a number of grounds. One of the allegations
relied on was:
"The
Defendants will rely, either by the way of anticipation or as showing the scope
of the Claims of the Complete Specification, upon the matters known to the
Plaintiffs or one of them, in consequence of which the Plaintiffs
W
& T Avery & Co Ld
on the 7th day of June l905, applied for leave to amend the Complete
Specification of the Patent by (
inter
alia)
striking out the then first Claim, for the reason that they were advised that
the Claim they desire to delete covers subject-matter of doubtful novelty; ..."
The
first defendant sought discovery of all the documents relevant to the
application to amend the patent. The plaintiffs countered with an application
to strike out the allegation set out above on the ground that it was
embarrassing and ambiguous.
Eve
J refused to order the discovery sought and ordered that the allegation should
be struck out unless proper particulars were given. No further particulars
were given.
The
Court of Appeal dismissed the appeal. At page 568, line l3 Warrington LJ said
this:
"With
regard to the other Patent, No 7411* of 1902, the matter is slightly different,
because, as the Particulars of Objections originally stood they contained a
paragraph which, if it were a proper particular, would, as the Plaintiffs
admit, support an application for the disclosure of the documents which the
Defendants wish to have disclosed, but Mr Justice Eve thought, and I agree with
him, that that paragraph of the Particulars of Objections was not a compliance
with Order LIIIA, Rule l7, and ought to be struck out unless it was amended.
Accordingly, he made the Order in this form. He said, with regard to that part
of the Defendants' application, "the said application be adjourned until
further Particulars are given as to paragraph l(D) of the said Particulars of
Objections. And it is ordered that in the event of no such Particulars being
given, this Court doth not think fit to make any Order on the Defendants' said
application"; and then, on the Plaintiffs’ application the learned Judge
ordered that paragraph to be struck out unless it was amended, or rather he
directed Particulars to be given by the 12th of July l9l5. As I understand
none were given, consequently that paragraph is struck out. If it is struck
out, then there is nothing on which the application for discovery can be
supported. On the whole, I think the Order of Mr Justice Eve was perfectly
right and ought to be affirmed."
Both
Eve J and Warrington LJ concluded that the allegation did not comply with O.
53A r.l7 which was similar to O.l04 r.6. That was, in my view, clear as it did
not identify any document or oral disclosure, prior use, person or other
matter. There was no allegation which, if proved, formed a basis of an
invalidity attack. It did not comply with any part of O. 53A. Warrington LJ
did not say that, where a proper allegation of invalidity is pleaded, albeit
short of particulars, further particularisation should not, in certain
circumstances, be delayed until after discovery. Warrington LJ concluded that
allegation was a general allegation of invalidity which was not permissible as
the rules required that a person who attacked the validity of a patent had to
limit his attack to specific grounds. He said at page 567, line 50:
"The
only issue raised in the action with which we are concerned is the alleged
invalidity of the Patent. That issue is not properly to be regarded, having
reference to the Rules, as a general allegation of invalidity. In whatever
form it is raised by the Defence, it seems to me that the Defendants merely
allege, and must allege in order to comply with the Rules, that the Patent is
invalid for the reasons specified in the Particulars of Objections.
In
reference to the Patent No 12,087 of l9l0, the defendants ask for discovery of
certain documents which may tend to show that the Plaintiffs thought their
Patent was invalid, or might be invalid, by reason of some other documents not
specified in the Particulars of Objections. In my opinion in that case they
are asking for discovery of supposed documents which are not relevant to the
issue which is the only issue in the action, but to another issue altogether,
and on that short ground I think the judgment of Mr Justice Eve with regard to
the Second Patent, No 12,087, was justified and ought to be affirmed."
Warrington
LJ applied the general principles of discovery and pleading to a patent action.
The pleadings defined the issues between the parties and discovery was only
necessary in respect of documents that were relevant to a pleaded issue. Thus
when a patent is alleged to be invalid, the patentee is only required to give
discovery of documents that would be relevant to a pleaded issue of invalidity.
The allegation made by the defendants in
Avery
did not specify any instance of prior use or prior publication and therefore
did not plead anything which would render the patent invalid. It followed that
discovery relating to the allegation was not appropriate.
The
other members of the Court also concluded that the allegation was not an
allegation of invalidity and therefore was irrelevant. It was in their view a
fishing expedition to see whether anything would turn up. Lord Cozen Hardy MR
said at page 566, line 45:
"...
the Patentee (by amendment) struck out the first Claim and made an amendment by
the addition of a word in the fourth Claim, which is now the third, and the
Defendants ask us to say: 'We should like to see what it was that induced you
to make the amendments which the Office sanctioned in 1905: what was the reason
why you did that; what was the particular reason which made you think that your
Patent was in danger?' The answer is: "The only Patent we can look at for the
purposes of this action is the Specification of Patent as amended, not the
original one". In the case of
Moser
v Marsden
in the House of Lords, which has often had cited to us, it was said: 'You
cannot look at the original Specification at all; the only Specification upon
which you can go is the Specification as "amended". That being so, I fail to
see how it can be relevant to anything in this action to see what were the
reasons for which this amendment was made; or what was the discovery made
appearing in a document which is not the Specification of the Patent now sued
upon and which really is not relevant to anything of the kind. Then it is said
that it is made relevant, because in paragraph l(D) it is said: "The
Defendants will rely either by way of anticipation or as showing the scope of
the Claims of the Complete Specification upon the matters known to Plaintiffs
or one of them in consequence of which the Plaintiffs
W
& T Avery & Co Ld
,
on the 7th day of June 1905 applied for leave to amend the Complete
Specification of the Patent by (
inter
alia
)
striking out the then first Claim for the reason that they were advised that
the Claim they desired to delete covers subject-matter of doubtful novelty."
That is really in the teeth of Rule l7. It seems to me plainly a bad notice of
objection, and does not really give any substantial right to the Defendants."
Avery
decided that discovery in patent actions should be confined to the issues of
invalidity pleaded. The allegation which formed the basis of the claim for
discovery did not raise an issue of invalidity. Therefore it had to be struck
out as embarrassing unless appropriate particulars were given. It did not
decide that where bona fide allegations of invalidity are pleaded all relevant
particulars have to be given before discovery. The
Intalite
case
added nothing material.
An
example of a case where particulars were delayed pending discovery was
Aero
Zipp Fasteners Ltd v YKK Fasteners (UK) Ltd
(1973) FSR 580. In that case the defendants pleaded that the patentee, the
plaintiff, was not entitled to relief having regard to its abuse of its
dominant position contrary to Article 86 of the Treaty of Rome. The facts were
not fully particularised, but Graham J refused to strike out the allegations.
"It
is always important in my judgment to distinguish between the materiality of
the plea itself and the particulars which must be given under it. The
particulars here were given on the l0th April, l973, and though they went
further than the original paragraph 4 of the defence, again were still in
general terms. The defendants made it clear, however, when giving those
particulars that they were unable to give better particulars until after
discovery, and they are requesting this discovery in the proceedings before me.
In
my judgment this is not an unreasonable request in the circumstances I am about
to state, since it is clear that the facts of the plaintiffs' conduct must very
largely be within their own knowledge, and not within the knowledge of the
defendants."
In
the present case, it is not suggested that the first defendant can at this
stage give further particulars. Further it is not, for the purpose of the
appeal, disputed that the plaintiff has access to the relevant persons and to
documents which would enable it to ascertain the relevant facts. What is said
is that the allegations sought to be pleaded do not comply with the rules and
that to allow them to be pleaded would provide a vehicle for fishing discovery.
Mr
Boyle QC who appeared for the plaintiff also submitted that the word "must" in
O. l04 r.6 made it obligatory for a defendant who challenged the validity of a
patent to set out the particulars required by the rule. That being so, no
amendment should be allowed unless it contained the required particulars. That
in my view is too simplistic.
A
Judge has a discretion whether to allow amendments before they have been
properly particularised. He should exercise that discretion to prevent
amendments being made with a view to obtaining documents to discover a cause of
action or defence. But such amendments need to be contrasted with those which
plead a genuine case which is suitable for determination and are in sufficient
detail so as to limit the area of discovery to an appropriate extent. It is a
question of degree in each case as to whether the amendments are of the fishing
type or plead a genuine cause of action or defence. If it be the latter and
the omitted particulars are likely to be within the knowledge of the other
party, then it would in general be appropriate to allow the amendment and to
delay further particularisation until after discovery. Each case will differ
and will need to be decided upon its own facts.
In
the present case the amendments have to be viewed in the light of the
Interference proceedings and the history of the patent rights relied on by the
plaintiff. The allegations sought to be added by amendment came from documents
produced in the Interference proceedings. In general they identify alleged
instances of disclosure and give sufficient details to identify the person who
made the prior disclosure and where it was made. They appear to be a genuine
attempt to plead invalidating disclosures which could well have taken place. I
therefore believe that they should be allowed. That does not apply to (p) and
(q) which only set a cut-off date and do not identify where the disclosure took
place or any detail of what was said. They appear to me to be of the fishing
type and should not be allowed without further amendment.
I
therefore would allow the first defendant to amend their Particulars of
Objections as sought, but excluding (p) and (q). That would I believe have
been the decision that the Judge would have reached if he had not thought he
was bound by the
Avery
case.
The
second appeal
The
Judge made these findings which were not disputed before us:
"I
think it is necessary to get one issue out of the way. In the evidence filed
on this application the plaintiff has testified at some length as to the
existence of the protective orders and as to the secrecy of the deposition
proceedings from which these transcripts are derived. It is said, and I do not
understand the defendant to dispute this, that none of the material which is
sought to be discovered now on this application has been made public, either in
the deposition proceedings or in proceedings in the United States or Canada.
However, it is well established that an obligation to give discovery is not
defeated simply because the relevant material has been kept secret. Parties
frequently are required to give discovery of material which is secret."
Having
considered the authorities cited to him the Judge said:
"In
my view, however, it is not shown in this case that any of the depositions
given in the United States come within the exclusionary public policy
considerations of litigation privilege. It appears to me that the contents of
these statements are in principle no different to any other evidence given in
inter
partes
proceedings. As I have said already, it may well be in many, if not most,
cases that the court will consider that the disclosure of such transcripts will
be unnecessary and burdensome and will decline to order them accordingly. But
it does not appear to me that they fairly come within the scope of litigation
privilege.
However,
even if I was of the view that they did, I have come to the conclusion that
this is a case where it would be appropriate to treat the plaintiff as if it
had waived its claim to privilege. What the plaintiff has done, it appears to
me, is decide on a case by case basis in which litigation and in which
countries it intends to rely upon the transcripts. Not only has it not
asserted privilege anywhere else in the numerous pieces of litigation it has
been engaged in, but it has even relied on these transcripts, as I have
indicated, not just against other litigants, but against this defendant in
litigation abroad. In my view in the circumstances of this case the court
should not allow the plaintiff to decide only to assert privilege in some
tribunals but not in others and particularly should not allow it to do so where
it will result in one of the defendants in this action knowing full well the
contents of the material which is sought to be disclosed but being unable to
rely on it. For this reason as well I have come to the conclusion that the
claim for privilege should not be allowed to stand."
The
depositions
- Mr Boyle submitted that the depositions were covered by legal professional
privilege. They were documents recording information obtained by lawyers from
third parties for the purposes of litigation, namely the Interference
proceedings. Such documents remained privileged as they have never been made
public. Further the privilege, which was originally the privilege of the
parties to those proceedings, now ensures for the benefit of the plaintiff as
successor in title to the patent rights involved in the Interference proceedings.
Mr
Boyle drew to our attention a number of cases in which information obtained by
legal advisers for use at contemplated proceedings had been held to be
privileged. In
Learoyd
v Halifax Trust Stock Banking Co
(1893) CH 686 shorthand notes of an examination of a witness under Section 27
of the Bankruptcy Act l883 by the solicitors acting for a trustee in bankruptcy
so as to enable him to advise the trustee whether to bring an action were held
to be privileged. In
Southwark
and Vauxhall Water Company v Quick
(1876) QBD 315 shorthand notes of a conversation taken to obtain information to
be furnished to the Company's solicitor for advice in relation to an intended
action were held to be privileged. Accounts prepared by an accountant on the
instructions of the plaintiff's solicitor in an administration action with a
view to the prosecution of an action were privileged: see
Goldstone
v Williams, Deacon & Co
(1898) 1 Ch 47. Similarly a transcript of an examination of a witness under
Section 561 of the Companies Act l985 was privileged: see
Dubai
Bank Ltd v Galadari
(1990) BCLC 90.
To
support the plaintiff's case, Mr Boyle referred us to the judgment of Falconer
J in
Procter
& Gamble Co v Peaudouce
UK
Ltd
23 November l984 unreported. In that case the Judge had to decide a large
number of issues on discovery. Towards the end of his judgment he came to
consider whether depositions produced in proceedings in the USA were
privileged. He said:
"It
seems to me that judged 'according to the practice of this Court' (to use the
language of Mr Justice Ormrod in the
Duncan
case) these depositions must be privileged unless and until they are read in
open Court or otherwise made public. As to the responses to interrogatories
-answers by one party to questions put by the other - the questions and answers
remain private to the parties under the protective order and under the Seal
under which they are filed as part of the Draft Pre-Trial Order. Such
questions and the responses thereto may never be used in the actual
presentation of the case in Court but the questions, as well as the responses
thereto, are part of the preparation for trial of their respective cases by the
respective parties and, as such, it seems to me are to be regarded by the
practice of our Courts, as privileged unless and until they are read in Court
or put on the public record of the Court - and that privilege applies to both
parties in the
Weyerhauser
litigation.
Weyerhauser's
questions to
Proctor
& Gamble Company
are part of
Weyerhauser's
preparation of the case, as
Procter
& Gamble's
questions to
Weyhauser
are part of their preparations. Indeed, the depositions of the respective
potential witnesses, the responses to interrogatories and the other documents
included in the Draft Pre-Trial Order and of which discovery is now sought are
really all part of the preparation of their respective cases, on the one case
on the one side that of
Procter
& Gamble Co
and on the other side that of
Weyhauser
Co
and the other defendants for use in that litigation and on my judgment,
following the reasoning of Ormrod J in
In
re Duncan
1969 1306 ... fall to be considered as privileged by the practice of our Courts."
Mr
Arnold accepted that communications between a party and his legal advisers for
the purpose of obtaining legal advice; confidential communications with third
parties for the purposes of litigation; documents brought into being for the
dominant purpose of enabling a party to obtain legal advice relating to a claim
or a potential claim; and documents which if disclosed would disclose the trend
of legal advice would be privileged. All the documents considered in the cases
cited on behalf of the plaintiff, save for
Peaudouce
fell within those categories, but the depositions were not of that character.
They were transcripts of evidence given in the presence of both parties. In
principle, the circumstances in which they were created were the antithesis of
that which privilege was created to protect. It follows that the decision of
Falconer J in
Peaudouce
was wrong.
I
agree with the submission of Mr Arnold. It is not right to extrapolate the law
of privilege from the cases referred to so as to conclude that depositions
taken in the presence of both parties to litigation are the subject of legal
professional privilege. That becomes clear from the principles upon which
discovery and privileged are founded. As Bingham LJ said in
Ventouris
v Mountain
(1991) 3 AER 472 at 476:
"Our
system of civil procedure is founded on the rule that the interests of justice
are best served if parties to litigation are obliged to disclose and produce
for the other party's inspection all documents in their possession, custody or
power relating to the issues in the action. This is not of course a necessary
rule but it is firmly established here. It is not however an absolute rule, as
exceptions such as legal professional privilege and public interest immunity
demonstrate. Nonetheless, disclosure being generally regarded as beneficial,
any exception has to be justified as serving the public interest which gives
rise to the exception. As Lord Edmund-Davies said in
Waugh
v British Railways Board
(1979) 2 All ER ll69 at ll82,
(1980) AC 521 at 543:
'...
we should start from the basis that the public interest is, on balance, best
served by rigidly confining within narrow limits the cases where material
relevant to litigation may be lawfully withheld. Justice is better served by
candour than by suppression. For, as it was put in the
Grant
v Downs
(1976)
135 CLR 674 at 686 majority judgment, "privilege ... detracts from the
fairness of the trial by denying a party access to relevant documents or at
least subjecting him to surprise."
The
exception of legal professional privilege is based upon the recognised need
that a party must be able to consult his lawyer and prepare his case in
complete confidence. That was recognised in the classic statement of the law
by Sir George Jessel MR in
Anderson
v Bank of British Columbia
(1876) 2 CH D 644 at page 649:
"The
object and meaning of the rule is this: that as, by reason of the complexity
and difficulty of our law, litigation can only be properly conducted by
professional men, it is absolutely necessary that a man, in order to prosecute
his rights or to defend himself from an improper claim, should have recourse to
the assistance of professional lawyers, and it being so absolutely necessary,
it is equally necessary, to use a vulgar phrase, that he should be able to make
a clean breast of it to the gentleman whom he consults with a view to the
prosecution of his claim, or the substantiating his defence against the claim
of others; that he should be able to place unrestricted and unbounded
confidence in the professional agent, and that the communications he so makes
to him and should be kept secret, unless with his consent (for it is his
privilege, and not the privilege of the confidential agent), that he should be
enabled properly to conduct his litigation. That is the meaning of the rule.
Now,
as to the extent of the rule. It goes not merely to a communication made to
the professional agent himself by the client directly, it goes to all
communications made by the client to the solicitor through intermediate agents,
and he is not bound to write letters through the post, or to go himself
personally to see the solicitor; he may employ a third person to write the
letter, or he may send the letters though a messenger, or he may give a verbal
message to a messenger, and ask him to deliver it to the solicitor, with a view
to his prosecuting his claim, or of substantiating his defence.
Again,
the solicitor's acts must be protected for the use of the client. The
solicitor requires further information, and says, I will obtain it from a third
person. That is confidential. It is obtained by him as solicitor for the
purpose of the litigation, and it must be protected upon the same ground,
otherwise it would be dangerous, if not impossible, to employ a solicitor. You
cannot ask him what the information he obtained was. It may be information
simply for the purpose of knowing whether he ought to defend or prosecute the
action, but it may be also obtained in the shape of collecting evidence for the
purpose of such prosecution or defence. All that, therefore, is privileged.
Then
the rule goes a step further. The solicitor is not bound any more than the
client to do this work himself. He is not bound either to collect information
or to collect testimony. He may employ his clerks or other agents to do it for
him, and upon the same principle as the information acquired by himself
directly is protected, so the information by a clerk or agent employed by him
is equally protected. But then the cases go still a step further. Suppose the
information required is in a foreign country, where neither the solicitor nor
his clerk nor an ordinary agent can obtain it, he may request the client to
obtain it himself, and then the information so obtained by the client at the
request or under the advice of the solicitor is in a sense obtained by the
agent of the solicitor, although it is a very odd way of expressing it. It is
turning the client, so to say, into the agent of the solicitor for the purpose
of obtaining information; but it is clearly within the rule of privilege. So
far as I understand, the cases in equity go no further."
The
depositions for which privilege is claimed do not fall within the rule as
explained in
Anderson.
They are not communications made by a party to his lawyer and they are not
part of the confidential preparations by a party of his case. Further, they
are not the type of document that it is necessary in the public interest to
exclude from the normal rule that justice is best served by disclosure. That
public interest must, I believe, be a basic consideration before any decision
on privilege is made as Sir Richard Scott VC made clear in
Re
Barings Plc and Secretary of State for Trade and Industry v Baker
(1998) l AER 673. In that case privilege was claimed for reports prepared by
solicitors on behalf of administrators in compliance with their duty under S.7
of the Company Directors' Disqualification Act l986. The Vice-Chancellor held
the reports were not privileged as the public interest did not require
protection from disclosure. At page 678 he said:
"My
initial and uninformed reaction on being told that legal professional privilege
was being claimed for this statutory report was one of some incredulity.
Despite the sustained and well constructed argument that Miss Gloster has
presented and despite the weight of authority that she has cited my sense of
incredulity remains. The rules of discovery, which require relevant documents
available to one litigant to be made available also to the other litigants, are
intended to assist and make more likely the achieving of a just result in
litigation. However it is recognised, and established by authority, that in
some circumstances a greater public interest will override the right of a
litigant to obtain relevant documents from his opponent. One such greater
public interest is that individuals should be able to consult their lawyers in
the certain knowledge that what they tell their lawyers and the advice they
receive from their lawyers, whether orally or in writing, will be immune from
compulsory disclosure. Lord Brougham LC in
Greenough
v Gaskell
(1833) l My & K at 103, (1824 - 34) All ER Rep 767 at 770 justified legal
professional privilege thus:
'But
it is out of regard to the interests of justice, which cannot be upholden, and
to the administration of justice, which cannot go on, without the aid of men
skilled in jurisprudence, in the practice of the Courts, and in those matters
affecting rights and obligations which form the subject of all judicial
proceedings. If the privilege did not exist at all, every one would be thrown
upon his own legal resources; deprived of all professional assistance, a man
would not venture to consult any skilful person, or would only dare to tell his
counsellor half his case.'
The
passage I have cited from Lord Brougham LC's judgment was, together with
citations to the same effect from other nineteenth century authorities, cited
by Lord Taylor of Gosforth CJ in
R
v Derby Magistrates' Court, ex p B
(1995) 4 All ER 526 (1996) AC 487. Lord Taylor CJ expressed this conclusion
(1995) 4 All ER 526 at 540-541 (l996) AC 487 at 507):
'The
principle which runs through all these cases ... is that a man must be able to
consult his lawyer in confidence, since otherwise he might hold back half the
truth. The client must be sure that what he tells his lawyer in confidence
will never be revealed without his consent. Legal professional privilege is
thus much more than an ordinary rule of evidence, limited in its application to
the facts of a particular case. It is a fundamental condition on which the
administration of justice as a whole rests.'
It
is easy to understand why the ordinary rights of discovery must, in the public
interest, give way to the fundamental condition to which Lord Taylor CJ
referred."
The
Vice-Chancellor considered the submission that privilege should be afforded to
these reports as they were brought into existence for the purpose of
litigation, actual, contemplated, or prospective. He said at page 679:
"There
is no doubt but that documents brought into existence for the purposes of
litigation may constitute a class of documents to which, on authority, legal
professional privilege attaches. The reason for extending privilege to this
class of documents was explained in
Bray
on Discovery
(1885) page 392:
'And
the ground on which they can acquire privilege is that they cannot be produced
without showing what was the view of the professional legal adviser as to his
client's case or the advice which he had given him: they are the materials
selected by his mind and represent the result of his professional care and
skill ...'"
The
Vice-Chancellor went on to review the authorities and concluded at page 68l:
"These
citations make clear, in my opinion, that documents brought into being by
solicitors for the purposes of litigation were afforded privilege because of
the light they might cast on the client's instructions to the solicitor or the
solicitor's advice to the client regarding the conduct of the case or on the
client's prospects. There was no general privilege that attached to documents
brought into existence for the purposes of litigation independent of the need
to keep inviolate communications between client and legal adviser. If
documents for which privilege was sought did not relate in some fashion to
communications between client and legal adviser, there was no element of public
interest that could override the ordinary rights of discovery and no privilege.
So, for example, an unsolicited communication from a third party, a potential
witness, about the facts of the case would not, on this view, have been
privileged. And why should it be? What public interest is served by according
privilege to such a communication? But have the more modern authorities
established a different and more extensive principle?"
He
answered that question in the negative. Having analysed the speeches in
Waugh
v British Railways Board
(1980) AC 521, he concluded at page 684:
"Waugh
v British Railways Board
established that legal professional privilege could not be claimed for a
document unless the sole or dominant purpose for which it had been brought into
existence was that it should be used for the purpose of obtaining legal advice
or being used by lawyers in possible or probably litigation. But none of the
judgments divorced legal professional privilege from its historical connection
with and dependence upon the principle that communications between an
individual and his lawyers should be immune from compulsory disclosure.
Waugh
v British Railways Board
,
like
Grant
v Downs
did not in any way extend the scope of litigation privilege; on the contrary,
it limited it. It did so by establishing that it was not enough that a
document had been prepared for the purpose of being placed before lawyers for
advice, the purpose had to be at least the dominant one."
No
doubt the depositions came into existence for the purposes of litigation and
perhaps can be seen as documents obtained for the purpose of preparing for a
trial, but that does not mean that they are privileged from disclosure. They
came into existence in the presence of both parties for use in the Interference
proceedings. It was not in the public interest to prevent them from being
disclosed. The claim for privilege therefore fails.
The
conclusion that the law does not enable privilege to be claimed to prevent
disclosure of these depositions accords with commonsense. It cannot be right,
when justice is best achieved by disclosure of documents, to exclude from
disclosure these depositions when they are not privileged in the US and
privilege has not been claimed in Canada.
The
Interrogatories
- Mr Arnold accepted that drafts of answers to interrogatories were covered by
legal professional privilege, but he submitted that service amounted to waiver
and therefore the answers served in the Interference proceedings were no longer
privileged.
Mr
Boyle submitted that the answers to the interrogatories, when drafted, were
plainly privileged. They were made available for the limited purpose of the
Interference proceedings and that did not amount to waiver of any rights in
other proceedings.
In
my view the question of whether or not waiver took place does not arise and
does not have any application in this case. No doubt any drafts that were
produced were privileged and privilege in those documents has not been waived.
However, a document containing answers to interrogatories which is served upon
another party is not a privileged document and therefore waiver never occurs.
Why is it not privileged? Because it is not a document falling within the
class of documents for which legal professional privilege can ever be claimed.
The answers may be confidential and restriction may be placed upon disclosure,
but the document is no more privileged than is a pleading. The document is not
of the type covered by legal professional in that it is not a document within
the rules set out in
Anderson
nor one which public interest requires to be privileged.
Mr
Boyle relied on
Minnesota
Mining & Manufacturing Co v Rennick (UK) Ltd
(1991) FSR 97. In that case privilege was claimed for answers to
interrogatories administered in ITC proceedings in the US. At page 98, Hoffman
J said:
"It
seems to me that documents were called into existence for the purposes of the
US litigation and
prima
facie
,
therefore, would be subject to litigant's privilege.
That
appears to have been the view of Stirling J in
Goldstone
v Williams, Deacon & Co
(1899) l CH 47, where a deposition before an examiner by a defendant in
administration proceedings in Australia was held to be subject to such
privilege. As the learned judge there points out, it is frequently the case
that after such documents have been brought into existence they are produced in
open court and, in consequence, because the proceedings in court are public,
the privilege is taken to have been waived.
In
the
Goldstone
case, however, the proceedings were compromised before the documents in
question had become part of the record and the learned judge, therefore, said:
'It
appears to me that the document in question was never effectually made public,
and that the use made of it does not amount to a waiver of the privilege.'
In
this case the answers to the interrogatories were always subject to the
protective order for the very purpose of ensuring that they did not become
public and consequently, in my judgment, the actual use of the documents in the
US proceedings did not constitute a waiver of the privilege. That continues to
attach and,
In
re Duncan
(1968) page 306, is authority for the proposition that a litigant's privilege
arising in proceedings in a foreign court is also an answer to a claim for
production of the document in proceedings in this country."
The
Judge was mistaken in believing that
Goldstone
v William, Deacon & Co
was concerned with proceedings in Australia. He may have had in mind
North
Australian Territory Company v Goldsborough, Mort & Co
(1893) 2 CH 381 in which depositions taken under Section ll5 of the Companies
Act 1862 were held to be privileged. Those depositions were taken for the
purpose of enabling the liquidator to decide as to the propriety of bringing or
continuing an action. Their confidentiality had been protected and therefore
they were privileged just as much as any witness statement would be.
In
Goldstone
accounts were prepared for the plaintiffs' solicitors in an action brought by
the infant children of Mr Goldstone against his wife and her trustee in
bankruptcy. An administration order was made and Mrs Goldstone was examined in
front of an examiner. Stirling J had to decide in a subsequent action whether
the accounts and depositions taken before the Examiner were privileged. It was
accepted that the accounts had been privileged, but it was alleged that the
privilege had been waived. He held that it had not as they had never been made
public. As to the depositions, he held that they were on the file of the Court
and could be inspected and therefore were liable to be produced.
I
do not believe that the
Goldstone
case throws any light on the question of whether interrogatories are privileged
and the Judge was wrong to rely on it in the
3M
case. Further, it is not apparent from the judgment in the
3M
case what was the background to the answers to the interrogatories. If the
proceedings were similar to Interference proceedings, then this decision was
wrong. The fact that documents are kept confidential does not mean that they
are privileged. It is the nature of the document which determines whether
privilege attaches. Answers to interrogatories supplied by a party do not form
part of confidential documents passing between a party and his lawyers nor part
of the confidential preparations for contemplated or actual legal proceedings.
In
my view the claim for privilege in respect of the answers to the
interrogatories fails.
Finally
I must express my concern at the course that these appeals took. They were
estimated to last one day as that was the time taken before the Judge. It
became apparent that it was a gross underestimate as Mr Boyle was by l pm on
the first day still opening the appeal on privilege. Counsel must have been
aware that the estimate was wrong, but failed to seek directions or produce
written submissions so that the time estimate could be kept to. If such
inconsiderate behaviour is repeated in patent appeals, it will be necessary to
have directions hearings prior to listing.
LORD
JUSTICE ROCH:
I
agree with Aldous LJ that the appeal against the judge’s order of the
27th January 1998 should be allowed for the reasons given and that the order of
the judge of the 10th March 1998 should be upheld for the reasons given.
The
First Appeal.
The
application which led to the judgment of the 27th January this year was to add
allegations of prior use or disclosure as bases of objection to the patent
which had not been in the original pleadings. That amendment was contested on
the ground that the particulars given did not comply with the requirements of
Order 104 Rule 6 of the Rules of the Supreme Court. The particulars required
under order 104 Rule 6 are such that the objection to the validity of the
patent being made by the party whose pleading it is, clearly defines the issue
or issues the party intends to raise. The particulars must enable the other
party or parties to know what case is being made against the holder of the
patent and what documents the holder of the patent has to disclose relevant to
that case.
The
task of the judge where there is an application to strike out an allegation of
objection to the validity of a patent or to order further and better
particulars of such an allegation before discovery, is to determine whether the
pleaded objection to the validity of the patent raises a real issue in a way in
which the other party knows what he has to meet or whether the particulars
pleaded are so broad, vague or ambiguous that that part of the pleading should
be struck out or further and better particulars should be ordered prior to
discovery, because to allow the pleading to stand and discovery to take put
will place the other party in an unfairly difficult position. If the objection
is pleaded so that a real issue is raised in a way which makes it clear what
case the other party has to meet, the pleaded objection is not to be struck out
nor are further and better particulars to be ordered prior to discovery simply
because every detail mentioned in Order 104 r. 6 has not been pleaded, because
at that time that detail is not known to the pleading party.
The
judge has a discretion and I agree with Aldous LJ that in each case it is a
question of degree whether the pleading, be it an original pleading or an
amendment, is a pleading of a genuine ground of objection to a patent or
whether it is what is colloquially called “a fishing expedition”.
The
Second Appeal
Legal
professional privilege has had two aspects. The first relates to
communications between lawyers and their clients whether there is or is not
litigation in existence or in contemplation. The justification of this aspect
of legal professional privilege was and is that a person must be able to give
information and instruction to his lawyers without fear that such information
or instruction will later be disclosed to others and that the advice given by
lawyers to clients will also be free from disclosure without the client’s
consent. The courts consider that the public interest that the person should
be able to communicate with his legal advisors in absolute confidence so that
he can receive proper legal advice based on the true facts as known to him,
prevails over any interest in society or others in seeking disclosure of such
communications
R
-v- The Derby Magistrates’ Court ex parte B
[1996] 1 AC 487.
The
second aspect of legal professional privilege concerns preparation for
litigation both before and after the actual commencement of proceedings. Here
any document recording the client’s instructions to his lawyers for the
purpose of litigation or his lawyers advice to the client for the same purposes
are absolutely protected from disclosure unless the client waives the
privilege. Other documents brought into existence for the purpose of the
litigation, for example witness statements, expert’s reports were
privileged from disclosure unless and until they were brought into the public
domain by being used in court. The basis of this aspect of legal professional
privilege is that stated by James LJ in
Anderson
-v- Bank of British Columbia
[1876] 2 ChD 644 at 656
"Looking
at the dicta and the judgments cited, they might require to be fully
considered, but I think they may possibly all be based upon this, which is an
intelligible principle, that as you have no right to see your adversary’s
brief, you have no right to see that which comes into existence merely as the
materials for the brief."
This
principle was adopted by Brett LJ in
Southern
Water Company -v- Quick
[1878] 3 ChD 315 at 320 where having cited the dictum of James LJ, Brett LJ said:
"Now
reading that passage with what was said by Mellish, LJ, in the course of the
argument, it is clear that if a party seeks to inspect a document which comes
into existence merely as the materials for the brief , or that which is
equivalent to the brief, then the document cannot be seen, for it is
privileged. It has been urged that the materials, or the information obtained
for the brief, should have been obtained “at the instance” or
“at the request” of the solicitor; but I think it is enough if they
come into existence merely as the materials for the brief, and I think that
phrase may be enlarged into “merely for the purpose of being laid before
the solicitor for his advice or his consideration.”"
The
fact that a document had come into existence at a hearing, being a transcript
of notes of a witness’s evidence did not necessarily place that document
outside the scope of legal professional privilege. Thus the transcript of an
examination of witnesses under s. 27 of the
Bankruptcy Act 1883, upon the
application of the Trustee in Bankruptcy with the view to enabling his
solicitor to advise him whether an action should be brought with reference to
the bankrupts affairs was entitled to privilege, see
Learoyd
-v- Halifax Joint Stock Banking Company
[1893] 1 Ch 686. This privilege extends to documents brought into existence
for the purposes of litigation in a foreign jurisdiction, see
Re
Duncan
[1968] P 306.
Since
1968 the approach of the courts to the second aspect of legal professional
privilege has altered. An important impetus to this new approach was the
decision of the House of Lords in
Waugh
-v- British Railways Board
[1980] AC 521 where their Lordships held that a document such as an internal
inquiry report into an accident which was contemporary and contained statements
by witnesses on the spot and which would almost certainly be the best evidence
as to the cause of the accident should be disclosed, as the due administration
of justice strongly required, unless the report had been prepared for the
purpose of submission to the party’s legal advisors in anticipation of
litigation and that had been the dominant purpose for which it had been
prepared. In his speech at page 543 C, Lord Edmund Davies said:
"And
in my judgment we should start from the basis that the public interest is, on
balance, best served by rigidly confining within narrow limits the cases when
material relevant to litigation may be lawfully withheld. Justice is better
served by candour than by suppression. For as it was put in the
Grant
-v- Downs
majority judgment, at page 686 “....the privilege.... detracts from the
fairness of the trial by denying a party access to relevant documents or at
least subjecting him to surprise."
Since
then in order to avoid a party being subjected to surprise, the Rules of the
Supreme Court have been altered to provide for the exchange of witness
statements and expert reports. It is true that under Order 38 Rule 2 A of the
Rules of the Supreme Court only the statements of the oral evidence which the
party intends to adduce at the hearing have to be exchanged. Order 38 Rule 36
places restrictions on the adducing of expert evidence and it is now unusual
for expert evidence to be given in a trial unless the substance of the evidence
has been disclosed in the form of a written report or reports to the other
parties to the litigation.
This
more open approach to litigation has been confirmed in more recent decisions
such as that of this court in
Ventouris
-v- Mountain
[1991] 1 WLR 607 at 611 H in a passage cited by Aldous LJ in his judgment and
in the judgment of the Vice-Chancellor Sir Richard Scott in
Re
Barings plc & Secretary of State for Trade and Industry -v- Baker
[1998] 1 All ER 673.
The
view of the judges in the Victorian cases that a party to litigation is not
entitled to know the contents of his opponent’s brief and is not entitled
to know before the hearing how his opponent proposes to establish his case or
attack the first party’s case is no longer thought to be the proper
approach to litigation. This change of view must inform the approach of any
court to questions such as those which arise in this second appeal.
Turning
first to the interrogatories; those were not privileged in my judgment, because
they came into existence not as part of the preparation of the interrogated
party’s case but by reason of an order of the court that certain relevant
information should be made available to the interrogating party. The answers
are not brought into existence to enable the interrogated party to inform his
lawyers of relevant facts nor for the interrogated party to obtain legal advice
from his lawyers. I agree with Aldous LJ that answers to interrogatories, by
which I refer to the answers served and not to answers in draft are never a
privileged document.
The
transcripts of the depositions taken for the purpose of the US Interference
Proceedings I have found more difficult. I accept that these depositions did
not enter the public domain in the United States proceedings, because those
proceedings were settled before the depositions were used in open court. I
would further accept that if those depositions were covered by legal
professional privilege as documents prepared by a party for the purposes of
litigation that that privilege had not been waived.
Again,
in my judgment, the correct analysis is that these depositions being taken in
the presence of the other party to the litigation and his lawyers and with the
intention that both, or if there were more than two parties, all parties should
have the depositions as records of the evidence given by a party or witness on
the occasion that the depositions were taken, were never privileged documents.
It may well be that such documents would be the subject of an undertaking to
the American court by the parties to the American proceedings not to use them
for any purpose other than in those proceedings. Such an undertaking would be
enforceable by the American court against the parties who gave it, either
expressly or by implication. Such an undertaking could not bind the
respondents to the Second Appeal because they were not parties to the American
proceedings. Nor will the existence of such an undertaking confer litigation
privilege on those depositions under our law.
I
too would dismiss the appeal against the judge’s ruling of the 10th March
1998 that these depositions do not come within the scope of litigation privilege.
Order:
lst appeal (27.1.98) allowed: 2nd appeal (10.3.98) dismissed.
Costs
awarded to First Defendants of both appeals. (Does not form part of approved
judgment)
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