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Pfizer Ireland Pharmaceuticals v Eli Lilly and Co

(CA 8/05, 8th December 2005)

In the course of patent infringement and patent revocation proceedings, the defendant (Lilly) sought orders for the production and inspection of three documents. The disputed documents were part of a series disclosed in the plaintiffs' list of documents referring to investigations by Pfizer to ascertain whether a field of use claim might be filed in respect of its compound sildenafil citrate. The disputed documents summarised responses to a Pfizer in-house patent agent from patent agents in a series of different jurisdictions. Edited versions had been supplied to the defendants and the court showing the headings of the summary of responses but not the contents of the responses.

Lilly contended that the whole of the disputed documents including all the responses from foreign patent agents were relevant and the Court should use its power to inspect the documents if there was any doubt as to relevance. In relation to Pfizer's claim to patent attorney privilege in respect of the New Zealand content of the documents, Lilly contended that section 34 of the Evidence Amendment Act (No 2) 1980 did not protect this information because section 34(4) provides that "protected information or advice" means information or advice "relating to any patent . . . or to . . . any application in respect of a patent". Lilly contended that, as the patent attorney advice had been sought in advance of any patent application being filed, there was no application to which the advice from the New Zealand patent attorneys could relate.

As an alternative, Lilly argued that if privilege pertained, Pfizer had waived this. The disputed documents were part of a continuum and privilege should be waived on fairness grounds pursuant to the "cherry picking" principles in Nea Karteria Maritime Co Ltd v Atlantic & Great Lakes No 2 [1981] Com LR 138. Finally Lilly argued that, if privilege as to the New Zealand content of the disputed documents was upheld, the balance of the information of the documents should be produced on the grounds that it was relevant and not privileged.

Pfizer contended that:
(a) In so far as the documents contained information and advice from New Zealand patent attorneys this was relevant but privileged under the patent attorney privilege in section 34. The advice provided by its New Zealand patent attorneys was clearly intended as a prelude to a PCT patent application lodged soon after the disputed documents and on its face "related" to that intended application. It further pointed to the absurdity of an interpretation which would require a client to file an application for a patent before advice on it or in respect of it could be privileged. It was a very common experience that substantial advice is sought from local advisers before the application is filed so that a purposive construction of section 34(4) was required.

Pfizer contested the claim to waiver of privilege or "cherry picking". It had given discovery as required by the High Court Rules and had consistently maintained its claim to confidentiality and privilege. It had not sought to deploy or use or rely on the disputed documents.
(b) The documents were not relevant insofar as they contained information or advice from overseas patent attorneys. That advice had no relevance to the current proceedings which were directed to Pfizer's New Zealand patents.

The High Court dismissed the discovery application holding that:

Relevance
(i) As to relevance, the only relevant parts of the disputed documents were those relating to advice from New Zealand patent attorneys. The responses from agents in other jurisdictions as to the possibility of registering broad field of use claims in those jurisdictions did not have any or sufficient relevance to the matters in issue.

Patent Attorney privilege
(ii) As to patent attorney privilege in section 34 the words . . . relating to any patent . . . or any application in respect of a patent . . . whether or not the information or advice relates to a question of law" were sufficiently broad to include under the ambit of "protected information or advice", information or advice that relates to an application in its putative or formative stages. Here the communication "related to" the patents in suit.

The advice was sought and given in the context of the intended prosecution of the PCT patent application.

Waiver of privilege
(iii) References in material properly disclosed on discovery to the fact that Pfizer had sought and received advice from its New Zealand patent attorneys did not constitute use or deployment of the privileged advice. Reference to the existence of privileged material did not enable Lilly to access the substance and content of the advice (in respect of which Pfizer claimed privilege.
(iv) The so called rule against "cherry picking" did not assist Lilly. Here Pfizer had not sought to use or deploy the disputed documents. It had simply disclosed a sequence of relevant communications and claimed that privilege to which it was entitled in relation to the New Zealand patent attorney information and advice. There had been no collateral or imputed waiver of privilege.