Pre-action discovery application difficult to stomach for potential respondent to patent infringement action
Peter Heerey AM, QC, Tom Cordiner & Alan Nash
Correspondents for South Australia, Victoria and Western Australia
Note: Where any of the barristers were involved in a case reported below and the matter is still running, or potentially so, the other correspondents have taken the role of reporting that case.
AstraZeneca is the patentee of a proton pump inhibitor marketed in Australia as NEXIUM as a treatment for gastric reflux and other stomach acid problems. In late 2013, it sought and obtained pre-action discovery of certain documents submitted by Alphapharm to the Therapeutic Goods Administration in relation to a product, NOXICID, that treats similar conditions. By the present application, AstraZeneca sought pre-action discovery of other documents submitted to the TGA and supporting documentation, and delivery of samples of various NOXICID products.
Justice Besanko accepted AstraZeneca’s expert’s opinion that the original set of discovered documents was insufficient to allow a firm conclusion on key aspects of the process by which the active ingredient in NOXICID was created. His Honour also cited with approval the Full Court’s decision in Optiver Australia Pty Ltd v Tibra Trading Pty Ltd and Others  FCAFC 133, (2008) 169 FCR 435 (a decision under the previous Federal Court Rules), to the effect that an application for pre-action discovery is not defeated simply because an applicant has enough information to craft a “pleadable case”; a person may have a pleadable case, but still not sufficient information upon which to decide whether the cost and expense of litigation is worthwhile.
In relation to the application for delivery of samples, however, his Honour declined to make the orders sought by AstraZeneca. AstraZeneca’s expert conceded that he would require further information to formulate a testing protocol, and accordingly his Honour was not satisfied of the utility and time and costs involved in the testing of samples of the NOXICID products. It appears, however, that it would be open for AstraZeneca to revisit that application once it has had the opportunity to digest the additional documents ordered to be discovered by Alphapharm.