FEDERAL COURT OF AUSTRALIA Reckitt Benckiser Healthcare (UK) Ltd v Glaxosmithkline Australia Pty Ltd (No 4) [2014] FCA 810 Citation: Reckitt Benckiser Healthcare (UK) Ltd v Glaxosmithkline Australia Pty Ltd (No 4) [2014] FCA 810 Parties: RECKITT BENCKISER HEALTHCARE (UK) LIMITED v GLAXOSMITHKLINE AUSTRALIA PTY LTD ABN 47 100 162 481 File number: NSD 734 of 2013 Judge: RARES J Date of judgment: 3 June 2014 Legislation: Evidence Act 1995 (Cth) Federal Court Rules 1979 (Cth) Federal Court Rules 2011 (Cth) Cases cited: GlaxoSmithKline Australia Pty Ltd v Reckitt Benckiser Healthcare (UK) Ltd (2013) 305 ALR 363 referred to Lexmark International Inc v Boomerang Imaging Supplies Pty Limited (2001) 112 FCR 331 applied Reckitt Benckiser Healthcare (UK) Ltd v GlaxoSmithKline Australia Pty Ltd (No 2) (2013) 103 IPR 472 referred to Date of hearing: 3 June 2014 Place: Sydney Division: GENERAL DIVISION Category: No catchwords Number of paragraphs: 13 Counsel for the Applicant: Ms K S Howard SC with Mr J S Cooke and Ms R White Solicitor for the Applicant: Corrs Chambers Westgarth Counsel for the Respondent: Mr R J Webb SC with Mr H P T Bevan Solicitor for the Respondent: Norton Rose Fulbright Australia IN THE FEDERAL COURT OF AUSTRALIA NEW SOUTH WALES DISTRICT REGISTRY GENERAL DIVISION NSD 734 of 2013 BETWEEN: RECKITT BENCKISER HEALTHCARE (UK) LIMITED Applicants AND: GLAXOSMITHKLINE AUSTRALIA PTY LTD ABN 47 100 162 481 Respondent JUDGE: RARES J DATE: 3 JUNE 2014 PLACE: SYDNEY REASONS FOR JUDGMENT – RULING ON EVIDENCE (REVISED FROM THE TRANSCRIPT) 1 On the second day of the final hearing, Reckitt Benckiser Healthcare (UK) Limited has objected to the admissibility of a statement by William Hunter, the expert of GlaxoSmithKline Australia Pty Ltd, in his evidence. Mr Hunter referred to a measurement that he had made for the purposes of expressing an opinion as to whether a feature of the bottle plug in Glaxo's accused products could or could not be characterised as a sleeve form with a flared portion at its upper end into which the distal end of the syringe barrel passes within the meaning of claim 1 of the patent in suit. This claim is set out in earlier judgments: Reckitt Benckiser Healthcare (UK) Ltd v GlaxoSmithKline Australia Pty Ltd (No 2) (2013) 103 IPR 472; reversed GlaxoSmithKline Australia Pty Ltd v Reckitt Benckiser Healthcare (UK) Ltd (2013) 305 ALR 363. 2 Mr Hunter said, in an affidavit that he originally made on 2 July 2013 for the second interlocutory injunction application, that he had removed the bottle plug from the bottle of one accused product, further considered its geometry and took measurements of its dimensions using a digital vernier caliper. He said: "I measured this radius as being about 0.5 millimetres." 3 Subsequently, in the joint experts' report prepared on 22 May 2014 between Mr Hunter and Robert Tiller, Reckitt's expert, Mr Hunter relied on that measurement in outlining the brief reasons why he and Mr Tiller disagreed about certain matters including the existence of the flared portion. Mr Tiller said in response, for the first time in what appears in evidence, that he did not accept that Mr Hunter's measurement of 0.5 millimetre radius was accurate, adding: "It is very difficult to measure and when visually compared proportionally to the wall thickness of the sleeve, the fillet radius is approximately the same size as the wall thickness of the sleeve." 4 Mr Tiller opined that the measurement identified by Mr Hunter was, in fact, probably larger, and went on to say that he had tried to do his own ad hoc experiment to deal with that matter in the course of preparing the joint report. The issues 5 Reckitt argued that the measurement and Mr Hunter's reliance on it amounted to an experiment for the purposes of r 34.50(1) of the Federal Court Rules 2011 (Cth) and that, by reason of r 34.50(2)(a), the evidence was inadmissible. Glaxo argued that the evidence was not of an experiment and that, if it were, it should be given leave to adduce it in accordance with r 34.50(2)(b). Relevantly, r 34.50 provides: "34.50 Experimental proof as evidence (1) If a party (the proponent) proposes to tender, as evidence in a proceeding, experimental proof of a fact, the proponent must apply for orders in relation to the experimental proof, including orders about any of the following: (a) the service on other parties of particulars of the experiment and of each fact that the proponent asserts is, will or may be proved by the experiment; (b) any persons who must be permitted to attend the conduct of the experiment; (c) the time when, and the place where, the experiment must be conducted; (d) the means by which the conduct and results of the experiment must be recorded; (e) the time by which any other party (the opponent) must notify the proponent of any grounds on which the opponent will contend that the experiment does not prove a fact that the proponent asserts is, will or may be proved by the experiment. (2) Evidence of the conduct and results of the experiment is admissible in the proceeding, only: (a) if the proponent has complied with subrule (1) and any orders given under that subrule; or (b) with the leave of the Court. …" 6 Emmett J discussed the analogue of r 34.50 in the previous version of the Federal Court Rules 1979 (Cth) in Lexmark International Inc v Boomerang Imaging Supplies Pty Limited (2001) 112 FCR 331 at 333 [6]. He said that the purpose of the earlier rule, which is in substantively identical terms to the present one, was: "to ensure that all parties have an adequate opportunity to challenge the validity of any experiment or test intended to be relied upon and to avoid wasteful duplication by that party of an experiment that can be shown to be valid. A difficulty that might arise with a test or experiment is that the results might not be verifiable, unless an observer is present when the procedures are undertaken." 7 His Honour also said (112 FCR at 334 [10]): "An experiment may be defined as follows: '1. The action of trying anything; a test, trial … 3. An action or operation undertaken in order to discover something unknown, to test a hypothesis, or establish or illustrate some known truth.' – New Shorter Oxford English Dictionary. '1. A test or trial; a tentative procedure; an act or operation for the purpose of discovering something unknown or testing a principle." – Macquarie Dictionary." Consideration 8 In my opinion, what Mr Hunter did amounted to an experiment with the meaning of the rule. It was an action or operation undertaken to test an hypothesis, to establish some known truth or for the purposes of testing a principle. The imprecision of Mr Hunter's work is exemplified in his statement that described the measurement he took as being "about 0.5 millimetres". 9 Glaxo did not provide Mr Hunter with its specifications for the production of the accused bottle plug forming part of the accused product. Those specifications would have enabled him to have expressed an opinion on the basis of identified manufacturing parameters that could then have been dealt with by any evidence that Mr Tiller might have been asked to give in response. 10 The imprecision of Mr Hunter's measurement, and the difficulties that Mr Tiller has referred to in dealing with it, are matters that affect the exercise of any discretion to grant leave to rely upon this evidence at this stage of the trial. Reckitt had identified, in its written submissions of 27 May 2014, that it would object to this evidence from Mr Hunter on the basis that it was an experiment and that it was not performed in accordance with the procedures outlined in r 34.50(1). 11 Having regard to the imprecise nature of Mr Hunter's evidence and the difficulties which Mr Tiller had with it, I am of opinion that I should not, at this stage, grant Glaxo leave to rely on this evidence. The evidence is otherwise inadmissible by reason of the operation of r 34.50(2)(a). As I have said, there was a clear, easy path through which to prove whatever was sought to be drawn about the accused product if its precise measurements and dimensions were relevant. There was nothing in the patent in suit to indicate that a particular measurement for a flare was or was not required. Indeed, the patent is bereft of reference to measurements or angles. Rather, it speaks in general terms of a flared portion, being a matter which will need to be established in one way or another on the proper construction of the patent and by evidence that may be admissible on that issue. 12 In my opinion, the probative value of Mr Hunter's approximation and reliance on it in circumstances where the experts are not able to identify the common ground as to the objective facts of whatever measurement is appropriate does not justify its admission into evidence. If this evidence were allowed, it would also cause or result in an undue waste of time in the proceedings: see s 135 of the Evidence Act 1995 (Cth). Conclusion 13 For these reasons, I decline to grant Glaxo leave to rely on, and thus reject, the sentence in Mr Hunter's affidavit: "I measured this radius as being about 0.5 millimetres." I certify that the preceding thirteen (13) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Rares. Associate: Dated: 1 August 2014