Vringo Infrastructure Inc v ZTE (Australia) Pty Ltd (No 3) [2014] FCA 983

FEDERAL COURT OF AUSTRALIA

Vringo Infrastructure Inc v ZTE (Australia) Pty Ltd (No 3) [2014] FCA 983 Citation: Vringo Infrastructure Inc v ZTE (Australia) Pty Ltd (No 3) [2014] FCA 983

Parties: VRINGO INFRASTRUCTURE, INC. v ZTE (AUSTRALIA) PTY LTD (ACN 110 578 428)

File number(s): NSD 1010 of 2013

Judge(s): YATES J

Date of judgment: 1 September 2014

Catchwords: PRACTICE AND PROCEDURE – confidentiality regime between the parties – application to extend confidentiality regime to include in-house counsel – whether confidentiality regime should be extended – factors relevant to whether persons should be included in confidentiality regime – balance between risk of inadvertent or accidental disclosure and need for ability to seek appropriate advice and provide informed instructions.

Cases cited: AstraZeneca AB v Medis Pharma Pty Ltd [2014] FCA 549

Date of hearing: 1 September 2014

Place: Sydney

Division: GENERAL DIVISION

Category: Catchwords

Number of paragraphs: 26

Counsel for the Applicant: Ms C L Cochrane

Solicitor for the Applicant: Allens Linklaters

Counsel for the Respondent: Mr N R Murray

Solicitor for the Respondent: Davies Collison Cave Law

IN THE FEDERAL COURT OF AUSTRALIA NEW SOUTH WALES DISTRICT REGISTRY GENERAL DIVISION NSD 1010 of 2013

BETWEEN: VRINGO INFRASTRUCTURE, INC.

Applicant

AND: ZTE (AUSTRALIA) PTY LTD (ACN 110 578 428)

Respondent

JUDGE: YATES J DATE OF ORDER: 1 SEPTEMBER 2014 WHERE MADE: SYDNEY

THE COURT ORDERS THAT:

1. Nothing in this Order will operate as a waiver of any right of a party to this Proceeding (Party) pursuant to statute or any regulation (including any right under the rules of this Court) or the common law, including without limitation any claim of privilege. Suppression and Non-Publication Order 2. Pursuant to section 37AF of the Federal Court of Australia Act 1976 (Cth), and on the basis that this Order is necessary to prevent prejudice to the proper administration of justice, this Order applies to any document: (a) disclosed by or on behalf of a Party (Discloser) to another Party (Disclosee), or a person who receives the document on behalf of the Disclosee, in relation to this Proceeding, and (b) which the Court has ordered, on the application of the Discloser, is subject to this Order, until further Order. Interim Suppression and Non-Publication Order 3. Pursuant to section 37AF of the Federal Court of Australia Act 1976 (Cth), and on the basis that this Order is necessary to prevent prejudice to the proper administration of justice, this Order applies to any document: (a) disclosed by or on behalf of the Discloser, and (b) which the Parties have agreed in writing is confidential and subject to this Order, until such time as a Party seeks in the Proceeding to tender or read the document or otherwise rely in Court upon the contents thereof or information contained therein or information derived or notes taken or reports or other documents generated therefrom, including copies of such documents, at which time the Discloser must satisfy the Court that an order in accordance with paragraph 2 of this Order should be made in relation to the document. 4. In this Order, a document that falls within paragraphs 2 or 3 will be referred to as a Discloser Confidential Document. Discloser Confidential Material 5. Each Discloser Confidential Document, the contents thereof and information contained therein or information derived or notes taken or reports or other documents generated therefrom, including copies of such documents as may be made by the persons referred to below (Discloser Confidential Information) will be confidential in this Proceeding, and they and all and any information contained in them: (a) may only be disclosed to: (i) external solicitors and patent attorneys for the Disclosee; (ii) external counsel for the Disclosee; (iii) paralegals, litigation support personnel, computer services personnel, secretarial staff and other administrative staff employed or engaged by those persons named in sub-paragraphs 3(a)(i) - (ii) (inclusive); (iv) subject further to paragraph 8 of this Order, in relation to any Discloser Confidential Document where the Applicant is the Disclosee: A. Mr Jason Charkow, Senior Intellectual Property Counsel; and B. Dr Saswat Misra, Intellectual Property Counsel, (Disclosee Representatives); (i) subject further to paragraph 8 of this Order, any independent expert nominated on behalf of the Disclosee (Disclosee Expert); (ii) subject further to paragraph 7 of this Order, employees of third party legal process outsourcing providers retained by or on behalf of the Disclosee in relation to this Proceeding (Disclosee LPOs); and (iii) such other persons as to whom the Discloser consents in writing (provided that the Discloser must not unreasonably withhold consent) or the Court may order, (collectively, Disclosee Disclosure Persons); (a) will not be open to public inspection, disclosed in open Court or, subject to paragraphs 13 and 14 of this Order, disclosed in the open part of any Court transcript; and (b) may be used only for the purposes of this Proceeding. 6. External solicitors for the Disclosee and any Disclosee Expert to whom any Discloser Confidential Documents or Discloser Confidential Information (hereafter, collectively referred to as Discloser Confidential Material) is disclosed under this Order will be bound by this Order. 7. Discloser Confidential Material may only be disclosed to Disclosee LPOs where such persons and their employer have, prior to disclosure, each signed a confidentiality undertaking to maintain the confidentiality of the Discloser Confidential Material in the form set out in the Schedule to this Order (Confidentiality Undertaking). The Disclosee will at all times be responsible for ensuring the confidentiality of any Discloser Confidential Material disclosed to Disclosee LPOs. 8. Discloser Confidential Material may only be disclosed to Disclosee Representatives or Disclosee Experts where such persons have, prior to disclosure, each signed a Confidentiality Undertaking. 9. Discloser Confidential Material will be used, handled, kept and stored by the Disclosee Disclosure Persons subject to the following directions: (a) Discloser Confidential Material will be used, handled, kept and stored in such a manner as will at all times preserve its confidentiality; (b) no copies of Discloser Confidential Material will be made by any Disclosee Disclosure Persons except as may be reasonably required for the purpose of this Proceeding; (c) subject to sub-paragraph (b) above, any copies of Discloser Confidential Material made by or on behalf of any of the Disclosee Disclosure Persons will be subject to the provisions of this Order relating to Discloser Confidential Material (as if such copies were Discloser Confidential Material); and (d) no Discloser Confidential Material will, without the prior written consent of the Discloser, be disclosed to or inspected by any persons other than the Disclosee Disclosure Persons. Confidentiality - General 10. No affidavit filed in this Proceeding by or on behalf of the Disclosee, may contain any Discloser Confidential Material, save in an annexure to such an affidavit marked 'Confidential' and such annexures will be confidential to the relevant parties, and will not be used, inspected or disclosed except as provided in this Order. 11. No written submissions filed in this Proceeding by or on behalf of the Disclosee, may contain any Discloser Confidential Material, save in an annexure to such submissions marked 'Confidential' and such annexures will be confidential to the relevant parties, and will not be used, inspected or disclosed except as provided in this Order. 12. Nothing in this Order will prevent disclosure of any Discloser Confidential Material to: (a) any judge, employee or other personnel of this Court; or (b) any person associated with recording transcript at any hearing in this Proceeding, for the purposes of this Proceeding. 13. Nothing in this Order will prevent the Disclosee from disclosing Discloser Confidential Material at any interlocutory or final hearing in this Proceeding, provided that any oral disclosure is made in closed Court. 14. Where Discloser Confidential Material is orally disclosed in any interlocutory or final hearing in this Proceeding, the transcript of that portion of the hearing will be confidential, with access thereto limited to the persons who have liberty to view such material under this Order. 15. Subject to paragraphs 16 and 17 of this Order, within 28 days after the final determination of this Proceeding, or any appeal therefrom or on the expiry of any applicable appeal period (whichever is the later) (Final Determination) the Disclosee's solicitors will take all necessary steps to retrieve from any Disclosee Expert, Disclosee Representatives and Disclosee Service Provider, in the case of Discloser Confidential Material all Confidential Material disclosed to or in the possession, custody or control of such persons. 16. Within 28 days of Final Determination the Disclosee's solicitors will take all necessary steps to ensure that any Disclosee Expert or Disclosee Service Provider has permanently deleted all Discloser Confidential Material which has been stored electronically by such persons. 17. Within 45 days of Final Determination the Disclosee's solicitors will certify to the Discloser's solicitors that they have carried out the steps set out in paragraphs 12 and 13. 18. Subject to paragraph 1, nothing in this Order will prevent disclosure of any Confidential Material beyond the terms of this Order if the Discloser consents in writing to such disclosure, or if the Court orders such disclosure. 19. Subject to paragraph 1, no obligation of confidentiality shall exist, or continue to exist as the case may be, in respect of any material that: (a) becomes publicly available or public knowledge otherwise than through the default of any person under an obligation of confidence; (b) appears in any patent or other printed and published document otherwise than through the default of any person under an obligation of confidence; (c) is subsequently received from a third party not under any obligation of confidentiality; (d) the parties to this Proceeding agree, or the Court determines, is public knowledge; or (e) in relation to which, the Discloser has, by notice in writing, notified the Disclosee that the relevant material is no longer subject to these Orders. 20. No admission Subject to paragraphs 2, 3 and 19, a designation of, or failure to designate, material as Discloser Confidential Material, or its treatment in conformity with, or failure to treat in conformity with, such designation, will not be construed as an admission or agreement by any Party that the designated material does or does not constitute or contain any Discloser Confidential Material. 21. The provisions of this Order will continue after the final determination of this Proceeding and this Court will retain jurisdiction to deal with any issues relating to this Order including without limitation, its enforcement. 22. There will be liberty to apply on 3 days' written notice. SCHEDULE Undertaking I, [Name] of [address], [qualifications] do hereby acknowledge that I have read the Order dated [insert date] 2014 (Order) made in respect of Discloser Confidential Material (as defined in the Order) in Proceeding No NSD 1010 of 2013 before the Federal Court of Australia (this Proceeding) and I HEREBY UNDERTAKE the following to the Court with respect to the Discloser Confidential Material. 1. Each document comprising any of the Discloser Confidential Material which comes into my possession: (a) will, subject to paragraphs 2 and 3 of the Order, be used by me only for the purposes of this Proceeding; (b) will be kept confidential by me at all times; and (c) will not be disclosed by me to the Disclosee (as defined in paragraph 2 of the Order), the Disclosee's solicitors, in-house lawyers, counsel or any independent experts retained on behalf of the Disclosee or any other person, except as provided in the following paragraphs. 2. Each document comprising or containing any Discloser Confidential Material which comes into my possession will be used, handled, kept and stored by me in such manner as will keep it at all times safe from disclosure except as may be required for me when working with: (a) the Disclosee's external solicitors and external counsel; (b) the Disclosee's Representatives; (c) paralegals, litigation support personnel, computer services personnel, secretarial staff and other administrative staff employed or engaged by those persons named in sub-paragraph 2(a); (d) legal process outsourcing providers engaged by the Disclosee; (e) any independent experts (unless I am an independent expert); and (f) such other person as the Parties to this Proceeding may agree or as the Court may order, or as may be required (but subject to any order for protection of the confidentiality of the same, including the Order) in my giving evidence in this Proceeding. 3. I will not make any copy of any document comprising or containing any Discloser Confidential Material which comes into my possession (Copy Confidential Material) except as may be reasonably required by me for the purposes stated in paragraph (2) above. 4. Subject to paragraph (3) above, I will make and keep a written record of all Copy Confidential Material generated by me from any hard copy Discloser Confidential Material which comes into my possession. 5. I will treat all Copy Confidential Material and information derived or notes taken or reports or other documents generated from the Discloser Confidential Material by me as subject to the obligations contained in this Undertaking. 6. Within 7 days of receiving notice of Final Determination of this Proceeding in accordance with paragraph 15 of the Order, I will: (a) deliver up to the solicitors of the Disclosee all hard copies (including computer disks) such Discloser Confidential Material and documents described in the preceding paragraph as are in my possession; and (b) permanently delete any Discloser Confidential Material stored in any electronic storage facility owned or used by me (subject always to paragraph (3) above) so as not to be retrievable by any means, and confirm in writing to the Disclosee's solicitors that I have done so within the time stated in this paragraph. Dated the day of …………………………………….. …………………………………….. Signature Signature of witness …………………………………….. …………………………………….. Printed name of person giving undertaking Printed name of witness …………………………………….. Printed address of witness