FEDERAL COURT OF AUSTRALIA Pfizer Ireland Pharmaceuticals v Samsung Bioepis Au Pty Ltd [2017] FCA 573 File number: NSD 532 of 2017 Judge: NICHOLAS J Date of judgment: 24 May 2017 Catchwords: PRACTICE AND PROCEDURE – whether extension of time within which to apply for leave to appeal should be granted – where modest delay – where respondent did not assert application for leave to appeal was untenable Legislation: Federal Court Rules 2011 (Cth) r 35.14 Cases cited: AHC16 v Minister for Immigration and Border Protection [2017] FCA 152 Décor Corporation Pty Ltd v Dart Industries Inc (1991) 33 FCR 397 FAI General Insurance Company Limited v Southern Cross Exploration NL (1988) 165 CLR 268 Gallo v Dawson (1990) 93 ALR 479 Hunter Valley Developments Pty Ltd v Minister for Home Affairs and Environment (1984) 3 FCR 344 Mehmood v Attorney-General of the Commonwealth [2013] FCA 406 Pfizer Ireland Pharmaceuticals v Samsung Bioepis AU Pty Ltd [2017] FCA 285 Skinner v Commonwealth of Australia [2012] FCA 1194 Date of hearing: 24 May 2017 Registry: New South Wales Division: General Division National Practice Area: Intellectual Property Sub-area: Patents and associated Statutes Category: Catchwords Number of paragraphs: 13 Counsel for the Applicants: Mr D Shavin QC with Ms CL Cochrane Solicitor for the Applicants: DLA Piper Counsel for the Respondent: Mr DK Catterns QC with Mr D Larish Solicitor for the Respondent: Ashurst ORDERS NSD 532 of 2017 BETWEEN: PFIZER IRELAND PHARMACEUTICALS First Applicant WYETH LLC Second Applicant PFIZER AUSTRALIA PTY LTD Third Applicant AND: SAMSUNG BIOEPIS AU PTY LTD ACN 611 890 094 Respondent JUDGE: NICHOLAS J DATE OF ORDER: 24 May 2017 THE COURT ORDERS THAT: 1. The time for the applicants to file an application for leave to appeal be extended to 10 April 2017. 2. The costs of the applicants' application for an extension of time be costs in the application for leave to appeal or, if leave to appeal is granted, in the appeal. Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011. REASONS FOR JUDGMENT (Revised from Transcript) NICHOLAS J: 1 Before me is an application made by the applicants seeking an extension of time within which to seek leave to appeal against an order made on 21 March 2017 dismissing their application for preliminary discovery (see Pfizer Ireland Pharmaceuticals v Samsung Bioepis AU Pty Ltd [2017] FCA 285). In accordance with r 35.13 of the Federal Court Rules 2011 (Cth) ("the FCRs") the application for leave to appeal was required to be filed within 14 days after the order for dismissal was made, ie. by 4 April 2017. Instead, the present application, together with a number of affidavits in support, was filed and served on 10 April 2017, ie. six days, or four business days, later. 2 Rule 35.14(3) of the FCRs provides that an application for an extension of time must be accompanied by: (a) the judgment or order from which leave to appeal is sought; (b) the reasons for the judgment or order, if published; (c) an affidavit stating: (i) briefly but specifically, the facts on which the application relies; and (ii) why the application for leave to appeal was not filed within time; and (d) a draft notice of appeal that complies with rules 36.01(1) and (2); (e) a statement by the applicant of whether the applicant wants to have the application considered without oral argument. 3 Rule 35.14 is not itself the source of the discretion to grant an extension of time. So far as the FCRs are concerned, the source of the discretion to make an order extending time is r 1.39 which relevantly provides that the Court may extend a time fixed by the FCRs after it has expired. 4 The principles governing an application for an extension of time are well settled and not in dispute (see Hunter Valley Developments Pty Ltd v Minister for Home Affairs and Environment (1984) 3 FCR 344 at 348-349 per Wilcox J and Mehmood v Attorney-General of the Commonwealth [2013] FCA 406 at [3]-[6] per Foster J). The considerations that are usually relevant to the exercise of the discretion for an extension of time to apply for leave to appeal include: (a) the length of the delay; (b) whether the applicant has provided an acceptable explanation for the delay; (c) whether there is any prejudice to the respondent; and (d) the merits of the proposed application for leave to appeal. 5 I have already described the length of the delay which was modest. The respondent does not assert that it will suffer prejudice if an extension of time is granted or that the proposed appeal is untenable. Further, the parties were agreed that this is not a case in which it is appropriate to embark upon any more detailed consideration of the merits of the application for leave to appeal which, in the absence of any submission to the contrary, I will assume for the purposes of the present application, is reasonably arguable (see Décor Corporation Pty Ltd v Dart Industries Inc (1991) 33 FCR 397 at 398-399 and AHC16 v Minister for Immigration and Border Protection [2017] FCA 152 at [16] per Katzmann J). 6 The applicants' explanation for their delay is provided in two affidavits of Mr Silvestri, an Assistant General Counsel at Pfizer Inc, who is based in New York, and who at all relevant times has been responsible on behalf of the applicants for making decisions and giving instructions in relation to the proceeding for preliminary discovery and, I infer, any proposed application for leave to appeal the primary judge's decision. 7 Mr Silvestri's affidavits explain that he fell ill on Saturday, 1 April 2017 and was absent from work on medical advice he received on Sunday, 2 April 2017 until Thursday, 6 April 2017 (New York time) or Friday, 7 April 2017 (Sydney time). The key paragraph to Mr Silvestri's affidavit evidence appears in para 10 of his second affidavit in which he states (inter alia) that he could not undertake a proper analysis of the judgment or the proposed grounds of appeal and reach a decision on behalf of the applicants whilst he was ill, on medication and under medical advice to stay at home. The application for an extension of time was filed on Monday, 10 April 2017, being the first business day after Mr Silvestri returned to work. 8 The basis upon which the respondent opposes the application for an extension of time is that the applicants have not provided a full explanation for the failure to file the application for leave within time. The respondent submitted, in one of two written submissions upon which it relied, that this is a threshold requirement for the grant of an extension of time within which to file an application for leave to appeal. 9 The respondent's submission does not reflect the language of the FCRs or the effect of the relevant authorities and Mr Catterns QC, who appeared for the respondent, was right to acknowledge as much in his oral submissions. The discretion arising under r 1.39 to grant an extension of time is a broad one that is constrained only by the purpose for which it is conferred – namely, to relieve against injustice – and the requirement that it be exercised judicially (see Skinner v Commonwealth of Australia [2012] FCA 1194 at [9]-[11] per Flick J, Gallo v Dawson (1990) 93 ALR 479 at 480 per McHugh J and FAI General Insurance Company Limited v Southern Cross Exploration NL (1988) 165 CLR 268 at 283-284 per Wilson J). 10 In my opinion, Mr Silvestri's affidavits meet the requirements of r 35.14(3) in that they state why the application for leave to appeal was not filed within time. Rule 35.14(3) does not require, expressly or impliedly, that the accompanying affidavit contain a "full explanation" of the delay. The extent to which an applicant for leave must explain its delay will depend on the circumstances of the case. A lengthy delay may call for a much more detailed explanation than a modest delay such as occurred in this case. Further, there is nothing to preclude a court granting an extension of time even if it considers the explanation for the delay is unsatisfactory if other considerations relevant to the exercise of the discretion to grant an extension of time favour the making of such an order. 11 The respondent submitted that Mr Silvestri's evidence does not explain what, if any, steps were taken on behalf of the applicants with respect to any proposed application for leave to appeal before Mr Silvestri fell ill. This submission is correct so far as it goes. However, accepting that Mr Silvestri's explanation for the delay is not as detailed or comprehensive as it might have been, and that Mr Silvestri has not explained what consideration, if any, was given to the matter before he fell ill, the question that remains is whether, having regard to this and all other relevant considerations, the interests of justice favour the granting of the short extension of time that is sought. In all the circumstances, including the modest duration of the delay, I think an extension of time should be granted. 12 The time for the applicants to file an application for leave to appeal will be extended to 10 April 2017. The costs of the application for an extension of time are to be costs in the application for leave to appeal or, if leave to appeal is granted, in the appeal. 13 Orders accordingly. I certify that the preceding thirteen (13) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Nicholas. Associate: Dated: 24 May 2017