Glaxo Wellcome UK Ltd (t/a Allen & Hanburys) v Sandoz Ltd
| Jurisdiction | England & Wales |
| Judge | Chief Master Marsh |
| Judgment Date | 25 October 2018 |
| Neutral Citation | [2018] EWHC 2747 (Ch) |
| Date | 25 October 2018 |
| Court | Chancery Division |
| Docket Number | Case No: HC-2015-005005 |
[2018] EWHC 2747 (Ch)
IN THE HIGH COURT OF JUSTICE
BUSINESS AND PROPERTY COURTS
OF ENGLAND AND WALES
INTELLECTUAL PROPERTY LIST
Rolls Building, Fetter Lane
London EC4A 1NL
Chief Master Marsh
Case No: HC-2015-005005
Tom Hickman (instructed by Stephenson Harwood LLP) for the Claimants
Martin Howe QC and Iona Berkeley (instructed by White & Case LLP) for the 1 st to 5 th Defendants
Hearing dates: 25 September 2018
Judgment Approved
Submissions were made about two issues relating to privilege at a case management conference on 25 September 2018. The first issue is whether the 1 st to 4 th defendants (“the Sandoz Defendants”) are entitled to withhold inspection of two documents they claim are subject to legal advice privilege. Their claim to privilege has been challenged by the claimants under CPR 31.19(5). The second issue concerns a document which the Sandoz Defendants say is subject to litigation privilege and was disclosed by mistake. They seek relief under CPR 31.19(20) preventing use of the document. Before dealing with those issues, I will briefly set out the relevant background.
The claimants sue the Sandoz Defendants for passing off their generic inhaler product as the claimants' (now out of patent) “Seretide Accuhaler” inhaler. The Accuhaler product has achieved worldwide sales of approximately £62 billion since its launch in 1999. The Sandoz Defendants' product, named “AirFluSal Forspiro”, was launched in the United Kingdom in 2015 and elsewhere internationally variously from 2014. Both products are prescription only and are designed to deliver a combination of drugs for the treatment of chronic obstructive pulmonary disease (COPD) and severe asthma. They are marketed and sold as boxed inhalers. The get up for each product can be seen in pictorial form in paragraph 3 of the judgement of Mr Rosen QC, sitting as a deputy High Court judge, dated 3 July 2018.
The claimants allege that the Sandoz Defendants chose AirFluSal Forspiro's get up with the deliberate aim of deceiving or creating confusion in the mind of the relevant public. The Sandoz Defendants accept that the question of whether the public are deceptively confused may take into account the Sandoz Defendants' intentions and that documents relating to the design history of the AirFluSal Forspiro must be disclosed in a date range going back to 2003. The disclosure exercise undertaken as between the claimants and the Sandoz Defendants has been a very substantial one. Keyword searches were applied to documents held by 40 custodians. 406,300 documents were reviewed by 50 legally qualified reviewers. That process took six months and is said to have cost circa £2 million. 75,326 documents have been disclosed to the claimants.
The trial of the claim was originally due to take place in October 2018. However, at a hearing before Mr Rosen QC on 3 July 2018, an order was made vacating the trial date and a new trial date has now been fixed for July 2019. At the same hearing, the fifth, sixth and seventh defendants were joined as parties. (For the avoidance of doubt, when using the shorthand the Sandoz Defendants I am not including the 5 th Defendant). Separate disclosure exercises are now taking place involving the fifth defendant and the sixth and seventh defendants (“the Vectura Defendants”). They are unrelated to the issues between the claimants and the Sandoz Defendants.
Issue 1 — Legal Advice Privilege
The claimants challenged the claim to privilege made by the Sandoz Defendants covering the date range 1 November 2004 to 1 January 2007 which was a period during which design decisions were made about AirFluSal Forspiro. Under CPR 31.19(3) a party claiming a right to withhold inspection must state in writing that it has the right and “… the grounds on which [it] claims that right or duty.” The claim to legal advice privilege was made in bare terms without identifying the documents individually or by a descriptive class. The claimants applied to the court for a decision about whether the claim to privilege should be upheld under CPR 31.19(5). It is common ground that the onus of proving an entitlement to privilege is on the party claiming it – see West London Pipeline and Storage Ltd v Total UK Ltd [2008] EWHC 1729 (Comm) at [86(1)].
The issue was raised in the claimants' application notice dated 7 June 2018 and in paragraphs 163 to 171 of the 7 th witness statement of Eifion Morris of Stephenson Harwood LLP. The application was issued just a few days before a hearing listed to take place on 12 June 2018. Unsurprisingly, given the short notice of the application, no response was provided to it by the time the application came on for hearing before me on 12 June 2018 and, in any event, there would not have been time to deal with it. It was adjourned to be dealt with at the hearing before the Deputy Judge on 28 and 29 June 2018. On that occasion he ordered the Sandoz Defendants to file (and serve) a witness statement providing their response by 4pm on 14 September 2018. This provided the Sandoz Defendants an ample, arguably a generous, period of time in which to consider the issue and formulate their response.
It is uncontroversial that where a challenge is made to a generalised claim to privilege, it is incumbent on the respondent to the application either to provide an adequate explanation of the claim to privilege, or risk being made subject to an order requiring inspection to be provided. On 14 September 2018 Mr Marcus Collins of White & Case's eighth witness statement was served along with three lever files of additional disclosure. Exhibit MLC 35 to the witness statement lists 24 documents (documents, letters and emails) over which legal advice privilege is claimed. In most cases the claim to privilege is clearly made out and the letters and emails listed describe both the subject matter of the communication that is said to be privileged and the parties to it. The claimants only challenge the claim in respect of two documents, those numbered 11 and 14:
“11. Email from Susanne Groeschel-Jofer internal to the Sandoz group seeking information to provide to Bristows for the purposes of Bristows giving legal advice.
…
14. Email from Susanne Groeschel-Jofer internal to the Sandoz group seeking information to provide to Bristows for the purposes of them giving legal advice, along with internal Sandoz group email providing the information requested.”
[Bristows LLP were providing external legal advice to the Sandoz Defendants during this period. They are now acting for the Vectura Defendants.]
It is notable that, unlike the other emails in the list, the person with whom Ms Gröeschel was communicating is not named in items 11 and 14. The emails are merely described as being “internal to the Sandoz group”. They contrast, for example, with item 13 (about which no challenge to the claim to privilege is made) that is interposed between the two entries I am concerned with:
“Email from Michael Malaun to Susanne Groeschel-Jofer requesting legal advice, along with a note of legal advice given by her.”
In that example, both parties to the communication are named.
Mr Collins' statement helpfully provides in paragraph 5 details of the lawyers who are named in the exhibit and provides their qualifications. Ms Gröschel is a Rechtsänwaltin and at the relevant time was employed by the fourth defendant. Since 2010 she has been employed by the second defendant. Paragraph 6 of the witness statement is material to the application:
“6. Having inquired of the Sandoz defendants, I have been informed that, during the period of the Date Range, members of staff employed within the Sandoz group, such as those involved in the communications in which privilege is claimed, were authorised to request and receive legal advice where relevant to the performance of their job functions.” [my emphasis]
Mr Hickman, who appeared for the claimants pointed out that paragraph 6 of the witness statement is inconsistent with paragraph 2 where Mr Collins states that the facts in the statement are based on his own knowledge or are ascertainable from the documents held by his firm or from information provided by the Sandoz Defendants' electronic disclosure providers. Furthermore, the form of the statement can be criticised because to say merely “I am informed that …” does not comply with the requirements set out in paragraph 18.2 of Practice Direction 32 pursuant to which the maker of a statement must do two things. First, the witness statement must distinguish between “which of the statements in it are made from the witnesses own knowledge and which are matters of information or belief”; secondly, it must provide “the source for any matters of information or belief”. I will consider later whether these defects are material. However, it is hard to overstate the care that is needed when making a claim to privilege because the other party will normally have no choice other than on rely on what it is told.
Paragraphs 83 to 90 of the twelfth witness statement of Mr Eifion Morris provide the claimants' response. He suggests that the claim to privilege in respect of items 11 and 14 is “vague and unsupported” and the evidence does not support it. His understanding of the claim to privilege made by the Sandoz Defendants is put in the following way:
“The basis for this claim of privilege is that employees of the Sandoz Group, to whom Ms Susanne Groeschel-Jofer sent emails, in different Sandoz Group companies, were all capable of instructing the external law firm Bristows on behalf of the second...
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