Arbitron Inc. v Telecontrol Aktiengesellschaft [2006] FCA 1664

FEDERAL COURT OF AUSTRALIA

Arbitron Inc. v Telecontrol Aktiengesellschaft [2006] FCA 1664

ARBITRON INC. v TELECONTROL AKTIENGESELLSCHAFT & ANOR NSD627 OF 2005

EMMETT J

22 NOVEMBER 2006

SYDNEY IN THE FEDERAL COURT OF AUSTRALIA

NEW SOUTH WALES DISTRICT REGISTRY NSD627 OF 2005

BETWEEN: ARBITRON INC

Applicant

AND: TELECONTROL AKTIENGESELLSCHAFT

First Respondent

A.C. NIELSEN (HOLDINGS) PTY LTD (ACN 008 417 874)

Second Respondent

JUDGE: EMMETT J

DATE OF ORDER: 22 NOVEMBER 2006

WHERE MADE: SYDNEY

THE COURT ORDERS THAT:

1. Pending further order, the following orders and directions shall apply to each of the following: (a) Information and documents designated as "Confidential" and disclosed during the course of the inspection at Griffith Hack Lawyers, Sydney on 17 October 2005 including, but not limited to, any notes or reports prepared as a result of the inspection and excluding EP 059 8682 and EP 088 7958 ("Inspection Documents"); (b) Documents designated as "Confidential" in the First Respondent's/Cross Claimant's List of Documents dated 3 March 2006 and in its Supplementary List of Documents dated 28 April 2006 excepting documents numbered 31, 148, 149, 157 (excluding attachments), 162, 165, 169, 170, 174, 194, 198, 206, 207, 208, 209, 210, 212, 214, 215, 218, 240, 241 ("Discovered Documents"); (c) Exhibits "APK-1 CONFIDENTIAL" (excluding EP 059 8682 and EP 088 7958), "APK-2 CONFIDENTIAL" and "APK-3 CONFIDENTIAL" to the affidavit of Andreas Patrick Koschak sworn on 10 May 2006, exhibit "APK-4 CONFIDENTIAL" to the affidavit of Andreas Patrick Koschak sworn on 21 July 2006, exhibit "DB-1 CONFIDENTIAL" to the affidavit of Daniel Battiston sworn on 18 September 2006, exhibit "OS‑1 CONFIDENTIAL" to the affidavit of Olivier Staub sworn on 17 November 2006, exhibit "DJB‑7 Confidential" to the affidavit of David John Bull sworn 29 June 2006, exhibit "DJB‑9 Confidential" to the affidavit of David John Bull sworn 20 September 2006 and exhibit "DJB‑11 Confidential" to the affidavit of David John Bull sworn 30 October 2006 ("Confidential Exhibits"), (collectively referred to as the "Confidential Documents"). 2. The Confidential Documents, their contents and information contained in them, information derived from them or notes taken or reports or other documents generated from them, including copies of such documents as may be made by the Applicant, their counsel, their solicitors on the record, patent attorneys and their retained experts ("Confidential Information"), are confidential to the First Respondent/Cross Claimant and they and all and any information contained in them: (a) must not be disclosed to the Applicant or anyone other than: (i) counsel David Catterns QC and Sophie Goddard, solicitors Simon Williams and Gabriella Rubagotti, each of Spruson & Ferguson Lawyers, the solicitors on the record, and patent attorney Robert Miller of Spruson & Ferguson (each of whom shall be bound by this order) acting for and on behalf of or retained by the Applicant ("the Applicant's legal advisers"); (ii) Eugene Leo Flanagan III; (iii) David John Bull; and (iv) Dr Harvey Holmes; (b) shall not be open to public inspection whilst filed or used in these proceedings; and (c) shall be used only for the purposes of these proceedings. 3. Each of the Confidential Documents and the Confidential Information must be used, handled, kept and stored by the Applicant's legal advisers authorised to hold them on behalf of the Applicant under this order, subject to the above order and to the following: (a) a total of no more than 5 copies shall be made of the Inspection Documents (being also Discovered Documents having numbers 1-7, and 253-259 and exhibit "APK-1 CONFIDENTIAL") such copies to be held and used as follows: (i) 2 copies to be held and used, one by each of counsel David Catterns QC and Sophie Goddard; (ii) 1 copy to be held and used among Simon Williams, Gabriella Rubagotti and Robert Miller; (iii) 1 copy to be kept for viewing by Dr Harvey Holmes, which is to be retained securely at the offices of the Applicant's solicitors; (iv) 1 copy to be kept for viewing by David Bull, which is to be retained securely at the offices of the Applicant's solicitors; (b) no more than 7 copies shall be made of each of exhibit "APK-2 CONFIDENTIAL" and "APK-3 CONFIDENTIAL" and each of the Confidential Exhibits and such copies shall only be provided to the Applicant's legal advisers, David Bull and Dr Harvey Holmes, and only when and if such person bona fide requires a copy for the purposes of review of the First Respondent's evidence or preparation of the Applicant's case in these proceedings; (c) no more than 7 copies shall be made of a redacted copy of each of exhibit "APK-2 CONFIDENTIAL" and "APK-3 CONFIDENTIAL" (as supplied by the solicitors for the First Respondent/Cross Claimant under cover of letter dated 24 May 2006) and such copies shall only be provided to the Applicant's legal advisers, David Bull and Dr Harvey Holmes, and only when and if such person bona fide requires a copy for the purposes of review of the First Respondent's evidence or preparation of the Applicant's case in these proceedings; (d) no more than 4 copies shall be made of each of the Discovered Documents (with the exception of documents numbered 1-7 and 253-259) and such copies shall only be provided to Simon Williams, Gabriella Rubagotti, David Catterns QC and Sophie Goddard; (e) of the copies of the Inspection Documents, Confidential Exhibits and Discovered Documents made, held and used in accordance with sub-paragraphs 3(a), (b), (c) and (d) above, 1 copy of each document or part of the document may be provided to Eugene Leo Flanagan III but only for the purposes and in accordance with the regime set out in paragraph 4 below; (f) the Confidential Documents and the Confidential Information shall be used, handled, kept and stored in such a manner as will at all times preserve their confidentiality; (g) none of the Confidential Documents nor any of the Confidential Information shall without the prior written consent of the First Respondent/Cross Claimant be disclosed to or inspected by any persons other than the Applicant's legal advisers, David Bull, Dr Harvey Holmes and Eugene Leo Flanagan III (in the case of Eugene Leo Flanagan III, only in accordance with the regime set out in paragraph 4 below); (h) if the Confidential Documents and the Confidential Information (to the extent retained by each of the Applicant's legal advisers, David Bull, Dr Harvey Holmes and Eugene Leo Flanagan III Flanagan are not retained in that named person's personal possession, they are to be retained in a secure place under that person's control. 4. The Confidential Documents and Confidential Information may only be provided to, and used by, Eugene Leo Flanagan III in accordance with the following regime: (a) as necessary preconditions to the disclosure of any of the Confidential Documents or Confidential Information to Eugene Leo Flanagan III, that: (i) Eugene Leo Flanagan III Flanagan has first: (1) submitted to the jurisdiction of the Federal Court of Australia ("Court") and provided an undertaking to the Court in the form annexed and marked "A"; and (2) provided a written undertaking in the form annexed and marked "A", and executed all such documents as may be required before a United States notary and a United States court, or carried out such other procedure as may be necessary, so that a breach by him of any of these orders or the written undertaking would constitute contempt of the relevant United States court punishable on the application of one or more of the First Respondent and the Applicant's Australian legal advisers; and the Applicant's solicitors have provided to the Court a description of the steps taken to fulfil the requirements of paragraph 4(a)(i) and confirmation that those steps have been fulfilled; (ii) Senior Counsel for the Applicant has determined that it is necessary for the purpose of obtaining specific instructions for the Applicant's case in these proceedings from Eugene Leo Flanagan III that a part of a Confidential Document or a Confidential Document be seen by Eugene Leo Flanagan III; (b) upon the fulfilment of each of the preconditions specified in subparagraph 4(a), the Applicant's legal advisers may make available to Eugene Leo Flanagan III by a secure means as will maintain the confidentiality of the documents, the Confidential Document or Documents or part identified by Senior Counsel in accordance with subparagraph 4(a)(ii) for the sole purpose of, and only to the extent necessary for, Senior Counsel to obtain the specific instructions determined by him in accordance with subparagraph 4(a)(ii) and only for the time necessary for Eugene Leo Flanagan III adequately to respond; (c) Eugene Leo Flanagan III must return the Confidential Document or Documents or part so provided to the Applicant's legal advisers promptly after having adequately responded to the specific matter on which instructions were sought, such return to be made by a secure means as will maintain the confidentiality of the documents; (d) The process in paragraph 4(a) to 4(c) above may be repeated as necessary from time to time. 5. Simon Williams, the Applicant's solicitor on the record in these proceedings, maintain an accurate record in writing of: (a) each determination of Senior Counsel referred to in paragraph 4(a)(ii) above; (b) the identity of any Confidential Document or part of a Confidential Document sent to Eugene Leo Flanagan III and the date of making that or those documents available to Eugene Leo Flanagan III; (c) the date when each Confidential Document or part of a Confidential Document sent to Eugene Leo Flanagan III is returned to the Applicant's legal advisers. 6. No affidavit filed by or on behalf of the Applicant in these proceedings shall contain any of the Confidential Documents or Confidential Information save in exhibits marked "Confidential Documents and/or Confidential Information (as the case may be) as defined in the order of the Honourable Justice Emmett dated 15 December 2006" to such an affidavit, and each such exhibit shall be confidential to the First Respondent/Cross Claimant and must not be used, inspected or disclosed by the Applicant or its legal advisers except as provided above and shall not be open to public inspection whilst filed or used in these proceedings. 7. Within 28 days of the final determination of these proceedings or any appeal therefrom and on the expiration of any applicable appeal periods, the Applicant's solicitors shall take all necessary steps to retrieve from the Applicant's counsel, patent attorneys and experts all of the Confidential Documents and Confidential Information and deliver up to the First Respondent/Cross Claimant's solicitors, all of the Confidential Documents and the Confidential Information other than such of those documents as constitute instructions to or opinions, reports, notes or memoranda of counsel and solicitors, which such documents will be destroyed by the Applicant's solicitors and notification under oath of such destruction is to be provided to the First Respondent Cross Claimant's solicitors. 8. Each of Simon Williams, Gabriella Rubagotti, David Catterns QC, Sophie Goddard, Robert Miller, David Bull, Dr Harvey Holmes and Eugene Leo Flanagan III remains bound by these orders notwithstanding that any of them leaves the employ of the Applicant's solicitors or ceases to be retained on behalf of the Applicant for these proceedings or leaves this jurisdiction. If any the above named persons so leaves the employ of the Applicant's solicitors, ceases to be retained by the Applicant for these proceedings or leaves the jurisdiction or, in the case of Eugene Leo Flanagan III, leaves the jurisdiction of the United States of America (other than for the purposes of holiday or short term business or professional commitments), the Applicant's solicitors must: (a) deliver up forthwith to the First Respondent/Cross Claimant's solicitors any of the Confidential Documents in that person's possession, and (b) destroy forthwith any Confidential Information in that person's possession and notify under oath the First Respondent/Cross Claimant's solicitors of such destruction. 9. The Applicant file and serve any supplementary affidavits in chief and affidavits in reply on infringement on or before 19 February 2007. 10. The Applicant file and serve any affidavits in answer on validity on or before 19 February 2007. 11. Stands the matter over for further directions on 9 February 2007 at 9:30am. Date: 15 December 2006 _________________________________ Signed on behalf of the Applicant _________________________________ Signed on behalf of the First Respondent _________________________________ Signed on behalf of the Second Respondent