Murex Diagnostics Australia Pty Ltd v Chiron Pty Ltd & Anor Chiron Corp v Murex Diagnostics Australia Pty Ltd & Ors [1996] FCA 802

CATCHWORDS EVIDENCE - attorney's opinion on inventorship given to patent applicant - whether relevant to issue of false suggestion - power to restrict tender under s.136 of the Evidence Act 1995 and reject part of it under s.135. Evidence Act 1995, ss.135, 136 MUREX DIAGNOSTICS AUSTRALIA PTY LIMITED -V- CHIRON PTY LIMITED & ANOR CHIRON CORPORATION -V- MUREX DIAGNOSTICS AUSTRALIA PTY LIMITED & ORS. NG 106 of 1994 Burchett J. Sydney 26 August 1996

IN THE FEDERAL COURT OF AUSTRALIA ) ) NEW SOUTH WALES DISTRICT REGISTRY ) NG 106 of 1994 ) GENERAL DIVISION ) BETWEEN: MUREX DIAGNOSTICS AUSTRALIA PTY LIMITED Applicant AND: CHIRON PTY LIMITED First Respondent AND: ORTHO DIAGNOSTIC SYSTEMS, INC. Second Respondent AND BETWEEN: CHIRON CORPORATION Cross-Claimant AND: MUREX DIAGNOSTICS AUSTRALIA PTY LIMITED First Cross-Respondent AND: SPECIALIST DIAGNOSTICS LIMITED (IN LIQUIDATION) Second Cross-Respondent AND: INTERNATIONAL MUREX TECHNOLOGIES CORPORATION Third Cross-Respondent CORAM: Burchett J. PLACE: Sydney DATE: 26 August 1996 REASONS FOR JUDGMENT BURCHETT J. I now have to deal with the tender of an opinion of United States attorneys, which commences with a ten page section expressing, at that length, the views of the attorneys as to whether Dr Bradley was a co-inventor who should be named

as such, and then continues, following a table of contents section - itself of two pages - with a table of authorities running to many pages, and finally a total of findings and argument of some eighty-odd pages, with many pages added thereto summarising statements of witnesses and annexing other documents. Counsel for Chiron Pty Limited (Chiron) tenders this with a view to meeting what he apprehends may be arguments that might be raised on the issue of false suggestion. The document, of course, is not an opinion about matters of fact on which Chiron Corporation needed to be informed. They knew the facts, because they were the principal participants in them. It is rather an opinion on the conclusions that should be drawn from the facts in point of United States law. As I have indicated, the use that Chiron seeks to make of the opinion is to rebut any element of moral obliquity, or even fraud, which may be inherent in the claim of the Applicant (Murex) based on false suggestion. The use that can be made of an opinion in this way has been discussed in various areas of the law. Criminal law, company law and the tort of malicious prosecution afford obvious examples. A number of the authorities were gathered in paragraph 602 of a small book that Mr S.W. Gibb and I wrote in 1981 entitled "Implications of the Crimes (Taxation Offences) Act 1980". We made reference to the limitation upon the usefulness of such an opinion which is laid bare by the sardonic comment of Bramwell B. in Andrews v Hawley (1857) 26 LJ(Ex.) 323 at 326. "Assuming", he said, "that the defendant did everything on counsel's advice, the evidence shews that the defendant knew more than it appears counsel did." But, depending on the view ultimately taken of the issues falling within a case of false suggestion, it may be that the fact of receipt of a particular opinion should properly be available to assist Chiron. On this aspect of the matter, I was referred in argument to what was said by Fullagar J in The Queen v Commissioner of Patents; Ex parte Martin (1953) 89 CLR 381, and by Lockhart and Gummow JJ in Prestige Group (Australia) Pty Ltd v Dart Industries Inc. (1990) 26 FCR 197. On that basis (that is, that the opinion might bear on any moral element which may be involved in the doctrine of false suggestion), it would be open to me to admit the opinion expressed in the preliminary ten page section of the document tendered, while exercising the power conferred by section 136 of the Evidence Act 1995 to limit the use to be made of it to that one question. As I understand Mr Douglas, he does not contend that it could really, in the final resort, be used for any other purpose. To the extent that it is suggested the volume of supporting documents should go in too, however, I think they would be seriously prejudicial, both to the other side, and to the due administration of justice insofar as they might add greatly to the issues to be considered in the case. This case is extremely complex, and primarily it is being heard on affidavit evidence. Dr Bradley is an ill man who lives overseas. There are statements here as to which he was not cross-examined, or not cross-examined so as to make their tender at this late stage fair to him or to other parties. In any case, the material has been assembled with a view to United States law and practice. In my opinion, this additional material should be rejected upon common law principles, but at any rate a proper exercise of my discretion under section 135 must exclude it under each of the three headings in that section. Accordingly, what I propose to do is to admit the opinion expressed in ten pages, subject to objection, and exercising the power in section 136 to limit the use to be made of it to the one question of whether it in any manner rebuts any subjective element involved in the arguments on the issue of false suggestion. But I reject the balance of the tender. I certify that this and the preceding three (3) pages are a true copy of the Reasons for Judgment herein of his Honour Justice Burchett. Associate: Date: 29 August 1996 Counsel for the Applicant and Mr D.K. Catterns QC the First Cross-Respondent: and Miss K.J. Howard Solicitors for the Applicant Banki, Palombi, and the First Cross-Respondent: Haddock & Fiora Counsel for the Third Dr A.C. Bennett SC and Cross-Respondent: Miss K.J. Howard Solicitors for the Third Banki, Palombi, Cross-Respondent: Haddock & Fiora Counsel for the First and Mr F.M. Douglas QC Second Respondents and the and Mr A.J. Bannon Cross-Claimant: Solicitors for the First and Second Respondents and the Cross-Claimant: Allen Allen & Hemsley Date of hearing: 26 August 1996