Privilege and Discovery

 

Cases

 

Redfern Limited -v- O’Mahony

[2009] IESC 18 (04 March 2009)

Judgment of Mr Justice Finnegan delivered on the 4th day of March 2009

 

 

 

This appeal concerns the decision of the High Court on two applications for inspection of documents pursuant to Order 31 Rule 19 of the Rules of the Superior Courts, one being an application by the appellants and the other an application by the respondent. The appellants’ motion sought inspection of an opinion of senior counsel in respect of which a claim of privilege is made. The respondent’s motion sought inspection of all documents discovered by the appellants in respect of which privilege is claimed which evidence the seeking and/or receipt of legal advices. Each of the motions involve consideration of aspects of waiver of legal professional privilege. The learned High Court judge ordered inspection on the respondent’s motion and refused to order inspection on the appellants’ motion. The appellants appeal each of these orders.

 

For the purposes of this judgment it is necessary to set out the complex factual matrix giving rise to the proceedings and for ease of reference I propose to apply the following definitions:-

 

Redfern Limited (hereinafter “Redfern”)

 

Lowe Taverns (Tallaght) Limited (hereinafter “Lowe”)

Alburn (hereinafter “Alburn”). Alburn is an unlimited company and is a wholly owned subsidiary of Redfern.

 

Larry O’Mahony and Thomas McFeely (hereinafter called “the partners”). The partners were at material times entitled to the entire issued share capital in Lowe.

 

Aifca Limited (hereinafter “Aifca”). Aifca is a wholly owned subsidiary of Lowe and (on what basis this court is not told) enjoys the sub-licence vested in Lowe.

 

Liam Carroll. Liam Carroll is beneficially entitled to the entire issued share capital in Tafica Limited.

Tafica Limited (hereinafter “Tafica”).

 

Agreement dated 4th August 2005 made between Redfern of the one part and the Partners of the other part (hereinafter “The Alburn Agreement”).

Agreement made between Aifca of the one part and Liam Carroll of the other part (hereinafter “The Aifca Agreement”).

 

Agreement dated 31st July 2003 made between Square Management Limited of the one part and Alburn of the other part (hereinafter “The Joint Venture Agreement”).

 

 

The Square, Tallaght, Co. Dublin is a major shopping and commercial development. The development was carried out on lands held under two leases, a lease dated 8th September 1988 and made between the Right Honourable The Lord Mayor Aldermen and Burgesses of Dublin of the first part, the County Council of the County of Dublin, of the second part and L & C Properties Limited of the third part, and a lease dated 1st August 1989 and made between Guardian Assurance Plc of the first part, the Right Honourable the Lord Mayor Aldermen and Burgesses of Dublin of the second part, the County Council of the County of the County of Dublin of the third part, and L & C Properties Limited of the fourth part. The leases, in addition to demising premises, granted a licence over premises which are now a surface car park part of the overall The Square development. The lessor’s interest under the lease is now vested in South Dublin County Council and the lessee’s interest is vested in Square Management Limited. Lowe is entitled to a sub-licence in the car park pursuant to a licence dated 25th October 2001 and which sub-licence is enjoyed by Aifca.

 

Square Management Limited and Alburn entered into the Joint Venture Agreement dated the 31st day of July 2003, the object of which was to develop the car park. For the development to take place it is necessary that all licences over the car park should be extinguished. Square Management Limited agreed to extinguish it’s licence, it being entitled to do so under the terms of the leases. However if the development is to proceed it is necessary that Lowe’s sub-licence should also be extinguished and to achieve this the Alburn Agreement was entered into on the 4th August 2005 between the partners of the one part and Alburn of the other part. By the Alburn Agreement the partners agreed to dispose of the entire issued share capital in Lowe to Alburn in exchange for the allotment of shares in Alburn to the partners. Completion of the Alburn Agreement is essential if the development of the car park is to proceed.

 

On the 13th July 2007 Redfern instituted these proceedings against the partners claiming inter alia a declaration that the Alburn Agreement is valid and subsisting and seeking specific performance of the same. The defence delivered by the partners did not deny the existence of the agreement but pleaded that Alburn had been guilty of unreasonable delay and laches and that as a result of Alburn’s conduct it is estopped from seeking to complete the Alburn Agreement. Delay by Redfern in completion of the Alburn Agreement caused Lowe’s financial position to deteriorate resulting in it’s lenders calling for repayment of borrowings failing which the lenders’ security would be enforced. In consequence it was necessary for the partners to seek alternative funding. Alternative funding was achieved by Aifca entering into the Aifca Agreement with Liam Carroll whereby Tafica would subscribe for 50.25% of an increased issued share capital in Aifca. In consequence the partners no longer control Aifca. Redfern promptly joined Liam Carroll, Tafica and Aifca as defendants and delivered amended pleadings. Against Liam Carroll and Tafica it is pleaded that they entered into the Aifca Agreement with the intention of interfering with the due performance of the Alburn Agreement and/or of inducing the partners to breach the Alburn Agreement. The defence of Liam Carroll and Tafica denies that they interfered with, induced or procured a breach of the Alburn Agreement. They plead that the Aifca Agreement was so designed specifically to ensure that there would be no breach of the Alburn Agreement. They plead in paragraph 13 of the defence as follows:

 

“Even if the Redfern Agreement subsisted at the time of the execution of the Aifca Agreement (which is denied), the third and/or fourth named defendants deny that they had any intention to induce a breach of and/or interference with the performance of the (Alburn) Agreement. In the premises, the third and/or fourth named defendants were expressly cautious to ensure that if the Redfern Agreement did subsist then the clauses of the Aifca Agreement should and did acknowledge and honour the obligations of the first and/or second named defendant under the Redfern Agreement should that Agreement be completed.”

 

 

In the context of the appeal against the order of the High Court granting inspection to Redfern the phrase “expressly cautious to ensure” is central.

APPEAL AGAINST THE ORDER OF THE HIGH COURT REFUSING THE APPELLANTS INSPECTION OF REDFERN’S PRIVILEGED DOCUMENT: APPEAL NO. 250/2008

 

 

The discovery of Redfern disclosed an opinion of senior counsel dated 8th February 2007 and privilege was claimed in relation to the same. The appellants by motion sought inspection of the opinion. Inspection was sought on the basis that the claim to privilege in respect of the opinion had been waived by Redfern furnishing a copy of the opinion to Thomas Dowd, Chairman of Square Management Limited board committee with responsibility for implementation of the Joint Venture Agreement and to Eoghan Clear, solicitor to South Dublin County Council. The sole issue on this appeal is whether that disclosure of the opinion amounts to a waiver of privilege.

 

For the appellants it is submitted that the membership of Square Management Limited consists of all lessees in The Square development. Potentially, therefore, the disclosure to Mr Dowd represented a very wide disclosure. Similarly the disclosure to Eoghan Clear represented a very wide disclosure as each member of South Dublin County Council could request sight of the same.

 

The appellants rely upon Fyffes Plc v DCC Plc and Others [2005] 1 IR 59 as authority. It was there held that legal professional privilege was absolute and the court had no discretion to displace it. Privilege might be lost where it was expressly or by implication waived. While it was there held that the disclosure relied upon as constituting a waiver by implication was insufficiently wide to constitute waiver and inspection was refused, it subsequently transpired that there had been much wider disclosure and the High Court, on that basis, held that there had been a waiver of privilege. Reliance is also placed on the following passages. In Documentary Evidence (9th edition) Hollander [2006] paragraph 19-30 it is stated:-

 

“If the document comes into the public domain, it will no longer be possible to assert that the document is confidential, and thus it will not be possible to claim privilege as one of the necessary pre-requisites of a claim to privilege will be lacking. If the document is disclosed for a limited purpose, or on terms that the recipient should treat it as confidential, the analysis set out above is likely to apply, and there is unlikely to be a difficulty in a subsequent claim for privilege. However, where the document is disclosed to one or more third parties with no express or implied requirement that the third party should treat the document as confidential, it is hard to see why there should be any legal bar on the third party disclosing the document or making it available when served with a witness summons.”

 

 

In Matthews and Malek on Disclosure (Sweet and Maxwell) 2007 it is stated:-

 

“The position is less clear where there is a deliberate supply of a privileged document to a third party. One aspect of the question is the intention with which it was supplied. Was it supplied in confidence, without prejudice to the privilege, e.g. to the directors of the client company, another professional adviser of the plaintiff, such as his accountant, a person otherwise with a ‘common interest’,…in such cases the privilege is generally not lost. Or was it supplied with the intention of abandoning the privilege e.g., to the court to be released to parties and non-parties in the exercise of the court’s discretion, to the media, in the hope of publication, or to the public generally? In these cases it is normally lost.”

 

 

For the respondent it is submitted that the disclosures to Mr Dowd and to Mr Clear must be looked at in context. The context of the disclosure to Mr Dowd is the Joint Venture Agreement. The context of the disclosure to Mr Clear is a document circulated by the County Manager of South Dublin County Council to each member of the County Council and entitled “Proposed Disposal of Lands at The Square, Town Centre, Tallaght incorporating the ‘public’ Millennium Square to Alburn.” The document concerned a proposal by the County Council to dispose of eleven acres at Tallaght, including the car park, to Alburn by way of building lease with a view to its development. It is clear that without the grant of such lease the proposed development of the car park could not proceed. The proposed development conforms with an objective of a draft Master Plan for the Tallaght area and the Tallaght Integrated Area Plan and the County Council wishes the development to proceed. In respect of each of the disclosures there is a community of interest with the recipient: Mr Dowd represents the interest of Square Management Limited in the Joint Venture Agreement and Mr Clear represents the interest of the County Council in relation to the proposed building lease. The Alburn Agreement is a crucial element in the scheme envisaged by the Joint Venture Agreement and the proposed building lease. The Joint Venture Agreement expressly provides for confidentiality. The disclosures did not evince an intention to publish to the public generally but were limited disclosures to third parties with a common interest and did not amount to an implied waiver.

 

It is well established that legal professional privilege may be waived expressly or by implication. In Kershaw .v Whelan [1996] 1 W.L.R. 358 at p. 370 Ebsworth L.J. said:-

 

“Waiver is not lightly to be inferred; although privilege is an aspect of the law of evidence and not of constitutional rights it is firmly established in our law for sound reasons of public policy.”

 

 

In Paragon Finance v. Freshfields [1999] 1 WLR 1183 Bingham C.J. dealt with the nature and basis of legal professional privilege at p.1188:-

 

“At its root lies the obligation of confidence which a legal adviser owes to his client in relation to any confidential professional communication passing between them. For readily intelligible reasons of public policy the law has, however, accorded to such communications a degree of protection denied to communications, however confidential, between clients and other professional advisers. Save where client and legal advisor have abused their confidential relationship to facilitate crime or fraud, the protection is absolute unless the client (whose privilege it is) waives it whether expressly or impliedly.”

 

 

Fyffes Plc v DCC Plc & Others [2005] 1 IR 59 dealt with implied waiver of privilege. At page 68 Fennelly J. said:-

 

“The appellant, nonetheless, argues for the broad proposition that any disclosure to a third party leads to loss of the privilege. No authority has been cited in support of such a far-reaching principle. It is not to be found in Matthews and Malek, Discovery (London 1992) dealing with the topic of waiver. Apart from the more specific cases of waiver, most of which have been discussed in these proceedings, the authors pose the question whether relevant information was supplied ‘with the intention of abandoning’ the privilege. They footnote instances of communication to the public generally or to the media. Indeed, these references are the only support for the general proposition that disclosure defeats the privilege.”

 

 

Fennelly J. accepted as a correct statement of the law dicta of Clarke J.A. in Goldberg v Mg [1994] 33 N.S.W.L.R. 639 that there is no universal rule that the disclosure of documents produced for the sole purpose of seeking legal advice or litigation to a stranger to that litigation constitutes a waiver of the privilege in the documents.

 

It is accordingly clear that privilege may be waived by disclosure. If the document comes into the public domain privilege will be lost. It will not, however, be lost where there is limited disclosure for a particular purpose or to parties with a common interest. The disclosure relied upon by the appellants here is limited and was to parties having a common interest with the respondent in the proposed development of the car park. Such disclosure does not evince an intention to waive privilege. I am satisfied there has been no waiver of privilege in respect of the opinion sought to be inspected. I would affirm the order of the learned High Court judge and refuse inspection of the opinion.

APPEAL AGAINST THE ORDER OF THE HIGH COURT GRANTING REDFERN INSPECTION OF DOCUMENTS EVIDENCING THE APPELLANTS’ LEGAL ADVICE: APPEAL NO 251/2008

 

 

 

 

 

The appellants’ discovery disclosed documents relating to its legal advice and claimed privilege in relation to the same. In paragraph 13 of their defence the appellants plead that they were “expressly cautious” to ensure that if the Auburn Agreement did subsist then the clauses of the Aifca Agreement should and did acknowledge and honour the obligations of the partners under the same should it be completed. This plea the respondent contends amounts to an implied waiver of privilege over the legal advice obtained by the appellant. The appellants by the plea put in issue their state of mind and the intention of the appellants in entering into the Aifca Agreement cannot be fairly determined without inspection of the advice. The appellants before this court conceded that at the hearing of the action it is the intention to rely upon the fact that legal advice was obtained in relation to the Aifca Agreement, which it is claimed is designed so as to not to interfere with contractual relations between the respondent and the partners, and in effect ask the court to infer from the terms of the Aifca Agreement and the fact that legal advice was obtained the absence of an intention to procure a breach of contract or interfere with the respondent’s contractual relations. The legal advice sought or given will not be introduced in evidence. The court may, of course, make the opposite and adverse inference from the failure of the appellants to waive legal professional privilege.

 

The importance of legal professional privilege in our system of litigation cannot be overemphasised. In Smurfit Paribas Bank Limited v A.A.B. Export Finance Limited [1990] 1 I.R. 469 Finlay C.J. quoted with approval from the judgment of Jessel M.R. in Anderson v Bank of British Columbia [1876] 2 Ch.D. 644 at 649:-

 

“The object and meaning of the rule is this: that as, by reason of the complexity and difficulty of our law, litigation can only be properly conducted by professional men, it is absolutely necessary that a man in order to prosecute his rights or to defend himself from an improper claim, should have recourse to the assistance of professional lawyers, and it being so absolutely necessary, it is equally necessary, to use a vulgar phrase, that he should be able to make a clean breast of it to the gentleman with whom he consults with a view to the prosecution of his claim, or the substantiating of his defence against a claim of others; that he should be able to place unrestricted and unbounded confidence in the professional agent, and that the communications he so makes to him should be kept secret, unless with his consent (for it is his privilege, and not the privilege of the confidential agent), that he should be enabled properly to conduct his litigation. That is the meaning of the rule.”

 

 

While the courts afford a very high degree of protection to legal professional privilege the party entitled to the same may expressly or by implication waive it. For the proposition that where the communication in respect of which privilege is claimed is a material fact in itself privilege is impliedly waived the respondent relies on Matthews and Malek, Disclosure, 3rd edition at para. 11.64 where the authors’ state:-

 

“Where in litigation allegations are made by a party concerning his state of mind (e.g. in entering an agreement) to which legal advice contributed, that party cannot withhold the advice on grounds of privilege, but this is because of implied waiver.”

 

 

The respondent relies heavily on this passage and on a line of authority in the courts of Australia and most particularly on Hong Kong Bank of Australia Limited v Murphy [1993] V.R. 419, Telstra Corporation v B.T. Australasia Pty Limited [1998] 156 A.L.R. 634 and Liquorland (Australia) Pty Limited v Angie [2003] V.S.C. 0073. A review of the Australian cases discloses that in that jurisdiction privilege may be lost in the following circumstances:-

 

1. Where a party pleads the privileged document into relevance: Data Access Corporation v Powerflex Services Pty Limited [1994] A.I.P.C. 91.

 

2. Where the court might be misled if the document is not available: Hong Kong Bank of Australia Limited v Murphy [1993] 2 V.R. 419 and

 

3. Where in his pleadings a party relies upon his state of mind and it would be unfair to permit that party to maintain privilege in respect of communications passing between them and their legal advisers which might bear upon the existence of that state of mind: Wardrope v Dunne [1996] 1Qd. R. 224.

 

 

Some support for the submission that this is also the law in this jurisdiction might appear to be found in a passage from the judgment of Finlay C.J. in Smurfit Paribas Bank Limited v A.A.B. Export Finance Limited at p.477:-

 

“Such privilege should therefore in my view only be granted by the courts in instances which have been identified as securing an objective which in the public interest in the proper conduct of the administration of justice can be said to outweigh the disadvantage arising from the restriction of disclosure of all the facts.”

 

 

However, in Fyffes Plc v DCC Plc & Others at p.67 Fennelly J. in referring to that passage said:-

 

“The then Chief Justice did not, in my view, by those words, mean to suggest that in cases where reliance is placed on legal professional privilege in respect of documents the courts should balance the two considerations, as it were, on a case by case basis. He was referring to what the policy of the law should be. In my view, whether or not documents are privileged will be determined by the application of these principles to the facts of the case. Once it is found to exist, there is no judicial discretion to displace it. I would adopt the following dictum of Lord Bingham C.J. in Paragon Finance v Freshfields [1999] 1 WLR 1183 at p.1188:-

‘The nature and basis of legal professional privilege has been often and authoritatively expounded…at its root lies the obligation of confidence which a legal adviser owes to his client in relation to any confidential professional communication passing between them. For readily intelligible reasons of public policy the law has, however, accorded to such communications a degree of protection denied to communications, however confidential, between clients and other professional advisers. Save where client and legal adviser have abused their confidential relationship to facilitate crime or fraud, the protection is absolute unless the client (whose privilege it is) waives it, whether expressly or impliedly.’”

 

 

Paragon Finance Plc v Freshfields concerned a claim in negligence against the defendant, a firm of solicitors. The solicitors advised the plaintiff in relation to the creation of securitised mortgages, each transaction involving several thousand mortgages. In the early 1990s there were many defaults by mortgagors on the mortgages in question as a result of a fall in the property market, a situation with which we are all too familiar today. The plaintiff looked to insurers to indemnify it against the defaults and the insurers refused to indemnify on the basis that the agreed loan to value ratio had not been complied with. The claim against the insurers was settled but the plaintiff nonetheless suffered losses which it sought to recover from the solicitors as damages for negligence. A different firm, Slaughter and May, acted for the plaintiff in its claim against the insurers and Freshfields sought discovery of communications between the plaintiff and Slaughter and May. In the High Court Buckley J. in granting inspection relied upon Hayes & Another v Dowding & Others [1996] P.N.L.R. 578. He held that a plaintiff suing a solicitor for negligence may not claim legal professional privilege in relation to similar transactions involving a different solicitor. Having cited a passage from Hayes & Anor v Dowding & Ors he went on to say at page 591:-

 

“Neither that passage, in context, nor what I have said above, undermines nor is intended to undermine the most common and fundamental operation of legal professional privilege, namely, that one party to a dispute cannot obtain communications between the other party and his lawyer in respect of it. Of course the privilege goes further than that. But, to my mind, it is not significantly undermined by holding that the implied waiver that arises when a client sues his lawyer for professional negligence extends to any privilege communications touching the transaction which gave rise to the charge of negligence and which are relevant to the just determination of issues between them. To borrow a phrase from a different legal concept, privilege is essentially a shield not a sword. I do not believe that concept would be difficult to explain to a client or that it would work against the public interest in question.”

 

 

In the Court of Appeal, allowing the appeal, Lord Bingham held that by bringing the proceedings against Freshfields the plaintiff impliedly waived any claim to legal professional privilege in relation to confidential communications between the plaintiff and Freshfields up to the moment when Freshfields ceased to act. However, there was no waiver of legal professional privilege in relation to confidential communications between the plaintiff and Slaughter and May as that confidential relationship had not been brought into the public domain by the pleadings. The defendants relied on references to justice and fairness in the judgments in Hayes & Another v Dowding & Ors as providing the correct test. The Court of Appeal held that there is no question of balancing the requirements of fairness and justice against the legitimate interest of a party in maintaining the confidentiality of a confidential relationship. Save as between client and the solicitor he is suing, fairness is not the touchstone by which it is determined whether a client has or has not impliedly waived his privilege. The court expressly disapproved of Hayes & Anor v Dowding & Ors where the trial judge relied heavily on Australian authority and held that the Australian authorities there relied on did not represent the law in England.

 

In Nederlandse Reassurantie Groep Holding N.V. v Bacon and Woodrow & Ors [1995] 1 All E.R. 976, a negligence action, the plaintiff sued their advisers, other than legal advisers, and in particular their accountants. The accountants sought disclosure of confidential communications between the plaintiff and their legal advisers relating to the purchase of the share capital of three insurance companies. In the transaction the plaintiff had relied on actuarial, accounting, financial and legal advice. The plaintiff claimed legal professional privilege which claim was upheld. In the course of his judgment at 987E Colman J. pointed out that there could be no question of waiving legal professional privilege by the institution of proceedings in an action to which legal advisers were not a party: in Paragon Finance Plc v Freshfields Bingham J. considered this to be correct. Bingham J. also approved Colman J’s analysis of the basis upon which in a negligence action against a solicitor the plaintiff could not maintain a claim to legal professional privilege. He cited with approval the following passage at page 986C of the report:-

“The true analysis of what the courts are doing in such cases of so-called implied waiver of privilege is, in my judgment, to prevent the unfairness which would arise if the plaintiff were entitled to exclude from the court’s consideration evidence relevant to a defence by relying upon the privilege arising from the solicitor’s duty of confidence. The client is thus precluded from both asserting that the solicitor has acted in breach of duty and thereby caused to the client loss and, to make good that claim, opening up the confidential relationship between them and at the same time seeking to enforce against that same solicitor a duty of confidence arising from the professional relationship in circumstances where such enforcement would deprive the solicitor of the means of defending the claim. It is fundamental to this principle that the confidence which privilege would otherwise protect arises by reason of the same professional relationship between the parties to the litigation. The underlying unfairness which the principle aims to avoid arises because the claim is asserted and the professional relationship opened for investigation against the very party whose duty of confidence is the basis of the privilege. It is against the unfairness of both opening the relationship by asserting the claim and seeking to enforce the duty of confidence owed by the defendant that the principle is directed.”

 

 

The loss of privilege by the mere instigation of proceedings is limited to negligence actions instituted by a client against his solicitor: it is based on unfairness. The privilege attached to transactions with other solicitors, however closely related or relevant, is not affected.

 

 

There is one other area in which legal professional privilege can be lost on the basis of unfairness and that is in relation to partial disclosure of legal advice: see R v Secretary of State for Transport Ex parte Factortame & Others, The Times, 16 May 1997 and cases therein referred to. Where a party deploys in court material which would otherwise be privileged the other party and the court must have an opportunity of satisfying themselves that what the party has chosen to release from privilege represents the whole of the material relevant to the issue in question. To allow an individual item to be plucked out of context would be to risk injustice through its real weight or meaning being misunderstood.

 

It remains the position in England and Wales that while unfairness is material in the circumstances which I have mentioned there is no general proposition that unfairness to an opponent will result in implied waiver of privilege. In Farm Assist Limited (In Liquidation) v Secretary of State for Environment, Food and Rural Affairs [2008] All E.R.(d) 124 (Dec) it was held that there is no general implied waiver of privileged material merely because a state of mind or certain actions are in issue. The test in English law is based neither on general principles of fairness nor on relevance. Implied waiver arising from particular proceedings or pleading allegations in those proceedings is limited to proceedings between client and solicitor. The fact that the plaintiff had obtained legal advice which had contributed to a state of mind does not form any basis for implied waiver in English Law. In the course of the judgment Matthews and Malek on Disclosure 3rd edition was referred to:-

 

“In Matthews and Malek at para. 11-64 the authors referred to a principle that ‘where information which is otherwise privileged itself constitutes a material fact in the proceedings, it is not privileged from disclosure.’”

 

 

It was held that an analysis of the cases establishes no such general principle. Matthews & Malek also state:-

“Where in litigation allegations are made by a party concerning a state of mind (e.g. in entering an agreement) to which legal advice contributed, that party cannot withhold the advice on grounds of privilege, but this is because of implied waiver rather than because no privilege attached in the first place.”

 

 

In support of this proposition the authors cite at footnote 402 three Australian authorities: Wardrobe v Dunne [1996] 1 Qd.R 224 and Ampolex Limited v Perpetual Trustee Co. (Canberra) Limited [1995] 37 N.S.W.L.R. 405 and one English authority Hayes & Anor v Dowding & Ors [1996] P.N.L.R. 578. The learned trial judge held that Hayes & Anor v Dowding & Ors had been overruled in Paragon Finance Plc v Freshfields and that the Australian authorities cited did not represent the law in England. Whilst there is implied waiver in proceedings between a client and solicitor because of unfairness, that did not mean that whenever there is unfairness there will always be an implied waiver of privilege. Privilege is waived on the basis of unfairness in the limited circumstances set out in Lillicrap v Nalder and Paragon Finance Plc v Freshfields and that is in proceedings between a client and his solicitor. In such proceedings, by instituting the same, the plaintiff releases the solicitor from his obligation of confidentiality and cannot rely on legal professional privilege in respect of his documents in the hands of the solicitor. The rationale for an implied waiver in such proceedings is that a party cannot, as a matter of fairness, subject the confidential relationship with its solicitor to public scrutiny and at the same time seek to preserve the confidentiality of the relationship. Outside that, English law recognises the right of a party to maintain legal professional privilege notwithstanding that the person’s state of mind and also that person’s actions may well have been influenced by legal advice and there is no general implied waiver of privileged material merely because a state of mind or certain actions are in issue.

 

Having carefully considered the Australian authorities to which the court has been referred I am satisfied that they do not represent the law in this jurisdiction. Rather the law is as set out in Paragon Finance Plc v Freshfields and Farm Assist Limited (In Liquidation) v Secretary of State for Environment, Food and Rural Affairs. No such general proposition as is sought to be established by the respondent exists in Irish law. As stated by Fennelly J. in Fyffes Plc v DCC Plc & Others there is no balancing exercise to be carried out, and in particular no balancing of legal professional privilege maintained by one party against unfairness to the other.

 

As to the three propositions derived from Australian authorities which I set out above and which are relied upon by the respondent the position is as follows. In relation to the first, a party by its pleadings or by deployment in court may waive legal professional privilege: this will arise where the contents and effect of the legal advice are disclosed. That is not the position here as the contents and effect of the legal advice are not pleaded and, as the appellant has informed the court, will not be relied upon. Only the fact that legal advice was obtained will be relied upon. The other two propositions derived from Australian authorities do not represent the law in this jurisdiction.

 

I would allow the appeal and refuse inspection of the appellants’ documents in respect of which legal professional privilege is claimed.

 

 

 

Conclusion

 

On the respondent’s application for inspection I would uphold the decision of the learned trial judge. On the appellants’ application for inspection I would set aside the decision of the learned trial judge and refuse to order inspection of the documents evidencing legal advice on the grounds that the appellant is entitled to maintain legal professional privilege in respect of the same.

 

 

 

Ryanair Plc v. Aer Rianta Cpt

[2002] IEHC 86 (25 July 2002)JUDGMENT of Mr. Justice Vivian Lavan delivered the 25th day of July, 2002

 

The provisions of Order 31 Rule 12 of the Rules of the Superior Court were amended by the provisions of statutory instrument No 233 of 1999 entitled “RULES OF THE SUPERIOR COURTS (2) (DISCOVERY) 1999, on the 3rd August, 1999.

 

Order 31 of the Rules of the Superior Courts is extensive in its provisions and I view this application in the overall context of an Order which runs to some 29 rules.  It is defined as an Order dealing with “Interrogatories, DISCOVERY AND INSPECTION”.

 

The rules making committee of the High Court, being cognisant of the abuses that an Order for Discovery (without limitation) may have, were responsible for bringing into effect the above statutory instrument.  As Morris P said, in the Swords case (Unreported, High Court, Morris P., 29th November, 2000) :-

 

“As has been pointed out by the court on a number of occasions Discovery before the advent of the photocopying machine, fax, E-mail and word processors would probably involve the Discovery of a dozen documents.  In recent years the number of documents discovered can amount to many thousands and the process has become unmanageable”.

 

 

 

I wholeheartedly subscribe to that proposition.  How often have I been buried in reams of paper, necessitating the use of trolleys to bring into Court mountains of paper to enable me arrive at a decision – when sight was lost of the twelve essential documents referred to by Morris P.

 

In this case there is a challenge to the decision to Morris P.’s judgment by virtue of the general perception as to its effect on discovery.  Therefore it seems to me that I ought to consider that judgment as delivered on the 29th November, 2000.  I note with some small sense of irony that it is one year to the day since same was delivered.

 

There are two aspects of the judgment I ought to immediately deal with and clarify:- mainly, Order 31 Rule 12 of the Rules of Superior Court in substitution for the existing Order 31 Rule 12 as follows

 

1. (1) Any party may apply to the Court by way of Notice of Motion for an Order directing any other Party to any cause or matter to make discovery on oath of the documents which are or have been in his or her possession or power, relating to any matter in question therein.  Every such Notice of Motion shall specify the precise category of documents in respect of which discovery is sought and shall be grounded upon the Affidavit of the party seeking such an Order of discovery

 

(a) verify that the discovery of documents sought is necessary for disposing fairly of the cause or matter or for saving costs;

 

(b) furnish the reasons why each category of documents is required to be discovered.

 

On this point Mr. Shipsey, counsel for the plaintiff, refers me to page eight of the judgment in which the following appears, namely that the statutory instrument imposed a

 

“clearly defined obligation upon a party seeking discovery to pin point the documents or categories of documents required”.

 

 

 

Patently that overstates the amended rule which is defined as follows

 

“shall specify the precise categories of documents in respect of which discovery is sought.”

 

 

 

Secondly at page 12 of the said judgment there is a reference to the circumstances in which the Master is of the opinion that there has been a compliance by the applicant with Order 34. 12(4)(1).  Patently that ought to be a reference to Order 31. Rule 12( 4) (1) of the Rules of the Superior Courts.

 

I now turn to the judgment in the Swords Case.

 

The specific rule was amended on the 3rd August, 1999.  In the Swords case, the plaintiff claimed he was in the employment of the defendants on the 8th July, 1997 at their meat processing plant at Ballyhaunis, Co. Mayo and alleged negligence against the defendant.

 

On the 29th November, 1999, three months after the aforesaid rule was amended, the plaintiff’s Solicitor wrote to the defendant’s Solicitor asking them to make discovery of certain classes of documents.

 

The judgment of the President is very clear at this point.  There was not compliance with the new rule.  The rule is specific, it requires that the applicant for discovery shall have

 

1. Previously applied in writing requesting that discovery be made voluntarily,

 

2. Specifying the precise categories of documents in respect of which discovery is sought, and

 

3. Furnishing the reasons why each category of documents is required to be discovered, and

 

4. Having allowed a reasonable period of time for discovery, and

 

5. The party or person requested having failed, refused or neglected to make such discovery or having ignored such request.

 

It seems to me for completeness sake to set out the concluding portion of that statutory instrument in the following terms

 

“Provided that in any case where by reason of the urgency of the matter or consent of the parties, the nature of the case or any other circumstances which to the Court seem appropriate, the Court may make such Order as appears proper, without the necessity for such prior application in writing.”

 

 

 

On the consideration of the foregoing I am satisfied that the President was dealing with this specific case as a case which did not comply with the terms of the new Order 31 Rule 12.

 

In my view what the above decision decided was that the application for discovery must be in compliance with Order 31 Rule 12.  I am of the view that it did not change the substantive law of discovery.  Its states however that the discovery procedure is to be given effect to and goes no further.

 

Turning to the instant case before me the following submission was made on behalf of the plaintiff.

 

1.The legal submissions set out in brief the case law that the plaintiffs submit is relevant to the instant Discovery application and seeks to apply these principles to the circumstances of this case.

 

2.Order 31, Rule 12 of the Rules of the Superior Courts (“R.S.C”) provides that a party may apply to the Court for an Order directing parties to make Discovery of documents which are or have been in his possession, custody or power.  Order 31 Rule 12 has been amended by S.I. No 233/1999 which requires that a Notice of Motion seeking Discovery shall specify the precise categories of documents in respect of which Discovery is sought and that the Affidavit grounding the Motion shall verify:

 

a.That the Discovery of documents sought is necessary for disposing fairly of the cause of matter or for saving costs; and

 

b.Furnish the reason why each category of documents is required to be Discovered.

 

3. Order 31, Rule 12 (3) provides that an Order shall not be made if and so far as the Court shall be of opinion that it is not necessary either for disposing fairly of the cause or matter or for saving costs.

 

4. This change in the Rules was prompted by the decision of Mr Justice Lynch in Brook Thomas Limited v. Impact Limited [1999] 1 ILRM 171. In that case, the Supreme Court held that the meaning of “relating to” as referred to in Order 31, Rule 12 (1) had been enlarged to include any document that “contains information which may – not which must – either directly or indirectly enable the party requiring the affidavit either to advance his own case or to damage the case of his adversary … or which may fairly lead him to a train of inquiry, which may gave either of these two consequences”. In this respect reference was made to the case of Peruvian Guano Company (1882) 11 QBD 55, p. 62.

 

5. This passage has been cited with approval by the Irish court on many occasions, most recently in the judgment of Mr Justice Herbert in Spring Grove Service (Ireland) Limited v. O’Callaghan & Ors, (Unreported, H.C. Herbert J., 31st July, 2000). In that judgment, Mr. Justice Herbert noted that the judgment of Brett LJ dealt not only with the question of Discovery, but also with the question of further Discovery.

 

6. Mr Justice Lynch also suggests that the Superior Courts Rules Committee might consider changing the Rules so as to require an Affidavit before Discovery is ordered.

 

7. In the recent decision of Swords v. Western Proteins Limited, judgment of Mr Justice Morris of 29th November, 2000, the President sets out the reasons for the change in Rules. He held that “the new rule was brought into being to ensure in the first instance that the Party against whom Discovery was being sought would, upon receipt of the preliminary letter, be in a position to note the document or category of documents referred to and be able to exercise a judgment on whether the reasons given for requiring these documents to be Discovered was valid. He would then be in a position to know if he was required to comply with the request.  If he disputed his obligation to make Discovery the Court would know by reference to this letter precisely why the Moving Party sought the documents in question and the grounds upon which the Moving Party believed that the documents sought to be discovered might have to dispose fairly of the cause or save costs.”

 

8. Thus the purpose of the Rules was not to cut back the ambit of Discovery, but to make the process of Discovery more manageable and to net the issues.

 

9. In Wallace Smith Trust Co. Ltd. [1996] 4 All ER 403, it was held that where there was no claim of confidentiality or public interest immunity or objection on the ground of privilege, the Court follows a relaxed practice and allows production on the basis of relevance. It went on to say that this “is sensible, bearing in mind the extended meaning given to relevance” in Peruvian Guano. It continued that where confidentiality or other grounds of objection arose, it was necessary to decide whether inspection was necessary for the fair disposal of the action.  In the instant circumstances no claim of confidentiality, public interest immunity or particular claim as to privilege has been raised by the sixth, seventh or eight defendant.  However, the case law in respect to the meaning of ‘necessary’ is of some assistance.  In Taylor v. Anderton [1995] 2 All E.R. 420, Mr Justice Bingham stated that

 

“the meaning of the expression “disposing fairly of the cause or matter”.  These words direct attention to the question whether inspection was necessary for the fair determination of the matter, whether by trial or otherwise. The purpose of the rule is to ensure that one party does not enjoy an unfair advantage or suffer an unfair disadvantage in the litigation as a result of a document not being produced for inspection. It is, I think, of no importance that a party is curious about the contents of a document or would like to know the contents of it if he suffers no litigious disadvantage by not seeing it and would gain no litigious advantage by seeing it. That, in my judgment is the test.”

 

 

 

10. In the instant case, the defendant is objecting to the plaintiffs’ request for documents, if discovered, would assist the plaintiffs in making their case that Articles 81 and/or 82 EC Treaty and Section 4 and/or Section 5 of the Competition Act, 1991 have been breached by the defendant, that its economic interests have been interfered with and that it has damaged the business and reputation of the plaintiffs.

 

 

 

11. The plaintiffs submit that in a case such as the present, whereby its very nature the activities of the defendants will be covert and hidden, it is necessary in order to dispose fairly of the matter that the defendants ought to be obliged to Discover documents which provide them with a litigious advantage. The converse argument is that to deny the plaintiffs Discovery of documents which clearly establish a breach of Irish and/or EC competition rules, during the period while the plaintiffs were attempting to compete with the defendants, would be to impose an unfair disadvantage in the litigation on the plaintiffs.

 

12. The plaintiff submits that its submissions in this respect are supported by the decision of Mr Justice Kelly in Cooper Flynn v. RTE, (Unreported, High Court, Kelly J. 19th May, 2000). In this case, the plaintiff alleged that the defendants had libelled her, and in particular had advised a particular individual, Mr Howard and other unnamed investors to participate in an investment scheme which had as its purpose the evasion of tax liabilities in the State. The defendant pleaded justification, i.e. that the words were true. Discovery was made by a non-party, NIB of 65 client files. The names of those clients were deleted. Mr Justice Kelly was asked to permit the defendants to obtain the documents with the names of the clients. The bank objected on the grounds that a Discovery application could not be used to obtain information to ground a plea of justification and that the Discovery was in the nature of a fishing expedition for the purpose of obtaining witnesses who could substantiate the justification plea. The defendants replied that it would be invidious and unreasonable that the plaintiff should be allowed to defeat a defence of justification by the defendants having to rely on the at present limited evidence which they may be in a position to adduce. If the defendants were not permitted to obtain client names, they would be significantly disadvantaged to the extent of being denied a fair trial. The defendants submitted that procuring the names of the clients would confer a definite litigious advantage on the defendants and their continued concealment would confer a significant litigious advantage on the plaintiff.

 

13. Mr Justice Kelly referred to the decision in Science Research Council v. Nasse [1979] 3 All ER 673 where Lord Salmon held, inter alia, “what does ‘necessary’ mean? It, of course, includes the case where the party applying for an order for discovery and inspection of certain documents could not possibly succeed in the proceedings unless he obtained the order, but it is not confined to such cases. Suppose for example a man had a slim chance of success without inspection of documents but a very strong chance of success with inspection, surely the proceedings could not be regarded as being fairly disposed of, were he to be denied inspection.” Applying those principles, Mr Justice Kelly concluded that knowledge of the identity of the customers would confer a litigious advantage upon the defendants and that to deny them this entitlement would not be conducive to the fair disposition of the action. He went on to say that it had to be borne in mind that the plaintiff had full knowledge of both the identity and the commercial affairs of her clients, whereas the defendants had only a very limited knowledge of the identity of such persons.

 

14. It is the plaintiffs’ submission that the same considerations apply in the instant case. The defendants have a full knowledge of whether or not they participated in activities contrary to Irish and EC competition law. The plaintiffs on the other hand, must by necessity have a limited knowledge of such activities given the nature of these activities and the particular documents generated. It is unlikely that any plaintiff will be in a position to have more than a limited knowledge of such activities and the documents created. Documents establishing the existence and operation of activities in breach of Irish and EC competition rules would undoubtedly confer a litigation advantage on the plaintiffs. In those circumstances the plaintiffs submit that they are entitled to such documents should they exist.

 

15. The plaintiffs submit that their submissions as to the special circumstances of competition cases are reinforced by the decision of Aerozip [1973] FFR 580. In this case, an action for infringement of a patent, the defendants pleaded that the plaintiffs were not entitled to the reliefs sought by virtue of Articles 85 and 86, EC Treaty. The defendants demonstrated that the EC Commission had initiated proceedings in respect of the plaintiffs’ behaviour. The plaintiffs provided particulars of their plea, but such particulars were in general terms. The defendants made it clear when giving those particulars that they were unable to give better particulars until after Discovery and they sought Discovery before Mr Justice Graham. He held “in my judgement, this is not an unreasonable request in the circumstances, since it is clear that the facts of the plaintiff’s conduct must be very largely within their own knowledge and not within the knowledge of the defendants “. He referred to the decision by the Commission to institute proceedings and held that he was entitled to assume that the defendants were justified in contending that there was a good reason for their plea in respect of Articles 85 and 86. He went on to say that

 

“the defendants were in the circumstances justified in saying that they were unable to give further particulars until after Discovery. This is a state of affairs which frequently happens when the detailed information of the facts is primarily within the knowledge of the opposing party only.  It is well recognised by our law”.

 

I quote from Bowen L.J. in Millar v. Harper where he says

 

“It is good practice and good sense that where the defendant knows the facts and the plaintiffs do not, the defendants should give Discovery before the plaintiffs deliver particulars.”

 

16. In the plaintiffs submission, this case is relevant for two reasons. First, it establishes that Discovery may be used to ascertain information which will then be pleaded against a party in further and better particulars. This presupposes that the information has not already been alleged by the plaintiff in its particulars and therefore confirms that Discovery is not available only in respect of matters which have been pleaded with particularity.

 

 

 

1. These outline written submissions are made on behalf of the defendant in response to a motion for discovery issued on behalf of the plaintiff.

 

 

 

2. The plaintiff’s motion was issued on 8 February 2001 and is grounded on an Affidavit sworn by Eamon Gill on 7 February 2001. The motion was issued pursuant to a request for voluntary discovery sent by the plaintiff’s solicitors by letter dated 22 December 2000. Following earlier correspondence, the plaintiff’s letter seeking voluntary discovery was responded to in detail by the defendant’s solicitors by letter dated 16 February 2001. That letter is exhibited to an Affidavit sworn by Eve Mulconry on behalf of the defendant on 30 March 2001 (exhibit “EM1” to Ms. Mulconry’s Affidavit). The plaintiff purported to amend its letter seeking voluntary discovery (in a number of respects) by a further letter dated 14 March 2001 in response to the defendant’s letter of 16 February 2001 sent more than one month after the motion issued. The grounds on which the defendant seeks to resist the discovery sought on behalf of the plaintiff are set out in detail in the defendant’s solicitors’ letter of 16 February 2001.

 

 

 

3. The plaintiff seeks discovery of fifteen principal categories of documents. However, one of those categories (paragraph (v) of the Notice of Motion) contains no less than fifteen sub-categories of documents. Paragraph (xiv) of the plaintiff’s Notice of Motion seeks discovery of a further five subcategories of documents. In all there are approximately thirty-three categories of documents sought by the plaintiff by way of discovery.

 

 

 

4. It may be helpful to summarise the defendant’s response to the discovery sought by the plaintiff at this stage:

 

(1) The defendant maintains that the plaintiff’s request for voluntary discovery made in the letter of 22 December 2000 (as purportedly amended by the plaintiff’s letter of 14 March 2001) was not in compliance with the provisions of Order 31 Rule 12 of the Rules of the Superior Courts (as substituted by the Rules of the Superior Courts No.2) (Discovery), 1999 (S.I. No. 233 of 1999). The letter seeking voluntary discovery does not specify with sufficient precision the categories of documents in respect of which voluntary discovery was sought. Therefore, in accordance with the decision of Morris P. in Swords v Western, Proteins Limited, the plaintiff’s motion has been improperly brought and the Court has no jurisdiction to order discovery on foot of that letter. A new letter was required. The plaintiff was invited in the defendant’s solicitors letter of 12 February 2001 to reformulate its request. The plaintiff declined to do so.

 

 

 

(2) If, contrary to the above submission, the Court has jurisdiction to entertain the plaintiff’s motion for discovery, discovery ought not to be granted in that:

 

(i) The descriptions of many of the documents are vague and imprecise and do not satisfy the requirements of Order 31 Rule 12 (as amended) in that the motion does not specify the “precise” categories of documents as required by the Rules (as amended).

 

(ii) The reasons given for requiring discovery are inadequate and fail to comply with the provisions of Order 31 Rule 12(1) and (3) (as amended). The plaintiff has failed to establish that the documents sought are (in some cases) relevant and (in all cases) necessary “either for disposing fairly of the cause or matter or for saving costs”.

 

(3) The discovery requested by the plaintiff amounts to no less than a “fishing expedition”. The plaintiff appears to have gone through the pleadings and sought discovery of every conceivable category of documents without reference to whether it is necessary to obtain such discovery in order to advance its claim. Moreover, the plaintiff has sought discovery of documents which could not be relevant to any issue raised in the pleadings in their current state.

 

(4) In respect of some of the categories of documents (and, in particular, many of the categories referred to in paragraph (v) of the Notice of Motion), the plaintiff seeks discovery by reference to entirely new matters which the plaintiff sought to introduce into the proceedings by way of purported “additional particulars” by letter from the plaintiff’s solicitors dated 15 December 2000. This letter predated the plaintiff’s request for voluntary discovery by one week and is clearly an attempt improperly to expand the scope of the discovery sought from the defendant. The defendant contends that it is not open to the plaintiff to seek to introduce such matters by way of “additional particulars”. The plaintiff ought to have applied to amend its Statement of Claim. In relation to many of the matters sought to be introduced by way of the “additional particulars” in the letter of 15 December 2000, the defendant has contended that such matters are statute barred as having allegedly arisen more than six years prior to the commencement of these proceedings in September 1999. In one case the events complained of date back to the 1960’s. In another case the plaintiff complains of matters alleged to have occurred in 1991 and in 1984. The defendant contends that the Court would not permit the plaintiff to amend its Statement of Claim to introduce entirely new matters which are statute barred and that a fortiori, the Court ought not to permit the plaintiff to seek discovery of such matters.

 

(5) The defendant requested the plaintiff to reformulate its request for voluntary discovery in a manner which complies with the Rules of the Superior Courts. However, notwithstanding that invitation and notwithstanding that the plaintiff’s solicitors purported to amend the letter of voluntary discovery on 14 March 2001, such amendments were not of a substantive nature and the plaintiff refused to reformulate its request for voluntary discovery.

 

 

 

5. It is proposed to address the plaintiff’s request for discovery under the following sections dealt with below:

 

(1) The history of the proceedings.

 

 

 

(2) The legal principles applicable to the plaintiff’s application for discovery.

 

 

 

(3) The categories of documents sought by the plaintiff.

 

 

 

6. Notwithstanding that the plaintiff has been invited to reformulate its request for voluntary discovery, it has not done so. The defendant has confirmed in correspondence that it is prepared to make appropriate discovery. The defendant awaits a proper letter seeking voluntary discovery.

 

 

 

7. The proceedings were commenced by a Plenary Summons which was issued on 30 September 1999. As appears from the Plenary Summons, the plaintiff sought injunctive relief restraining certain construction works being carried on near its check-in desks at Dublin Airport and also sought to restrain the defendant, its servants or agents or contractors from interfering with check-in desks and baggage belts used by the plaintiff at Dublin Airport. The plaintiff sought declaratory relief that the defendant’s action were contrary to Articles 81 and 82 of the Treaty of Rome and/or Sections 4 and 5 of the Competition Act, 1991. The plaintiff then sought damages on various different grounds. However, from the Plenary Summons it was clear that the sole concern of the plaintiff at that stage were the construction works carried on by the defendants at Dublin Airport. The purpose of the construction works was to facilitate the extension of the main terminal building.

 

 

 

8. On the same day proceedings were commenced the plaintiff sought interlocutory relief. The interlocutory relief sought by the plaintiff was confined to relief restraining the construction works and restraining the defendant from interfering with the plaintiff’s check-in desks and baggage belts at Dublin Airport. Detailed and lengthy Affidavits were sworn on behalf of the plaintiff and on behalf of the defendant for the purpose of the plaintiff’s interlocutory application. It was contended on behalf of the defendant that as part of the construction works which were necessary the plaintiff was required to move on a temporary basis the location of its check-in desks with a consequent reduction from fifteen desks to twelve desks. The plaintiff was also to be required to move from one baggage belt which it used to another with a similar capacity and temporarily to move its ticket office. It was alleged by the plaintiff that the defendant gave preferential treatment to Aer Lingus in relation to facilities available to it during the course of the construction works. The interlocutory injunction application was ultimately settled on terms in October 1999.

 

 

 

9. A Statement of Claim was then delivered on behalf of the plaintiff on 22 November 1999. As appears from the Statement of Claim, the plaintiff’s claim against the defendant mushroomed and was greatly expanded when compared with the complaints made in the Plenary Summons and in the Affidavit sworn for the purpose of the interlocutory injunction application which, as already indicated, were confined to the issues concerning check-in desks and baggage belts. In the Statement of Claim the plaintiff sought to expand its claim beyond the issue of check-in desks and baggage belts (which are dealt with in paragraphs 1 to 12 of the Statement of Claim). At paragraph 13 of the Statement of Claim the plaintiff introduced a whole range of new complaints against the defendant in relation to Dublin Airport (and two in relation to Shannon Airport) which were not raised in the Plenary Summons or in the plaintiff’s application for interlocutory injunction.

 

 

 

10. By way of example at paragraph 13 of the Statement of Claim the plaintiff alleged that the defendant acted in abuse of a dominant position or otherwise in an anti competitive manner in relation to many matters such as in:

 

 

 

(1) Introducing and subsequently increasing a fuel levy on all carriers at Dublin Airport;

 

 

 

(2) Requiring the plaintiff (and other airlines) to use a computerised check-in system at Dublin Airport known as CUTE (Common User Terminal Equipment);

 

 

 

(3) Discriminating against the plaintiff in relation to the extension of its hangar space at Dublin Airport;

 

 

 

(4) Discriminating against the plaintiff in relation to arrangements in place for using and paying for facilities at Pier A in Dublin Airport;

 

 

 

(5) Discriminating against the plaintiff in relation to VIP lounges and car parking;

 

 

 

(6) Discriminating against the plaintiff in relation to its third party handling arrangements at Shannon Airport in 1995;

 

 

 

(7) Discriminating against the plaintiff by allegedly not using the plaintiff’s services for business travel for the defendant’s staff;

 

 

 

(8) Discriminating against the plaintiff In relation to clamping and vehicle recovery services for the plaintiff’s staff in Dublin Airport.

 

 

 

11. In the Statement of Claim and in particulars subsequently furnished the plaintiff has sought to turn its claim in these proceedings into a sort of Tribunal of Inquiry into the operation by the defendant of Dublin Airport (and in relation to two matters, Shannon Airport). No complaint was made by the plaintiff in the Statement of Claim or any of the particulars (including the purported “additional particulars” sent by letter dated 15 December 2000 in relation to Cork Airport although the plaintiff has sought discovery of documents relevant to Cork Airport (paragraph (iv) of the Notice of Motion).

 

 

 

12. The defendant sought particulars of the plaintiff’s claim. While particulars were originally furnished by the plaintiff on 26 April 1999, the plaintiff refused to furnish replies to a further Notice for Particulars dated 14 June 2000. The plaintiff was ordered by the High Court by Order dated 16 February 2001 to furnish certain of the further replies sought by the defendant.

 

 

 

13. A full Defence was filed on behalf of the defendant on 13 December 2000.

 

 

 

14. After the Defence was filed, the plaintiff sought to adduce “additional particulars” in a letter from the plaintiff’s solicitors dated 15 December 2000. That letter predated by seven days the plaintiff’s request for voluntary discovery which was made by letter dated 22 December 2000. That letter contained the following introduction:

 

“The plaintiff has been made aware of the following additional information since the plaintiff delivered its Replies to Particulars. Please note that the additional information will be relied upon by the plaintiff as setting forth additional particulars of its claim and more detailed particulars justifying the discovery sought”:

 

 

 

15. The letter of 15 December 2000 was, clearly therefore, sent for the purposes of further expanding the scope of the discovery to be sought by the plaintiff against the defendant. However, in that letter the plaintiff sought to introduce a number of entirely new issues which had not previously been raised in the Statement of Claim or in the Replies to Particulars previously furnished. Many of the new matters which the plaintiff sought to introduce into the proceedings in the letter of 15 December 2000 are alleged to have occurred more than six years prior to the commencement of the proceedings. For example, one of the matters referred to in paragraph (b) is alleged to have occurred in the 1960’s. Another matter referred to in that paragraph is alleged to have occurred in 1984. The matter referred to at paragraph (a) of the letter is alleged to have occurred in 1991.

 

 

 

16. The defendant contends that it is not open to the plaintiff to seek to introduce such “additional particulars” by way of letter and in the absence of seeking an amendment of its Statement of Claim. If the plaintiff were to seek to amend its Statement of Claim to introduce the matters referred to in the letter of 15 December 2000, the defendant would oppose any such amendment on the grounds that any alleged cause of action arising from such matters would have been statute barred on 30 September 1999 when the plaintiff’s claim commenced. In other words this is not a case where it is alleged that the claim has become statute barred in the period between the date of commencement of the proceedings and the date on which any amendment might be sought. The defendant’s contention is that those matters were already statute barred when the proceedings commenced. In those circumstances the defendant would oppose an amendment to the Statement of Claim on the grounds that many of the matters sought to be introduced are statute barred and no useful purpose would be served in permitting the plaintiff to introduce such matters into the Statement of Claim when the defendant could successfully rely on its plea that the claim is statute barred.

 

 

 

17. If the matters sought to be introduced by the plaintiff in the letter of 15 December 2000 require amendment to the Statement of Claim as contended by the defendant, then this is all the more reason why it is inappropriate for the plaintiff to seek to rely on such matters in the “additional particulars” to justify a claim for discovery in respect of documents relating to those matters (for example, paragraphs (v) (d), (e) and (f)). The defendant’s solicitors objected to the plaintiff’s attempted reliance on the letter of 15 December 2000 to ground its claim for discovery in their letter of 16 December 2001. This compliant has never been satisfactorily addressed by the plaintiff’s solicitors and no application to amend the Statement of Claim has ever been brought.

 

 

 

18. The principles applicable to discovery have been significantly altered by the Rules of the Superior Courts (No. 2) (Discovery), 1999 (the “1999 Rules”) (S.I. No. 233 of 1999) which amended Order 31 Rule 12 of the Rules of the Superior Courts.

 

 

 

19. The 1999 Rules have been considered in a number of recent decisions including Swords v Western Proteins Limited and Burke v D.P.P. (Unreported, Supreme Court, 21st June, 2001). However, before looking at the position under the 1999 Rules it might be helpful to refer to some earlier Irish decisions which demonstrate the requirement that the party seeking discovery must ensure that the documents sought are relevant to the matters at issue in the proceedings and necessary for the disposal of those proceedings and that discovery sought may constitute a “fishing expedition”. It is clearly established by the authorities that the discovery sought must be referable to pleaded issues. This is, of course, now subject to the 1999 Rules. As can be seen from the Notice of Motion and the plaintiff’s request for voluntary discovery the same cannot be said for the discovery sought by the plaintiff in this case.

 

 

 

20. The defendant will refer and rely on a number of Irish decisions on that issue.

 

 

 

21. In Bula Limited (In Receivership) v Crowley, [1991] 1 I.R. 220 in an application for further and better discovery, Finlay CJ observed that:

 

“… any order for further discovery … should not, in particular, permit the opposing party to indulge in an exploratory or fishing operation”‘

 

 

 

22. In Allied Irish Banks plc. v Ernst & Whinney [1993] I.R. 375 which concerned the issue of non party discovery, O’Flaherty J. in the Supreme Court had a number of pertinent comments which are applicable to discovery in general and not merely non party discovery. He observed that:

 

“The purpose of discovery is to help to define the issues as sharply as possible in advance so that the actual hearing is allowed to take its course as smoothly as possible.”

 

He continued by stating that:

 

“Discovery is but an instrument to advance the cause of justice. It should be availed of to give the parties a proper appraisal of the case and on occasion, at least, to remove some issues from the debate thus saving time and costs.”

 

He continued:

 

“There has been experience in other jurisdiction where discovery is used to swamp the opposing party with masses of material, to engage in such a tactic is as much an abuse as to withhold relevant information”.

 

He further stated:

 

“There is no doubt that the party applying for discovery must satisfy the Court that it is likely that the party against whom discovery is sought has documents which are relevant to an issue arising or likely to arise out of the cause or matter. Of course, if the documents are not relevant then they should not be discovered at all.”

 

He concluded by stating:

 

“… these interlocutory matters, such as discovery and interrogatories, are a means to an end and should never be allowed to take on a life of their own” .

 

It will be submitted by reference to the particular categories of documents sought by the plaintiff in the present case that if discovery is ordered of the documents sought by the plaintiff it will not help to define the issues and will not permit the hearing to take its course “as smoothly as possible” in the words of O’Flaherty J. It will not give the parties “a proper appraisal of the case” and will not “remove some issues from the debate thus saving time and costs” as stated by O’Flaherty J.

 

 

 

23. In Irish Intercontinental Bank Limited v Brady (Unreported, Supreme Court, Blayney J., 1st June 1995) in delivering judgment in the Supreme Court, Blayney J. emphasised the fact that documents sought by way of discovery must be relevant to issues disclosed in the pleadings. This was emphasised by Blayney J. at page 7 of the judgment.

 

 

 

24. In one of the leading cases on discovery prior to the 1999 Rules, the Supreme Court made it clear that unrestricted discovery was not appropriate. In Brooks Thomas v Impac [1991] 1 ILRM 171 the Court emphasised the requirement on a party seeking discovery to establish that the documents sought were necessary and not merely relevant. In that case, the Supreme Court allowed an appeal from an Order granting discovery and refused to order further discovery. Although the Court approved the dicta of Brett L.J. in Companie Financiere du Pacifigue v Peruvian Guano Company in relation to the relevance of documents, the Court went on to analyse whether notwithstanding the relevance of documents discovery should fairly be ordered. The case concerned a particular category of documents. The conclusion of the Supreme Court can be seen in the following extract from the judgment of Lynch J.:

 

“I am driven to the inference that discovery in this case was no more than a fishing exercise and was quite unnecessary . . . “(emphasis added)

 

He continued:

 

“In relation to the further discovery the subject matter of this appeal, I am satisfied that it is not necessary either for disposing fairly of the action or for saving costs and I would therefore reverse the order of the High Court and dismiss the motion for further discovery.  (emphasis added)

 

 

 

25. The defendant will refer to two further cases in which the court depreciated the use of discovery as a “fishing expedition”. In Aguatechnoloaie v Natinal Standards Authority of Ireland and Others (Unreported, Supreme Court, 10th July, 2000 Murray J.) Murray J. stated:

 

“The Appellant in its application relied upon the decision of the Court in Sterling Winthrop Group Limited v Fabenfabriken Bayer … where it was held that

 

‘every document relating to the matters in question in an action, which not only would be evidence upon any issue, but which, it is reasonable to suppose, contains any information which may – not which must – enable the party requiring the Affidavit to advance his own case or to damage the case of his adversary, should be discovered’. However, it seems to me that there is nothing in that statement which is intended to qualify the principle that documents sought on discovery must be relevant, directly or indirectly to the matters in issue between the parties to the proceedings. Furthermore, an applicant for discovery must show it is reasonable for the Court to suppose that the documents contain information which may enable the applicant to advance his own case or to damage the case of his adversary. An applicant is not entitled to discovery based on mere speculation or on the basis of what has been traditionally characterised as a fishing expedition.”

 

In McDonnell v Sunday Business Post Limited (Unreported High Court, O’Sullivan J., 2nd February 2000)  O’Sullivan J. stated:

 

 

 

“I would consider a fishing or exploratory operation to be one where there was no stated objective or delimitation by reference to the pleadings. In the present case, however, in general the list of categories of documents sought are capable of being, and in all but one case have been, specifically related to paragraphs in the plaintiff’s pleadings. I have gone through this list carefully and I cannot agree that it bears the hallmarks of an exploration or fishing expedition. On the contrary, in the vast majority of incidents, specific documents are identified with a reasonable degree of precision.’

 

 

 

26. Order 31 Rule 12 was amended by the 1999 Rules. Under Order 31 Rule 12(1) (as amended), a Notice of Motion for discovery is required to “specify the precise categories of documents in respect of which discovery is sought” and is required to be grounded on an Affidavit verifying the discovery of documents sought is “necessary for disposing fairly of the cause or matter or for saving costs” and is required to furnish the reasons why each categories of documents is required to be discovered. Under Order 31 Rule 12(3) it is provided that:

 

“(3) An order shall not be made under this Rule if and so far as the Court shall be of the opinion that it is not necessary either for disposing fairly of the cause or matter or for saving costs.”

 

 

 

27. Under Order 31 Rule 12(4), a party seeking discovery is required to send a letter in advance requesting voluntary discovery. Order 31 Rule 4(1)(a) requires that a letter seeking voluntary discovery must specify “the precise categories of documents in respect of which discovery is sought” and must furnish the reasons why each categories of documents is required to be discovered.

 

 

 

28. The 1999 Rules clearly demonstrate the importance of initially sending a letter seeking voluntary discovery specifying the precise categories of documents in respect of which voluntary discovery is sought and furnishing the reasons for the discovery sought. The 1999 Rules also require that the motion for discovery must specify the “precise” categories of documents in respect of which discovery is sought. These principles were considered by Morris P. in Swords v Western Proteins Limited. In that case the letter seeking voluntary discovery sought general discovery of documents and, in particular (inter alia) “accident report book / record details”. Morris P. upheld an appeal from the Master ordering discovery of such documents on the grounds that the letter seeking voluntary discovery which was the source of the Court’s jurisdiction to order discovery, did not specify with sufficient precision the documents sought by way of discovery. In his judgment, Morris P. stated as follows:

 

 

 

“With regard to Counsel’s first point, 1 am satisfied that the amendment to Order 31 Rule 12 was made for the purpose of addressing a problem which had given rise to delays and potential injustices over a number of years. A practice had developed whereby Orders for Discovery were obtained unnecessarily and such Orders delayed litigation. As has been pointed out by the court on a number of occasions, Discovery before the advent of the photocopying machine, fax, E-mail and word processors would probably involve the discovery of a dozen documents. In recent years the number of documents discovered can amount to many thousands and the process has become unmanageable.”

 

 

 

Morris P. went on to consider the reason for the introduction of the 1999 Rules. He stated as follows:

 

“Accordingly, 1 believe that S.1. No. 233 of 1999 imposed a clearly defined obligation upon a Party seeking Discovery to pinpoint the documents or category of documents required and required that Party to give the reasons why they were required. Blanket discovery became a thing of the past. The new rule was brought into being to ensure in the first instance that the Party against whom Discovery was being sought would, upon receipt of the preliminary letter, be in a position to know the document or category of documents referred to and be able to exercise a judgment on whether the reasons given for requiring these documents to be discovered was valid. He would then be in a position to know if he was required to comply with the request. If he disputed his obligation to make discovery the Court would know by reference to this letter precisely why the Moving Party sought the documents in question and the grounds upon which the Moving Party believed that the documents sought to be discovered might help to dispose fairly of the cause or save costs”.

 

 

 

Morris P. concluded that if the letter seeking voluntary discovery did not comply with the Rules then the issue was not identified and there was no power vested in the Master to make determination on any issue even where an elaborate Affidavit was filed. He concluded that the Master derived his jurisdiction from the letter seeking voluntary discovery. Morris P. found that the description of documents such as “accident report books, record details” was not sufficient and did not specify the precise categories of documents sought. He held therefore that there was a failure in that case to specify the precise categories of documents sought by way of discovery and that the 1999 Rules had not been complied with”.

 

 

 

29. The sentiments of Morris P. were echoed by Keane C.J. in delivering the judgment of the Supreme Court in Burke v DPP. In that case Keane C.J. endorsed the comments of Morris P. in Swords and stated:

 

“It is pointed out in the judgment of the President of the High Court … [in] Michael Swords v Western Proteins Limited … – and I should perhaps refer to the actual passage in the President’s judgment – that this amendment to the original rules was made for the purpose of addressing a problem which had given rise to delays and potential injustices over a number of years. A practice had developed whereby Orders for discovery were obtained unnecessarily and such Orders delay litigation. As has been pointed out by the courts on a number of occasions, discovery before the advent of the photocopying machine, fax, E-mail and word processors would probably involve in many cases the discovery of not more than a dozen documents. In recent years, the number of documents discovered can amount to many thousand and the process has become in many cases unmanageable. The learned President said that the new rule imposed a clearly defined obligation upon a party seeking discovery to pin point the documents or categories of documents required and required that party to give the reasons why they were required: blanket discovery had become a thing of the past. I have no doubt that the learned President was entirely correct in his view as to the object of a new rule and indeed its importance.”

 

 

 

Keane CJ emphasised the importance of compliance with the Rules for the reasons referred to by Morris P.

 

 

 

30. It is respectfully submitted that the 1999 Rules and the authorities referred to above demonstrate the importance of ensuring that the letter seeking voluntary discovery specifies with sufficient precision and pinpoints the precise categories of documents in respect of which discovery is sought. If it does not do so then neither the Master nor the Court has jurisdiction to order discovery on foot of that letter. The importance of specifying with precision the categories of documents sought is highlighted in the 1999 Rules and in Swords and Burke. So too is the importance of giving adequate reasons for seeking discovery and of demonstrating the necessity of discovery sought. The cases referred to earlier highlight the requirement that the documents sought must be referable to issues raised in the pleadings and discovery cannot be a “fishing expedition”. In this regard reference may also be made to the decision of Whitford J. in British Leyland Motor Corporation v Wyatt Interpart Co. Limited [1979] FSR 39. In that case (a competition case), the court refused to order the wide discovery sought by the defendant on the grounds that it would be “oppressive”. Whitford J. highlighted the fact in such cases the party seeking discovery was not entitled to embark on a “fishing exercise”.

 

 

 

31. As indicated earlier, the plaintiff’s request for voluntary discovery was made by letter dated 22 December 2000. This letter was replied to in detail by the defendant’s solicitors on 16 February 2001. In that letter two preliminary points were made

 

(i)  It was firstly contended that the plaintiff’s letter seeking voluntary discovery did not comply with the provisions of Order 31 Rule 12 (as amended by the 1999 Rules) in that it did not specify or pinpoint the precise categories of documents in respect of which discovery was sought. In many cases, the description of documents was so vague, uncertain and imprecise that the defendant could not be in a position of knowing what documents the plaintiff was seeking by way of discovery. It was, therefore, contended that the letter for discovery was not in compliance with the Rules and therefore there was no jurisdiction to make an order for discovery on foot of that letter.

 

 

 

(ii)  The plaintiff was not entitled to rely on the “additional particulars” purportedly furnished by letter dated 15 December 2000 to ground its request for discovery since no attempt had been made to amend the Statement of Claim to introduce these matters many of which are statute barred.

 

 

 

32. Without prejudice to those preliminary contentions, the defendant sought to address the particular categories of documents sought by way of discovery.

 

 

 

33. As indicated earlier the plaintiff seeks discovery of some fifteen principal categories of documents. However, one of those categories (paragraph (v)) contains no less than fifteen sub-categories. In all the plaintiff seeks discovery of some thirty-three categories of documents. The plaintiff appears to have trawled the pleadings and sought to supplement the pleadings by way of the “additional particulars” and then sought discovery of each and every single issue raised in the pleadings and in the “additional particulars” without reference to what is necessary in order fairly to dispose of the claim or to save costs (being a requirement under the 1999 Rules). It is respectfully submitted that not only is the discovery sought by the plaintiff a “fishing expedition” but that it is not in compliance with the 1999 Rules.

 

 

 

34. Each of the particular categories of documents sought by the plaintiff will now be addressed, adopting the same paragraph numbering as in the Notice of Motion:

 

(i) These documents concern a number of passengers checked in by Aer Lingus at Dublin Airport in 1998 and up to 27 September 1999. The defendant’s objection is as follows:

 

(a) The request is not sufficiently precise as required by Order 31 Rule 12 and the decision in Swords v Western Proteins Limited.

 

 

 

(b) While the question of passenger numbers is relevant, the plaintiff has not provided a sufficient reason as to why it is necessary that it obtains discovery of the categories of documents (even if they could be discerned by the defendant) referred to in paragraph (i) of the Notice of Motion.

 

 

 

(c) It is not necessary that the plaintiff obtains discovery of such documents. The plaintiff has already given what it regards as the number of passengers handled by Aer Lingus in the Statement of Claim (paragraph 7) and in the Affidavit sworn by Charlie Clifton on 29 January 1999 for the purpose of the interlocutory application.

 

 

 

(d) The reasons given for seeking discovery are, therefore, inadequate.

 

 

 

(e) Without prejudice to those submissions the plaintiff was invited to reformulate its request explaining why discovery was necessary and if it did so the defendant would be prepared to make discovery of documents demonstrating the number of passengers handled by Aer Lingus at Dublin Airport in 1998 and up to 27 September 1999. The plaintiff did not do so.

 

 

 

(ii) These documents concern the check-in desks and baggage belts provided by the defendant for Aer Lingus at Dublin Airport in 1998 and up to 27 September 1999. The defendant objects to making discovery of these documents on the following grounds:

 

(a) The request lacks the precision required by Order 31 Rule 12 of the Rules and the decision in Swords v Western Proteins Limited.

 

(b) While documents concerning the check-in desks and baggage belt facilities made available by the defendant to Aer Lingus may be relevant to the proceedings, the plaintiff has not established that it is necessary that he obtains discovery of such documents even if they could be identified by the defendant notwithstanding the imprecision in the description.

 

(c) It is not necessary that the plaintiff obtains discovery of such documents. The plaintiff has asserted in the Statement of Claim (at paragraph 7) and in the Affidavit sworn by Charlie Clifton on 29 January 1999 (at paragraph 2) that the defendant has made available “at least fifty six check-in desks and three baggage belts” to Aer Lingus. No good reason has been advanced as to why documents are required by the plaintiff in support of this plea.

 

(iii) These documents are described in the most general of terms but appear to relate to the facilities in place during the construction works at Dublin Airport. The defendant’s objection to the discovery sought in the manner set out at paragraph (ii) of the Notice of Motion is as follows:

 

(a) The description of the documents lacks the necessary precision required by Order 31 Rule 12 (as amended by the 1999 Rules) and the decision in Swords v Western Proteins Limited. The plaintiff has failed to pinpoint the documents required.

 

(b) While it is accepted that minutes and notes of the consultations which predated the arrangements complained of by the plaintiff during the construction works are relevant, the defendant has already furnished copies of the relevant documents by way of an exhibit in its Affidavit sworn in response to the plaintiff’s interlocutory injunction application (exhibit “DT4” to the Affidavit of Don Treacy sworn on 4 October 1999).

 

(c) The plaintiff has not given good reason as to why the further documents (even if they could be identified notwithstanding the imprecision in the description) are necessary in order fairly to dispose of the claim or to save costs. The reasons advanced by the plaintiff are, therefore, inadequate.

 

(d) Notwithstanding the deficiencies in the request, the defendant is prepared to furnish again the documents previously furnished by way of an exhibit to the Affidavit of Don Treacy together with any public notices about the arrangements.

 

(e) The plaintiff was requested to reformulate its request for voluntary discovery to enable the defendant to reconsider its request. However, the plaintiff has failed to do so.

 

(iv) These documents concern introduction of a fuel levy at Dublin Airport on 1 January 1995, an alleged attempt by the defendant to introduce a similar fuel levy at Cork Airport and negotiations with fuel companies in relation to supply of fuel. The defendant’s objections to the discovery sought are as follows:

 

(a) The documents are not described with sufficient precision as required by the Rules or by the decision in Swords v Western Proteins Limited.

 

(b) As regards fuel levy at Dublin Airport, the plaintiff has not given good reason as to why such discovery is necessary. The plaintiff presumably knows that a fuel levy was introduced and levied on it and other airlines and the amount of that levy. No good reason has been advanced as to why it is necessary to obtain discovery of such documents in order fairly to dispose of the claim. Discovery will merely increase the costs contrary to the provisions of the Rules.

 

(c) The documents sought in relation to Cork Airport are of no relevance to any issue pleaded in the case. Furthermore, accordingly to the plaintiff’s solicitors’ letter of 14 March 2001, the alleged attempt to introduce a similar fuel levy at Cork Airport was in July 2000. This is long after the proceedings. The plaintiff seeks these documents in order to establish a “pattern of abuse of conduct with respect to unjustifiable levies”. However, there is no explanation for this. Not only are the documents irrelevant but the plaintiff has otherwise failed to comply with the Rules.

 

(d) Documents concerning negotiations with fuel companies are not relevant to any pleaded issue. They are not relevant. No good reason has been advanced as to why it is necessary that the plaintiff obtains discovery of these documents.

 

(v) This paragraph seeks discovery of fifteen sub-categories of documents. The documents are described in general terms at the beginning of paragraph (b) of the Notice of Motion and in the letter seeking voluntary discovery. However, by way of a general point, the description of the documents in this paragraph is vague and imprecise. It does not comply with the Rules or with the decision of Morris P. in Swords v Western Proteins Limited. That general point applies to all of the fifteen sub-categories. Turning to those sub-categories in turn:

 

(a) These are documents concerning an alleged refusal by the defendant to consent to the plaintiff funding an extension of its hangar facilities at Dublin Airport in 1998. While this issue is raised in paragraph 13 of the Statement of Claim, it is not accepted that the plaintiff has given good reason as to why it is necessary that the plaintiff obtains discovery of such documents. Therefore, the request does not comply with the provisions of the Rules.

 

(b) This concerns a decision to extend a lease in respect of Team Aer Lingus and to grant consent to the financing and construction of a new hangar in February 1999. Again, while this is referred to at paragraph 13(c) of the Statement of Claim, no proper attempt has been made to demonstrate why it is necessary that the plaintiff obtains discovery of such documents. There has not, therefore, been compliance with the Rules and no discovery should be ordered.

 

(c) This concerns the joint funding in 1998 of check-in area q between the defendant and Aer Lingus. While this is pleaded at paragraph 13(c) of the Statement of Claim, no attempt has been made to give sufficient reasons as to why discovery is required. The defendant contends that discovery should not be ordered on the grounds of non compliance with the Rules and on the grounds that the request constitutes a “fishing expedition”.

 

(d) Documents sought here contain an alleged agreement between the defendant and Team Aer Lingus in 1991. In addition to the general point that there has not been compliance with the Rules, the defendant further objects that this issue is not raised in the pleadings; it was raised in the purported “additional particulars” in the letter of 15 December 2000; the plaintiff is not entitled to rely on the “additional particulars” to advance its claim for discovery in the absence of seeking to amend its Statement of Claim; the issue raised would be statute barred since it is alleged to have occurred in 1991; no attempt has been made to explain why it is necessary that the plaintiff obtains discovery of such documents.

 

(e) The documents sought here concern an alleged lease by the defendant to Aer Lingus in respect of a tract of land reserved for unspecified purposes and/or development. In addition to the general point made earlier, the defendant objects to making discovery on the grounds that this is not an issue raised in the pleadings, it was purportedly raised in the “additional particulars” in the letter of 15 December 2000. No attempt has been made to amend the Statement of Claim. No attempt has been made to state when this lease was allegedly granted. No proper attempt has been made to advance the reason why it is necessary the plaintiff obtains discovery of these alleged documents. (f) The documents here concern the alleged refusal by the defendant to extend to the plaintiff similar terms to those extended to Aer Lingus and referred to at (e) above. However, this is not relevant to any issue raised in the pleadings. It is not raised in the Statement of Claim. It is not even raised in the “additional particulars” in the letter of 15 December 2000. No indication is given as to whether any request for similar facilities was made by the plaintiff and, if it was, when it was refused. Therefore, the documents sought here are not relevant. Nor has the plaintiff advanced sufficient reasons as to why discovery is necessary.

 

(g) These documents concern an alleged assignment of a lease to FLS. The defendant objects to discovery of these documents on the grounds that there is no such allegation in the pleadings. It was raised in the purported “additional particulars” in the letter of 15 December 2000. However, no attempt has been made to amend the Statement of Claim. It is not alleged anywhere in either the Statement of Claim or in the “additional particulars” that the plaintiff sought an assignment of the lease and that it was refused. It is submitted that no good reason has been advanced as to why it is necessary for the plaintiff to obtain discovery of these documents even if they could be identified notwithstanding the imprecision in the description.

 

(h) These documents concern an alleged assignment of a lease by the defendant to Aer Lingus in respect of an area of land of approximately 13 acres on which the head office was constructed. This is not an issue raised in the pleadings. It was not in the Statement of Claim or in any of the particulars furnished. It was contained in the purported “additional particulars” contained in the letter of 15 December 2000. However, as is clear, the events are alleged to have occurred in the 1960’s. Any claim is therefore statute barred. The defendant was not given a good reason as to why it is necessary that the plaintiff obtains discovery of these documents.

 

(i) This request concerns a “Memorandum of Understanding” allegedly agreed between the defendant and Aer Lingus. However, again this is not an issue raised in the pleadings. It was raised for the first time in the purported “additional particulars” in the letter of 15 December 2000. The defendant has the same objections as in relation to (h) above. The agreement was alleged made in 1984. It is therefore statute barred. No good reason has been given as to why it is necessary that the plaintiff obtains discovery of these documents.

 

(j) The documents here concern an alleged agreement between the defendant and Aer Lingus to develop a hanger facility for A320 aircraft in Shannon. However, this is not an issue raised in the pleadings. It is not in the Statement of Claim or in any of the particulars. It was raised in the purported “additional particulars” in the letter of 15 December 2000. It introduced a new element not previously raised in relation to Shannon Airport. It is not relevant to the matters at issue in the proceedings. Nor has the plaintiff given good reason as to why it is necessary that it obtains discovery.

 

(k) This request concerned an agreement to allow an additional floor on top of the Aer Lingus Catering and Personnel Building at Shannon Airport. This is not an issue raised anywhere in the pleadings. It was purportedly raised in the “additional particulars” on 15 December 2000. However, no amendment has been made to the Statement of Claim. In any event the agreement concerns Dublin Airport and an identical arrangement was made with the plaintiff. Therefore, these documents are not relevant to any issue in the proceedings and the plaintiff has not given good reasons as to why it is necessary that it should obtain discovery of these categories of documents.

 

(I) These documents concern an alleged agreement between the defendant and UPS Shannon Airport in relation to hangar facilities. Again such documents are not relevant. They are not relevant to any issue raised in the Statement of Claim. They were purportedly raised in the “additional particulars”. However, no attempt was made to amend the Statement of Claim. Not only are they not relevant but no good reason as been advanced as to why it is necessary that the plaintiff obtains discovery of them.

 

(m) These documents appear to overlap with paragraph (c) above. The same objection applies.

 

(n) These documents concern the alleged granting by the defendant to Mr. Goodman of a lease for the development of an airside hangar facility. However, they are not relevant to any issue raised in the proceedings. The documents do not derive from any issues pleaded in the Statement of Claim. This issue was raised for the first time the purported “additional particulars” in the letter of 15 September 2000. This was an attempt to render the issues relevant to the matters in the proceedings. However, it is not relevant and no attempt has been made to demonstrate its relevance. Nor is it necessary that the plaintiff obtains discovery of such documents.

 

(o) Documents relating to “any other favourable arrangements” entered into with other operators such as Aer Lingus, DHL, SIPTU and Gate Gormet. This request is totally imprecise. It is clearly a fishing expedition. No attempt has been made to show the relevance of the documents sought here to any matter pleaded in the Statement of Claim. It is not even raised in the “additional particulars” in the letter of 15 December 2000. The plaintiff has made no attempt to demonstrate why it is necessary that it obtains discovery of these documents.

 

(vi) These documents concern the computerised check-in services known as CUTE at Dublin Airport. However, the description of the documents does not satisfy the provision of the Rules or the decision in Swords v Western Proteins Limited. The description is imprecise and no attempt has been made to pinpoint the documents requested. No attempt has been made to explain why it is necessary that the plaintiff obtains discovery of such documents. The plaintiff was given an opportunity by the defendant’s letter of 16 February 2001 to reformulate its request for discovery explaining why these documents were required. This was not done.

 

(vii) Two further categories of documents are sought here. They concern:

 

(a) The elimination of discounts applicable to Pier A at Dublin Airport on 1 January 2000; and

 

(b) Details of the cost for the construction of Pier C, the passenger terminal extension and Pier A including contract prices.

 

 

 

As to (a), the plaintiff has not described the documents with sufficient precision to comply with the Rules and the decision of Morris P. in Swords v Western Proteins Limited. No attempt has been made to identify what documents are requested. No adequate attempt has been made to explain why it is necessary that the plaintiff obtains these documents. The plaintiff has alleged the elimination of the discounts. Why should discovery be required of this? The discovery concerns events which occurred after the commencement of the proceedings (on 1 January 2000) where as the proceedings were commenced on 30 September 1999. If, contrary to the submissions, documents are ordered under this heading they should be limited in time. As to (b), the plaintiff is not entitled to “details” of anything by way of discovery. The plaintiff appears to be seeking a vast amount of documentation concerning the construction of a number of different facilities. No attempt has been made to explain why these are relevant or why they need documents in order to make the case. It is alleged by the plaintiff that it is required to pay the same rate as operators using Pier C for substantially inferior services and infrastructure. However, it is clear, therefore, that the plaintiff is aware what it and other operators are paying and the facilities which it is getting for what it is paying. It is not clear why discovery of documents under this heading is necessary. The discovery sought here is oppressive, irrelevant and unnecessary.

 

(viii) Documents here concern VIP lounges, car-parking and facilities at Dublin Airport. The plaintiff also seeks a “list” of all persons / companies to whom such facilities are made available. The defendant maintains its objection that the description of documents is inadequate and does not comply with the provisions of the Rules or the decision in Swords v Western Proteins Limited. The defendant makes the point that the plaintiff has never requested VIP lounges for its passengers. However, without prejudice to its objection, the defendant is prepared to provide copies of agreements entered into by the defendant with other airlines concerning VIP lounges. With regard to the car parking, the defendant makes the point that it provides 370 staff car parking spaces free of charge to the plaintiff. Without prejudice to its objection, the defendant is prepared to make copies of such agreements with respect to the provision of car parking to the plaintiff and Aer Lingus as may exist. However, both these documents and the documents in relation to VIP lounges should be limited in time. The defendant does object to making discovery of a “list” of persons and companies. This is not an appropriate matter for discovery. The defendant also objects to making discovery of the alleged withdrawal of VIP facilities from the plaintiff’s employees. The defendant does not accept that such documents are relevant or that it is necessary that the plaintiff obtains discovery of them. The plaintiff should be aware of those employees from whom it is alleged VIP facilities were withdrawn.

 

(ix) The documents sought here concern alleged refusal by the defendant to allow the plaintiff’s chosen third party handling agent access to Shannon Airport in 1995. The defendant makes a general objection that the description of documents does not comply with the Rules and the decision in Swords v Western Proteins. The plaintiff has also failed to explain why it is necessary that it obtains discovery. However, notwithstanding that objection the defendant is prepared to furnish copies of documents concerning the plaintiff’s request to have its own third party handers at Shannon Airport in 1995.

 

(x) The documents here concern an alleged decision by the defendant in 1995 to change the designation of the plaintiff’s parking stands at Shannon Airport. The defendant maintains its objection to the discovery sought in this paragraph on the grounds that the description of documents does not comply with the Rules or with the decision in Swords v Western Proteins. However, without prejudice to that objection, the defendant has indicated that it is prepared to make copies of whatever documents it has concerning this alleged decision available to the plaintiff.

 

(xi) The documents here concern an alleged refusal by the defendant up to 1995 to allow the plaintiff’s passengers access to Pier A through a link access. The defendant submits that the description of documents does not comply with the provisions of the Rules or with the decision in Swords v Western Proteins Limited. The defendant does not accept that the plaintiff has advanced good reason as to why it is necessary that it obtains discovery of such documents.

 

(xii) The documents here concern an alleged policy of the defendant to give its airline travel business for its executives and staff to Aer Lingus and not the plaintiff. The description of documents here is vague and uncertain. The plaintiff has failed to comply with the provisions of the Rules and has not identified with sufficient precision the documents requested by it. The plaintiff has not given good reason as to why it is necessary that it obtains discovery of such documents. It is unclear as to what documents are being sought or the period for which such documents are sought.

 

(xiii) The documents sought in this paragraph concern an alleged decision by the defendant to clamp cars at the plaintiff’s head office building and to instruct the vehicle recovery service “to make things difficult” for the plaintiff and its staff. The defendant objects to the description of the documents on the grounds that it does not comply with the provisions of the Rules or with the decision in Swords v Western Proteins Limited. The defendant contends that there was no such policy or instruction. The alleged policy or instruction according to the plaintiff was introduced in October / November 1999. This was after the commencement of the proceedings. Therefore, no discovery should arise.

 

(xiv) Some five sub-categories are sought in this paragraph. With regard to sub-paragraphs (a) to (c), the defendant repeats its objection that the plaintiff has not complied with the Rules or with the decision in Swords v Western Proteins Limited. However, furthermore, in so far as the plaintiff seeks discovery of documents concerning “incidents”, the plaintiff has failed to identify what it means by “incidents”. In particulars the plaintiff has identified two incidents, one in October 1999 and another on 16 February 2001. However, both are alleged to have occurred after the commencement of proceedings and therefore no discovery should arise. The plaintiff should reformulate its request describing the incidents which predated the proceedings with sufficient precision to enable the defendant to assess what documents are being sought and the necessity for the discovery of those documents. With regard to (d), notwithstanding that the defendant’s bye-law came into effect in October 1999 after the commencement of proceedings, the defendant is prepared to provide copies of such documents. With regard to (e), this concerns complaints in relation to wheelchair / disabled faculties at Dublin Airport, the defendant is prepared to provide copies of such documents although it does not accept that the plaintiff has made a good case that it is necessary that it obtains discovery of such documents.

 

(xv) This is a request for documents concerning the introduction of a bye-law requiring  provision to be made for the needs of persons with disabilities at Dublin Airport. While this post dated the commencement of the proceedings, the defendant is prepared to make available to the plaintiff copies of all documents concerning the introduction of the bye-law (S.I. No. 469/99).

 

 

 

35. It can be seen from the defendant’s letter of 16 February 2001 that the plaintiff was invited to reformulate its request for discovery so that it complied with the Rules and it was indicated that the defendant would consider any such further request for discovery. Notwithstanding that invitation and notwithstanding that a number of minor typographical amendments were made in a subsequent letter from the plaintiff’s solicitors dated 14 March 2001, the plaintiff made no attempt to reformulate its request for discovery and pressed on with this motion notwithstanding the deficiencies identified in the defendant’s letter of 16 February 2001.

 

 

 

36. The defendant respectfully submits that the plaintiff’s application for discovery should be refused.

 

 

 

1. These supplemental written submissions are made on behalf of the defendant in response to an issue raised in the plaintiff’s outline legal submissions.

 

2. The issue concerns the meaning of the term “necessary” in Order 31 Rule 12(3) of the Rules of the Superior Courts (as amended by the 1999 Rules). Order 31 Rule 12(3) provides that:

 

“(3) An Order [for discovery] shall not be made under this Rule if and so far as the Court shall be of the opinion that it is not necessary either for disposing fairly of the cause or matter or for saving costs.”

 

3. In its outline legal submissions, the plaintiff contends that all of the documents in respect of which it is seeking an order for discovery are “necessary” for fairly disposing of the cause or matter. The plaintiff relies on the decision of Kelly J. in Cooper Flynn v Radio Telefis Eireann (Unreported, High Court, Kelly J., 19th May 2000) and on a number of English authorities quoted by Kelly J. in that decision -Wallace Smith Trust Co. v Deloitte [1996] 4 All ER 403; Taylor v Anderton [1995] 2 All ER 420; Science Research Council v Nasse [1979] 3 All ER 673.

 

4. The plaintiff contends that these cases establish that a party seeking discovery of documents, in order to establish that such discovery is “necessary” would in the meaning of Order 31 Rule 12(3) of the Rules (as amended), has merely to establish that it will gain a “litigious advantage” in obtaining the documents. In support of this contention the plaintiff contends that the defendant “would have taken care to hide evidence of [its alleged] illegal behaviour and that the plaintiff “must by necessity have a limited knowledge of such activity given the nature of [the alleged] activities and the particular documents generated. To bolster its argument the plaintiff submits that it competes with the defendant? The plaintiff contends that the defendant ought not to be permitted to hide documents allegedly establishing breach of competition law.

 

5. In response to the submissions the defendant respectfully submits as follows:

 

(1) Before addressing the legal principles, it is necessary to take issue with the factual basis on which the plaintiff’s submissions are based. There is no question of the plaintiff competing with the defendant and no such allegation is made anywhere in the pleadings. Furthermore, there is no question of the defendant hiding evidence of any alleged illegal behaviour. No such allegation has been made by the plaintiff in any of the Affidavits sworn on its behalf in support of its application for discovery. It is most inappropriate that such an allegation is made for the first time in its legal submissions. Furthermore, there is no question of the plaintiff having “limited knowledge” of the defendant’s activities. As is clear from the pleadings, the plaintiff operates from Dublin Airport and has done so for many years. The detail of the allegations contained in the Statement of Claim and in the particulars furnished by the plaintiff are totalling inconsistent of the plaintiff having a “limited knowledge” of the matters which it is alleging against the defendant in the proceedings. The plaintiff’s submissions on this issue appear to be wholly unrelated to the factual position asserted by the plaintiff in the pleadings.

 

(2) The plaintiff relies on Cooper Flynn v RTE. However, that case did not concern an application for discovery. Orders for discovery had already been made in that case against NIB. At least one of the orders for discovery was made in December 1999, after the 1999 Rules had come into force. The application before the Court was an application for inspection of documents which had already been disclosed in NIB’s Affidavit of Discovery. The application was made under Order 31 Rule 18 of the Rules of the Superior Courts and not Rule 12 (which was amended by the 1999 Rules). The basis on which NIB and the plaintiff resisted inspection (but not discovery) was banker / customer confidentiality. That case was, therefore, totally different to the present case. In that case the defendants had already overcome the hurdle of establishing that the documents sought by way of discovery were “necessary” within the meaning of Order 31 Rule 12(3). What was at issue was whether inspection of the documents (without restrictions) could be permitted. The Court was not concerned with whether it was necessary for discovery of those documents to be made in the first place. That decision had already been made by the Court which ordered discovery.

 

(3) A generous interpretation of the word “necessary” in Order 31 Rule 12(3) would be fundamentally inconsistent with the purpose of the amendments to Order 31

 

Rule 12 introduced by the 1999 Rules (as discussed by Morris P. in Swords v. Western Proteins Limited and by Keane C.J. in Burke v DPP). Nor would such an interpretation be consistent with the sentiments of Lynch J. in delivering the judgment of the Supreme Court in Brooks Thomas Limited v Impac Limited. The defendant respectfully submits that the term “necessary” should be given its natural and ordinary meaning, in order words, must be essential that the plaintiff obtains discovery of such documents in order fairly to dispose of the claim or to save costs. The plaintiff has not satisfied this test.

 

(4) If the principles in Cooper Flynn and in the English cases cited by Kelly J. in that case (all of which seem to involve an issue of confidentiality or public immunity privilege) are applicable to an application for discovery as opposed to inspection, then it is necessary to have regard to what those principles are as they have not been fully set out in the plaintiff’s written submissions. As is clear , from the portion of the judgment of Simon Brown L.J. in Wallace Smith Trust Co. v Deloitte which was quoted with approval by Kelly J. in Cooper Flynn, disclosure will be “necessary” if three conditions are satisfied. Disclosure will be “necessary” if:

 

“(a) It will give “litigious advantage” to the parties seeking inspection (Taylor v Anderton…) and

 

(b) The information sought is not otherwise available to that party by, for example, admissions or some other form of proceeding (e.g. interrogatories) or from some other source (see e.g. Dolina -Baker v Merrett…) and

 

(c) Such order for disclosure would not be oppressive, perhaps because of the sheer volume of the documents (see e.g. Science Research Council v Nasse …)’

 

(5) It is clear that if principles in Cooper Flynn are applicable, the onus of establishing each of these three conditions lies on the parties seeking inspection (or, in this case, discovery). The defendant respectfully submits that the plaintiff has failed to discharge that onus. It has only sought to address the issue of “litigious advantage”. It has not discharged the onus of establishing such a “litigious advantage” within the meaning of that term in Science Research Council v Nasse. The plaintiff has not sought to address the other parts of the test which is whether the information is otherwise available to the plaintiff (or known to the plaintiff) or that the discovery sought would not be oppressive. It is submitted that the discovery sought would be oppressive. The defendant’s solicitors pointed out in their letter of 16 February 2001 in response to the request for voluntary discovery the vast amount of documents sought and the unnecessary costs involved -for example -the documents concerning the construction of Pier A and Pier C (paragraph (vii) of the Notice of Motion).

 

6. In summary, therefore, it is respectfully submitted that the meaning of the term “necessary” in Order 31 Rule 12(3) which the plaintiff contends cannot be correct having regard to the major change in the principles governing applications for discovery introduced by the 1999 Rules. Even if the principles for which the plaintiff contends are applicable, the plaintiff still fails to satisfy those principles or to meet the test for establishing the discovery sought by it is “necessary” either for disposing fairly of the cause of the matter or for saving costs.

 

In this case I’m dealing with an allegation of breach of a dominant position.  Without drawing unnecessary distinctions I am satisfied that the plaintiff’s objections to the perceived views of the Swords judgment are correct.

 

I would go further.  The defendants have a fundamental obligation as to the strategic and economic use of Irish facilities given the dominant position of the defendants it seems to me that the Court must look very carefully at the request of discovery.

 

I would in the circumstances of this case direct the defendants to answer all of the plaintiff’s requirements for discovery.

 

 

Schneider [Europe] GMBH -v- Conor Medsystems Ireland Ltd

[2007] IEHC 63 (02 February 2007)

JUDGMENT of Ms. Justice Finlay Geoghegan delivered on the 2nd day of February 2007.

The plaintiff is the proprietor of a European and Irish patent no. 0650740 (“The 740 patent”). The subject of the patent is an interventional catheter.

The defendant manufactures, markets and sells in Ireland a product known as the “CoStar product” which includes and comprises an interventional catheter. The plaintiff alleges that the defendant in so doing infringes the 740 patent. The defendant denies infringement and has counterclaimed for invalidity of the 740 patent on the basis of obviousness and lack of novelty.

Particulars have been sought and delivered; interrogatories raised, answered and the defendant has made certain admissions. Certain of these are relevant to the applications the subject of this judgment.

The plaintiff and defendant have each brought motions for discovery. The plaintiff also has brought a motion for further interrogatories. This was not pursued by reason of admissions made by the defendant on the morning of the hearing of these applications. Further by reason of those admissions the defendant’s motion for discovery was heard first and it is proposed to deal with the motions in the same order in this judgment.

 

Defendant’s Motion for Discovery

At the hearing, the defendant pursued its application for discovery of three categories of documents. The first category as stated in the notice of motion was revised and limited. The categories as pursued at the hearing are:

“Category (1)

Such documents relating to patent applications filed with the US Patents and Trademarks Office in respect of the product which is the subject-matter of EP 0650740 as disclose the state of the art (including but not limited to the two prior art documents pleaded) prior to the priority date of the European Patent.

 

Category (2)

All documents howsoever described concerning the conception, development and reduction to practice of the subject matter disclosed or claimed in the 740 Patent including (but not limited to) all laboratory notebooks of the named inventor, Gerhard Kastenhofer, and his laboratory technicians, correspondence, files, memoranda, notes, calendars, models, research and prototypes of the named inventor and any co-worker who assisted him with regard to the subject matter of the 740 Patent in respect of each feature of the Patent.

 

 

Category (3)

All documents which disclose or evidence the consideration (if any) given by the inventor of the 740 Patent, European Patent No. 0650740 and any other equivalent patent and by or on behalf of the Plaintiff to the prior art referred to or related to that listed in the Particulars of Objections delivered on behalf of the Defendant on 24 July 2006 or to any other documents considered but deemed by the inventor and/or by or on behalf of the Plaintiff not to be prior art including any documents disclosing or evidencing any consideration or evaluation by or on behalf of the Plaintiff as to the potential effect of any such alleged prior art on the patentability of the subject matter disclosed in the 740 Patent, in European Patent No. 0650740 or any other equivalent patent.”

 

General Principles

The parties are in agreement that the general principles according to which these applications for discovery should be determined are those set out by Kelly J. in P.J. Carroll and Co. v. The Minister for Health and Children (Unreported, High Court, 9th December, 2005). In the judgment of Geoghegan J. in the same case (Unreported, Supreme Court, 1st June, 2006) it is recorded at p. 6 that the parties in that case conceded that the learned High Court judge in his judgment had set out the correct principles to be applied.

Those principles are set out by Kelly J. at pp. 34 – 40 of his judgment in the following terms:

 

“Applicable Legal Principles

Order 31, r. 12 of the Rules of the Superior Courts as amended requires an applicant for discovery to demonstrate that the documents sought are both relevant and necessary for the fair disposal of the case or to save costs.

The locus classicus on relevance is to be found in the judgment of Brett L.J. in the Peruvian Guano Case [1882] 11 Q.B.D. 55. That judge described as relevant-

“Every document relating to the matters in question in the action, which not only would be evidence upon any issue, but also which, it is reasonable to suppose contains information which may – not which must – either directly or indirectly enable the party requiring the affidavit either to advance his own case or to damage the case of his adversary.”

That statement was considered by Murray J. (as he then was) in Aqua Technolgie v. NSAI (Supreme Court, 10th July, 2000) where he said:-

“… There is nothing in that statement which is intended to qualify the principle, that the document sought on discovery must be relevant, directly or indirectly to the matters in issue between the parties in the proceedings. Furthermore, an applicant for discovery must show it is reasonable for the court to suppose that the documents contain information which may enable the applicant to advance his own case or to damage the case of his adversary. An applicant is not entitled to discovery based on mere speculation or on the basis of what has been traditionally characterised as a fishing expedition.”

In Framus v. CRH Plc [2004] 2 ILRM 439, the Supreme Court approved of the approach of McCracken J. in this court in Hannon v. Commissioner of Public Works (Unreported, 4th April, 2001) where he set forth the appropriate approach to relevance as follows:-

“(i) The court must decide as a matter of probability as to whether any particular document is relevant to the issues to be tried. It is not for the court to order discovery simply because there is a possibility that documents may be relevant.

(ii) Relevance must be determined in relation to the pleadings in the specific case. Relevance is not to be determined by reasons of submissions as to alleged facts put forward in affidavits in relation to the application for further and better discovery unless such submissions relate back to the pleadings or to already discovered documents. It should be noted that Order 31, r. 12 of the Superior Court Rules specifically relates to discovery of documents ‘relating to any matter in question therein’.

(iii) It follows from the first two principles that a party may not seek discovery of a document in order to find out whether the document may be relevant. A general trawl through the other parties’ documentation is not permitted under the rules.

(iv) The court is entitled to take into account the extent to which discovery of documents might become oppressive, and should be astute to ensure that the procedure of discovery is not used as a tactic in the war between the parties.”

There is much recent authority on the second part of the test which an applicant for discovery must satisfy. Such an applicant must show that the discovery sought is necessary for disposing fairly of the cause or matter or for saving costs. The burden of proving that the discovery falls within this rubric rests with the applicant for discovery. This is not “a mere formalistic requirement” (see Ryanair Plc. v. Aer Rianta Cpt [2003] 4 IR 264.)

In that case Fennelly J. dealt with the issue as to what is meant by this concept of necessity by reference to my decision in Cooper Flynn v. Radio Telefís Éireann [2000] 3 I.R. 344 where I had adopted the following statement of Lord Bingham M.R. in Taylor v. Anderton where he said:-

“The crucial consideration is, in my judgment, the meaning of the expression ‘disposing fairly of the cause or matter.’ Those words direct attention to the question of whether inspection is necessary for the fair determination of the matter, whether by trial or otherwise. The purpose of the rule is to ensure that one party does not enjoy an unfair advantage or suffer an unfair disadvantage in the litigation as a result of a document not being produced for inspection. It is, I think, of no importance that a party is curious about the contents of a document or would like to know the contents of it if he suffers no disadvantage by not seeing it and would gain no litigious advantage by seeing it. That, in my judgment, is the test.”

Fennelly J. having referred to that passage went on to say:-

“It may not be wise to substitute a new term of art ‘litigious advantage’, for the words of the rule. Nonetheless, the discussion gives guidance as to the context in which the matter has to be considered. Within that context, the court has to reach a conclusion as to the likely effect of the grant or refusal of the discovery on the fair disposal of the litigation.

The change made to Order 31, r. 12, in 1999, exemplifies, however, growing concern about the dangers of unnecessarily costly and protracted litigation and, in particular, the burdens on parties and the courts arising from excessive resort to automatic blanket discovery. The public interest in the proper administration of justice is not confined to the relentless search for perfect truth. The just and proper conduct of litigation also encompasses the objectives of expedition and economy.

The court, in exercising the broad discretion conferred upon it by Order 31, r. 12(2) and (3), must have regard to the issues in the action as they appear from the pleadings and the reasons furnished by the applicant to show that the specified categories of documents are required. It should also consider the necessity for discovery having regard to all the relevant circumstances, including the burden, scale and cost of the discovery sought. The court should be willing to confine categories of documents sought to what is genuinely necessary for the fairness of the litigation. It may have regard, of course, to alternative means of proof, which are open to the applicant. These may, no doubt, include the possible service of notices to admit facts or documents. But there are two sides to litigation. The behaviour of the opposing party is relevant. That party may, for example, have made or may offer to make admissions of facts, and thus persuade a court that discovery on some issues is not necessary. This is, perhaps, axiomatic. Those facts will no longer be an issue.”

This approach has been maintained by the Supreme Court in Taylor v. Clonmel Healthcare Limited [2004] 1 IR 169, where Geoghegan J. stated:-

“The purpose of the amendment (to Order 31, r.12) was so that the Master or the court as the case may be and the respective parties would focus on what documents were really needed for the purpose of advancing the case of the moving party or defending as the case might be.”

Again in Framus v. CRH Plc. Murray C.J. said:-

“It seems to me that in certain circumstances a too wide ranging order for discovery may be an obstacle to the fair disposal of proceedings rather than the converse. As Fennelly J. pointed out the critical question is whether discovery is necessary for ‘disposing fairly of the cause or matter’. I think it follows that there must be some proportionality between the extent or volume of the documents to be discovered and the degree to which the documents are likely to advance the case of the applicant or damage the case of his or her opponent in addition to ensuring that no party is taken by surprise by the production of documents at a trial. That is not to gainsay in any sense that the primary test is whether documents are relevant to the issues between the parties. Once that is established it will follow in most cases that their discovery is necessary for the fair disposal of those issues.”

It is these principles which I intend to apply on this application for discovery.

In accordance with the judgment of McCracken J. in Hannon v. Commissioner of Public Works I must turn to the pleadings to see whether the documents sought are relevant to the issues to be tried.”

The documents sought by the defendant herein are alleged to be relevant to its counterclaim for revocation of the 740 patent. The particulars of objections to the validity of the 740 patent allege want of novelty and inventive step having regard to the state of the art as of the priority date. Such state of the art is alleged to have comprised the following matters available to the public:-

“(a) United States Patent No. 4,960,410 (Pinchuk 1) published on 2nd October 1990.

(b) EP 0 476 855 A1 (Pinchuk 2) published on 25th March 1992.

(c) Common general knowledge, to extent that it may not be set out in any of the above.”

Category (1)

In the letter seeking voluntary discovery of the 19th September, 2006 and in the motion issued herein the defendant sought a much broader category of documents in category (1). The broader category included document passing between the plaintiff and the Irish and European Patent Offices in respect of applications for the 740 patent and the European patent no. 0650740. The plaintiff agreed to discovery of documents within that category “without prejudice to the strict relevance or necessity of such documentation” and also without prejudice to a request for clarification on the documents sought within category (1).

The category as originally drafted also sought documents relating to applications with other foreign patent offices (in addition to US) and in relation to “any other equivalent patent”. At the commencement of the hearing of this application counsel for the defendant indicated that he accepted that the category then sought was too wide and indicated that the application was being confined to certain documents passing with the US Patents and Trademarks Office (“USPTO”) in relation to patent applications filed in respect of a product with identical description and claims to that the subject matter of EP0650740 as disclosed the state of the art prior to the priority date of the European patent as in the revised wording set out above.

These documents are sought on the basis that they are likely to disclose analysis of the extent to which the product the subject matter of the 740 patent was novel or comprised an inventive step having regard to the prior art and therefore relevant.

The justification for seeking documents relating to an application to the USPTO, having regard to the agreement to furnish the documentation relating to applications to the Irish and European Patent Offices is by reason of the differences in approach of those offices as set out in the affidavit of Anne Ryan a European Patent Attorney sworn on the 14th November, 2006. In that affidavit at paragraph 5 and 6 she states:

“5… There is no obligation on the part of an applicant for a European patent to bring to the attention of the European Patent Office prior art of which the applicant is or becomes independently aware. An application may be examined solely by reference to prior art cited by the EPO itself. The EPO may therefore be unaware of information showing that the invention was actually in use or otherwise in the public domain prior to the priority date of the invention, or of prior art for which it did not search.

6. The situation prevailing when applying for a patent in the US Patent and Trademark Office is very different. There the applicant is obliged to disclose all material information, including prior art and prior public use, of which the applicant (including inventors, patent attorneys, agents, their representatives and/or anyone involved in the prosecution and obtaining of the patent application on behalf of the applicant) is aware which affects the patentability of the claims to the authority. Thus the applicant will be obliged to disclose prior art, even if it was not searched by the EPO or was not otherwise known to the EPO. It is also relevant to point out that in the US patent system the invention for which patent protection is sought may be used for a period of one year prior to application being made without destroying the novelty of the invention; while in the European system generally any use prior to filing destroys the novelty of the invention.”

The defendant relies upon the decision of Whitford J. in Vickers PLC v. Horsell Graphic Industries Limited [1988] R.P.C. 421 That decision concerned the obligation of a plaintiff to disclose certain documents on file and open to public inspection in connection with what is referred to as a “comparable United States application”. The English proceedings included a claim to the validity of the English patent. Whitford J. in considering the relevance of the documents on the US application file to the English proceedings stated at p. 423:

“My opinion as regards documents is this. I go no further than saying that quite plainly vast numbers of documents are filed in connection with foreign applications, and mostly they are going to be irrelevant. I entirely accept that opinions which may have been expressed or experiments which may have been conducted in connection with foreign applications are at the end of the day not necessarily likely to be conclusive and may indeed prove to be of only limited importance, but they do assist a defendant. They disclose the line which may be taken in connection with the defence to the attack upon the validity which is going to be put forward. They disclose the approach to the issue of infringement.”

The plaintiff objects to an order being made even in the reduced form now sought. It objects primarily on the basis that this is in reality a “fishing exercise” by the defendant particularly having regard to its failure to identify a US patent with identical or almost idential description and claims. It also submits that the defendant has failed to establish that the order sought is necessary as even if such documents may be considered as relevant, such documents should be available to the defendant from the USPTO. This latter submission is not based upon evidence as to the public availability of documents filed with the USPTO. The plaintiff distinguishes the decision in Vickers as it related to an identified US patent application.

I have concluded that the Court should not make an order for discovery as sought in to this category. In accordance with the general principles set out above the onus is on the party seeking discovery to establish relevance and necessity. Where as in this application the defendant seeks documents furnished by an unspecified applicant to the USPTO in relation to a patent which is not the subject matter of the proceedings but which may be an identical or an almost identical patent such as to make the documents of application relevant, it appears to me that it must, in the absence of special circumstances, at minimum identify the relevant US patent.

The defendant submits that in its letter of request of the 19th September, 2006, as part of its reasons for the discovery of the documents in category (1) it stated: “Furthermore, there are equivalent or closely related United States Patents” and that there was no denial of the existence of such patents. Whilst it is true that the plaintiff did not expressly deny the existence of such patents it did seek clarification of the documents being sought in category (1). Where as in this instance both the plaintiff and the defendant are members of multinational groups of companies and it is not alleged that the plaintiff itself filed for an equivalent United States Patent, it appears to me that the onus must be on the defendant to identify the relevant patent in respect of which it seeks documentation before this Court should make an order for discovery of some or all the relevant documentation. In the absence of such identification it appears to me that the application is properly described as “a fishing exercise”. Further, an order for discovery in the terms sought without identification of the relevant patent or indeed the applicant for the patent may be considered oppressive as that term was used in particular by McCracken J. in Hannon v. Commissioners of Public Works and referred to in the extract from that judgment cited by Kelly J. and set out above.

In the event that the defendant identifies a US patent which is considered to be identical or almost identical and the applicant is a person whose documents may be considered to be within the power or procurement of the plaintiff in these proceedings then the defendant may be entitled to pursue a more precise application.

 

Categories 2 and 3

The primary documents as sought in categories 2 and 3 are what were referred to in argument as the “inventor’s notebooks”. This generic description covers the entire of what is sought in category (2). No distinction was made in submission between the documents of the inventor and those working with him. In category (3) some distinction was made between the documents disclosing assessment by the inventor and those disclosing assessments by other persons on behalf of the plaintiff. It is proposed firstly to deal with those documents within categories 2 and 3 which come within the description of inventor’s notebooks.

The defendant submits that such documents are both relevant and necessary for the fair disposal of this case. It relies in particular upon the decisions of the Court of Appeal of England and Wales in SKM SA v. Wagner Spraytech (U.K.) Limited [1982] RPC 497; the High Court of Australia in Welcome Foundation Limited v. BR Laboratories (Australia) Limited [1982] RPC 343 and the Supreme Court of Canada in Eli Lilly and Company v. Apotex Inc. [2006] FCR 104. In each of those decisions orders for discovery of inventors’ notebooks were made.

The plaintiff disputes the relevance and necessity of the documents sought. It submits that this Court is not bound by the above decisions and that having regard to the decisions of the Supreme Court and High Court in Ranbaxy Laboratories Limited v. Warner Lambert Company [2006] 1 IR 193 (Supreme Court) and (Unreported, High Court, 8th June, 2005) and the decision of Laddie J. in the Patent Court in Hoechst Celanese Corporation v. BP Chemicals Limited and Another [1997] FSR 547 that this Court should now upon a consideration of the matter from first principles refuse the order sought primarily as not being relevant.

The plaintiff’s submissions in part are based upon the issues which will have to be determined by the court at the hearing of the defendant’s counterclaim and the probable primary evidence. These matters were not in dispute.

The test for novelty is purely objective. Section 11 of the Patents Act 1992 provides:

“(1) An invention shall be considered to be new if it does not form part of the state of the art.

(2) The state of the art shall be held to comprise everything made available to the public (whether in the State or elsewhere) by means of a written or oral description, by use, or in any other way, before the date of filing of the patent application.

(3) Additionally, the content of a patent application as filed, of which the date of filing is prior to the date referred to in subsection (2) and which was published under this Act on or after the date, shall be considered as comprised in the state of the art…”

The proper approach to determining the issue of inventive step or obviousness is as set out by Oliver L.J. in Windsurfing International Inc. v. Tabur Marine (Great Britain) Limited [1985] RPC 59 and is as follows:

“The first [step] is to identify the inventive concept embodied in the patent in suit. Thereafter, the court has to assume the mantle of the normally skilled but unimaginative addressee in the art at the priority date and to impute to him what was, at the date, common general knowledge in the art in question. The third step is to identify what, if any, differences exist between the matter cited as being “known or used” and the alleged invention. Finally, the court has to ask itself whether, viewed without any knowledge of the alleged invention, those differences constitute steps which would have been obvious to the skilled man or whether they require any degree of invention.”

 

The Court was also referred to the decision of the Court of Appeal in Mölnlycke AB v. Proctor & Gamble Limited [1994] RPC 49. Having regard to the similarity of ss. 9, 11 and 13 of the Patents Act 1992 with the U.K. statutory code under consideration in that decision it appears relevant. The Vice-Chancellor delivering the judgment of the court at p. 112 stated:

“Under the statutory code (. . .) the criterion for deciding whether or not the claimed invention involves an inventive step is wholly objective. It is an objective criterion defined in statutory terms, that is to say whether the step was obvious to a person skilled in the art having regard to any matter which forms part of the state of the art as defined in section 2(2).

 

. . .

 

The Act requires the court to make a finding of fact as to what was, at the priority date, included in the state of the art and then to find again as a fact whether, having regard to that state of the art, the alleged inventive step would be obvious to a person skilled in the art.

 

In applying the statutory criterion and making these findings the court will almost invariably require the assistance of expert evidence. The primary evidence will be that of properly qualified expert witnesses who will say whether or not in their opinions the relevant step would have been obvious to a skilled man having regard to the state of the art. All other evidence is secondary to that primary evidence.

 

. . .

 

In the nature of things, the expert witnesses and the court are considering the question of obviousness in the light of hindsight. It is this which may make the court’s task difficult. What with hindsight, seems plain and obvious, often was not so seen at the time. It is for this reason that contemporary events can be of evidential assistance when testing the experts’ primary evidence… A particular inventor may have been aware of some aspect of the state of the art as defined in section 2(2), and may therefore have genuinely taken what was actually an inventive step, but nevertheless be unable to claim a patentable invention since the step was, in the terms of the statute, obvious.

 

…

 

Secondary evidence of this type has its place and the importance, or weight, to be attached to it will vary from case to case. However, such evidence must be kept firmly in its place. It must not be permitted, by reason of its volume and complexity, to obscure the fact that it is no more than an aid in assessing the primary evidence.”

 

The primary evidence at the hearing will be expert evidence. The Court is not determining in this application the admissibility of secondary evidence of the inventor as to steps taken by him or what he was or was not aware of at the relevant time. However, it is important in this application to note that the plaintiff has not indicated that the inventor will not be called and on the authorities referred to (albeit from England and Wales, Australia and Canada) it appears, at least possible that such evidence may be admitted. In any event the need to see this documentation for the purpose of cross-examining the inventor if called was only relied on as a subsidiary basis for the relevance and necessity of the inventor’s notebook. The primary ground upon which it is contended that the documents are relevant and necessary is that they may lead to a line of inquiry and may assist the defendant to advance its own counterclaim in that they will disclose the actual experiments and other steps taken by the inventor and his consideration of such of the prior state of the art as was known to him. It is submitted that such information will be of assistance to the defendant in that it will enable it obtain its own expert opinion as to whether the steps actually taken by the inventor in achieving the invention were steps which would have been obvious to the hypothetical person skilled in the art. Further, that it will be of assistance to the defendant in cross-examining the plaintiff’s expert witnesses by reference to what at least one person admittedly skilled in the art (i.e. the inventor) actually did.

The above grounds are very similar to those advanced on behalf of the applicant for discovery in SKM SA and Another v. Wagner Spraytech (U.K.) Limited and Others [1982] RPC 497.

SKM concerned an appeal against an order for discovery of the inventor’s notebooks in infringement proceedings with a counterclaim for revocation by reason of obviousness and false suggestion.

The submissions made in that case as to the lack of relevance of the documents ordered to be discovered are very similar to the submissions ably made by counsel for the plaintiff in these proceedings. The judgment did concern in some respects the admissibility of evidence of what was done by the inventor. However, it also considered the question of discovery independently of potential evidence from the inventor. In considering grounds similar to those advanced on behalf of the defendant herein Oliver L.J. at p. 508 stated:

“Again, although they do not intend to call the inventor, the case is clearly not going to be fought without the presence of expert witnesses on both sides. Knowledge of the inventor’s experiments will assist the defendant in two respects. He can obtain his own expert’s opinion upon whether the steps taken by the inventor were the steps were no more than steps which would or should have been obvious to any skilled man; and he can, as was suggested in the Australian case, utilise any knowledge which he acquires regarding the inventor’s experiments or researches in cross-examination of the plaintiffs’ technical witnesses by reference to what an admittedly skilled man actually did.

These, I think, were all clearly matters which the learned judge must have had in mind in deciding to follow and to adopt the reasoning of the Australian decision. I confess to having been, at first, very much impressed by Mr. Gratwick’s argument and indeed to some extent sympathetic to it, for I can see, as Whitford J. saw in the Halcon case, that the practice of ordering this type of discovery in patent cases can lead to delay, expense and a substantial addition to the documentation in actions which already tend to be overburdened with paper. I have, however, in the end been persuaded that the argument which he so attractively put before us is one which tends to confuse discovery and admissibility, and speaking for myself I am not prepared to differ from the conclusion at which the learned judge arrived that the discovery sought may be of assistance to the defendant, either offensively or defensively, on the issue pleaded. I would not therefore disturb the order which he made and on the view which I take it is unnecessary to consider the further matters raised by the respondents’ cross-notice.”

The Australian decision referred to by Oliver L.J. is the decision of the Federal Court of Australia in Wellcome Foundation v. V.R. Laboratories (Australia) Pty. Limited [1981] R.P.C. 35. That decision was subsequently heard on appeal by the High Court of Australia and the appeal dismissed. Judgment in the High Court was delivered by Aickin J. with whom the other members of the court agreed. The judgment of Aickin J. considers the admissibility of evidence of the research and experiments of the inventor leading up to the claimed invention and concluded that it is generally admissible though not always likely to be helpful. On the question of discovery of documents Aickin J. stated that the test was wider than the test of admissibility and referred to an Australian decision of Temmler v. Knoll Laboratory (Aust) Pty Limited noted in [1969] 43 A.L.J.R. 363 of Windeyer J. It appears from the citation given at p.357 of the judgment of Aickin J. that the test for relevance is very similar to that set out by Kelly J. following the decision in Cie Financiere et Commerciale du Pacifique v Peruvian Guano Co (1882) 11QBD 55. Aickin J in conclusion stated at p. 360:

“The cases to which I have referred appear to show that some discovery in respect of the work done by a patentee in arriving at his invention has been given as a matter of course and that the disputes have been as to the extent of discovery. Since evidence of such work may in some cases be relevant to the issue of obviousness it must follow that discovery should generally be given, even if only on the basis that the documents discovered may suggest a line of inquiry worth investigation.”

The Federal Court of Canada considered whether an order for discovery should be made of inventor’s notebooks in Eli Lilly & Company v. Apotex Inc. [2006] 4 FCR 104. The issue was considered in a slightly different procedural context and it appears from paragraph 27 of the judgment that the actual decision to order discovery was made by reason of a contest to the identity of the inventors and/or the assignment of the patent. However, the judge in additional comments made considered the inventor’s notebooks to be discoverable. At paragraph 36 Aronovitch P. stated (in a passage which I think must be considered obiter):

“Discovery is not be confused with admissibility. The fact that the test for the determination of a ground of invalidity is objective, and that the knowledge or opinion of the inventor may not be relevant in the sense that it cannot be relied upon to construe the patent, does not imply that the facts of the process of invention cannot be collaterally relevant to the issues or that they will not be considered by the Court, whatever their ultimate probative value. Moreover, documents, relating to the inventive process may be discoverable on the basis that they can contain relevant facts or ones leading to a line of inquiry that will be helpful to advance the case of one of the parties to the suit – for example, prior art references that may not be known to the party pleading invalidity.”

The plaintiff has relied upon obiter statements of Laddie J. in Hoechst Celanese Corporation v. BP Chemicals Limited and Another [1997] FSR 547 at 565 which undoubtedly raises questions as to the wisdom of the approach to discovery in the above decisions. In the passages relied upon Laddie J. refers to the evidence given by the inventor, Dr. Hilton, and to a number of authorities which suggest that such evidence is irrelevant to the issue of obviousness. He expresses the view that this is particularly so if as in that case the inventor did not have before him the prior art relied upon by the defendants in their challenge. He expresses a conclusion that:

“All the historical evidence of what individuals did or have thought to have done at or about the priority date is of no assistance in determining whether or not Dr. Hilton’s development was obvious.”

Laddie J. then indicates that extensive discovery was made but very little referred to in court and that even that small number of documents took the case no further. He makes it clear that he is not seeking to blame the lawyers by reason of the prior decisions including that of the Court of Appeal in SKM SA v. Wagner Spraytech (U.K.) Limited [1982] RPC 497 and then states at p. 566:

“However, there is much pressure now to reduce the cost of litigation in general and patent litigation in particular. Parties and the court must be astute to prevent the expenditure of time, effort and money on the filing and challenging of unnecessary evidence and discovery. As the Vice Chancellor said in Mölnlycke, secondary evidence on the issue of obviousness must be kept firmly in its place. If the evidence is of no weight it should be excluded from the outset. Evidence that others in the art did or did not make essentially the same development at or before the priority date of the patent should not be given unless it can be shown that those others were starting from or had brought to their attention all or some of the prior art pleaded in the case or the evidence is in some other way really relevant to the issues in dispute. Similarly, although the SKM case provides that documents relating to the inventor’s research and development are discoverable, it may well be that that blanket approach needs refinement. It seems to me that there may well be strong arguments for holding that discovery should not be given of research or development work carried out by the inventor or anyone else if that work did not start from or involve consideration of the pleaded prior art. This is a matter which may need to be considered properly in some future case.”

I have as requested by counsel for the plaintiff considered this application from first principles. The decisions cited are not binding on me but of course all deserving of great respect. Whilst I would agree with the views expressed by Laddie J. of the importance of reducing the cost of litigation it appears to me that applying the agreed principles in relation to relevance in this jurisdiction, that for reasons very similar to those stated by Oliver L.J. in SKM SA v. Wagner Spraytech (U.K.) Limited cited above the defendant has established as a matter of probability that the inventors notebooks in this case are relevant to its counterclaim upon the grounds that they contain information which may enable it advance its own case or damage that of the plaintiff both in the manner of instructions which it will permit them to give to their own expert and advice which they may obtain from such expert leading to his or her evidence and in preparation for the cross-examination of the plaintiff’s experts.

I have also formed the view that the discovery of such documents is necessary for the fair disposal of these proceedings. This is information which is available to the plaintiff. The plaintiff is in a position to use this information in briefing its own expert witnesses. Further it will be able to brief its lawyers with the relevant information for the purpose of cross-examining the defendant’s experts. In such circumstances the documents having been relevant it appears to me that it is necessary for the fair disposal that they be discovered.

I have considered the plaintiff’s submissions in reliance upon the decisions of the Supreme Court and High Court in Ranbaxy Laboratories Ltd. v. Warner Lambert Company [2006] 1 IR 193. Those decisions do not appear to me to assist the plaintiff in its defence of this application.

The decisions were given on a preliminary issue in a patent action in which the principal issue is the proper interpretation of the claims in the defendant’s patent. The plaintiff had brought a motion for discovery of documents which comprised correspondence between the patent agents of the defendant and the European Patent Office and Danish Patent Office. That correspondence was alleged to express a view on the proper construction of the Irish patent. The defendant objected to discovery on the basis that the documents would not be admissible in evidence in the proceedings. A preliminary issue was then set down on the admissibility of such documents in evidence in the substantive proceedings.

It is important to note that this was the only basis upon which discovery was sought. It was not contended that the documents were relevant or necessary as leading to a “line of inquiry” as was submitted in these proceedings. It is also important to note that the issue in the substantive proceedings in Ranbaxy Laboratories Ltd. v. Warner Lambert Company is quite different from the issues in these proceedings. It concerned only the proper interpretation of the claims in the patent. This is agreed to be a matter of law. The test is what the claim means to an expert in the field to which it relates.

On the preliminary issue the documents were determined both by the High Court and the Supreme Court to be inadmissible in evidence in the proceedings.

The documents sought were determined by the Supreme Court to be submissions made on the defendant’s behalf to the patent offices and in reality expressions of opinion of the patentee as to the construction of the claims and as such inadmissible in evidence.

In these proceedings, the court may well have to interpret certain of the claims in the plaintiff’s claim for infringement. However, this application for discovery in the 740 patent relates to the defendant’s counterclaim for invalidity. The issues which the court will have to determine include questions of fact in relation to which the primary evidence will be the expert evidence referred to above. For the reasons already set out the documents sought by the defendant appear to me to be relevant and necessary to the determination of those issues on the counterclaim.

The final issue on the defendants’ application relates to that part of category (3) which seeks documents which disclose certain considerations given by or on behalf of the plaintiff by persons other than the inventor.

The parties in their submissions did not highlight any distinction between the inventor and other persons who gave such considerations by or on behalf of the plaintiff. Objection is made in the written submissions on behalf of the plaintiff to a lack of clarity insofar as in this category the defendant seeks documents which disclose or evidence consideration given to matters other than the prior art referred to in the particulars of objections. It is alleged that it is unclear what is meant by consideration of “any other documents considered but deemed by the inventor and/or on behalf of the plaintiff not to be prior art.” This objection appears well founded.

Subject to the above I have concluded that insofar as the defendant seeks documents which disclose or evidence the consideration (if any) given by or on behalf of the plaintiff to the prior art referred to in the particulars of objections in the context of the application for the 740 patent including any documents disclosing or evidence any consideration or evaluation by or on behalf of the plaintiff as to the potential effects of any such alleged prior art on the patentability of the subject matter disclosed in the 740 patent or in the European patent no. 0650740 that the defendant is entitled to an order for discovery of such documents.

I have so concluded as it appears to me that such documents may disclose a line of enquiry which the defendants may wish to pursue with their expert witnesses and which may advance its counterclaim or damage the plaintiff’s defence to that counterclaim. It further appears that the discovery of such documents is necessary for the fair disposal of the pleadings for the same reasons as set out above.

Accordingly, on the defendant’s application I will disallow the documents sought at category (1); allow in full the documents sought at category (2) and allow in category (3) the following:

Category (3)

All documents which disclose or evidence the consideration (if any) given by the inventor of the 740 Patent, European Patent No. 0650740 and any other equivalent patent and by or on behalf of the Plaintiff to the prior art referred to or related to that listed in the Particulars of Objections delivered on behalf of the Defendant on 24 July 2006 including any documents disclosing or evidencing any consideration or evaluation by or on behalf of the Plaintiff as to the potential effect of any such alleged prior art on the patentability of the subject matter disclosed in the 740 Patent, in European Patent No. 0650740 or any other equivalent patent.

 

PLAINTIFF’S MOTION

The plaintiff pursued an application for discovery of a revised paragraph 1 to its notice of motion. The revised order sought is in the following terms:

“1. An Order that the Defendant make discovery on oath of the following categories of documents (the numbering used in the Plaintiff’s letter seeking voluntary discovery dated 18 September 2006 is retained for ease of reference):

(a) All documents and materials relating to the following design features of the Defendant’s Co-Star Paclitaxel-Eluting Coronary Stent System (“the CoStar Product”) including but not limited to, documents and materials relating to the inception, design, composition, creation, development, testing and certification and/or regulatory approval, including CE marking and manufacture:

(i) of the inner tubes comprised in the CoStar Product, the nature, composition (including the materials from which they are manufactured) and securing together of any layers or surfaces of the same, and their mechanical properties including friction co-efficients;

(ii) any balloon comprised in the CoStar Product, its composition, and positioning in relation to any catheter tube and its connection with and securing to any catheter tube(s);

(iii) of the layers or surfaces of the inner catheter tube, including any relationship or connection between each layer or surface, including the positioning of the layers or surfaces in relation to one another and/or the attachment together of them, including for example, extrusion of such layers or surfaces and extrusion parameters;”

The defendant has agreed to discover the documents and materials relating to the composition, testing, certification and/or regulatory approval, including CE marking in relation to the above matters. What is in dispute is the application for the documents and materials relating to the inception, design, creation, development and manufacture of the above aspects of the CoStar Product.

The plaintiff submits that in particular documents and materials relating to the design and manufacture of these aspects of the product are relevant and necessary for the fair disposal of its claim of infringement.

The defendant submits that such documents are not relevant or necessary having regard to the nature of the claims in the 740 patent; the answers already given to interrogatories; the admissions made on the 30th November, 2006, and its agreement to discover the documents and materials relating to the composition of its product.

The claims made in the ‘740 patent are as follows:

1. An interventional catheter comprising a catheter tube (1) having two superposed layers (2,3) of material secured in relation to one another and with mechanical properties differing from one another, a longitudinal lumen (12) in said catheter tube for the sliding fit of a guide wire (11), and a balloon (4) with a proximal end (6) and a distal end (5), whereby the distal end (5) sealingly surrounds said catheter tube (1), whereby the catheter tube (1) has an inner layer (2) forming the longitudinal lumen (12) and an outer layer (3) forming the outer surface of the catheter tube (1), and the inner layer (2) is formed of a material with lower friction coefficient than the material forming the outer layer (3), characterised in that the inner layer (2) forming the longitudinal lumen (12) of the catheter tube (1) is a polyethylene, the outer layer (3) is made of a polyamid, and the distal end (5) of the balloon (4) is welded to the outer polyamid layer (3) of the catheter tube (1).
2. An interventional catheter according to claim 1, wherein the two layers (2, 3) of the catheter tube (1) are produced by extruding the outer layer (3) over the inner layer (2).
3. An interventional catheter according to Claim 1, wherein the inner layer (2) forming the longitudinal lumen (12) of the catheter tube (1) is a high density polyethylene.

The particulars of infringement alleged by the plaintiff at para. 5 of the statement of claim are:

“The Defendant, its servants or agents have been manufacturing in Ireland, selling, offering and stocking the CoStar Product which includes an interventional catheter which infringes each of claims 1, 2 and 3 of the ‘740 Patent.

 

An analysis of the Defendant’s CoStar Product shows that its catheter includes all of the following features of Claim 1 of the ‘740 Patent:-

(a) an interventional catheter comprising a catheter tube having two superposed layers of materials secured in relation to one another an with mechanical properties different from one another,

(b) a longitudinal lumen in said catheter tube for the sliding fit of a guidewire, and;

(c) a balloon with a proximal end and a distal end whereby the distal end sealingly surrounds the catheter tube;

(d) the catheter tube has an inner layer forming the longitudinal lumen and an outer layer forming the outer surface of the catheter tube;

(e) the inner layer of the catheter tube is formed of a material with a lower friction coefficient than the material forming the outer layer;

(f) the inner layer forming the longitudinal lumen of the catheter tube is made of a polyethylene;

(g) the outer layer is made of a polyamide, and

(h) the distal end of the balloon is welded to the outer polyamide layer of the catheter tube.

 

Further, and in breach of Claim 2 of the ‘740 Patent, the two layers of the catheter tube of the defendant’s CoStar Product are produced by extruding the outer layer over the inner layer.

 

Further, and in breach of Claim 3 of the ‘740 Patent, the inner layer of the catheter tube of the Defendant’s CoStar Product forming the longitudinal lumen of the catheter tube is a high density polyethylene.

 

The Plaintiff reserves the right to provide further particulars of infringement up to and including the trial herein.”

 

The defendant in its defence denies each and every particular of infringement.

The issues in the proceedings will include issues as to whether the defendant’s product includes the features alleged in the particulars of infringement save insofar as the defendant may already have made admissions in the statement of admissions of 30th November, 2006, or in the answers to interrogatories.

It is unnecessary to set out in full here the answers to the interrogatories. They are not straight forward. The defendant, as it is entitled takes the view that certain of the terms in the patent require to be interpreted by the court and pending such interpretation has not answered in a clear manner the interrogatories put.

I have formed the view that the plaintiff has established that the documents relating to the design and manufacture are as a matter of probability relevant and necessary to the resolution of the issues arising from certain of the alleged particulars of infringement. I accept that many go to the composition of the defendant’s product. However, it appears to me that certain of the particulars may involve a consideration of the design and process by which the defendant’s product is manufactured and hence the plaintiff is entitled to the documents sought.

I refer by way of example to the allegation that the defendant’s product is an interventional catheter comprising a catheter tube having two superposed “layers of materials …” In the replies to interrogatories the defendant has indicated that it is unable to confirm or deny that the catheter tube has an “inner layer” or “outer layer”. It contends that the terms “layer” or “inner layer” or “outer layer” require a construction by the court. This may well be correct. Nevertheless following such construction it may be necessary for the court to determine whether those parts of the defendant’s product are “layers” within the meaning of the claim as construed. The precise design and/or specification for this part of the product may be relevant to that determination.

A further feature included in the alleged particulars of infringement at paragraph (h) is that “the distal end of the balloon is welded (emphasis added) to the outer polyamide layer of the catheter tube”. Again in relation to this the defendant contends that the term “welded” or “welding” requires construction by the court. It is admitted that the distal end of the balloon is attached to the outer polyamide layer of the catheter “by the application of heat and pressure”. It appears probable that when the term welded is construed by the court the precise process (including amount of heat and pressure) by which this attachment takes place may be relevant to the question as to whether it is welded within the meaning of the claim of the patent.

The above are not intended to be exhaustive but are simply two examples given of the reasons for which I have formed the view that the plaintiff has established that notwithstanding the answers to interrogatories and admissions that documents and materials relating to the design and manufacture of those aspects of the product listed in paragraphs (i) to (iii) of paragraph 1(a) of the amended notice of motion are relevant and necessary for the fair disposal of these proceedings. There are further probable similar issues having regard to particulars of infringement in issue, even taking into account replies to interrogatories and admissions.

I have concluded that documents and materials relating to the inception, creation and development of the product are not relevant or necessary. The plaintiff has not established that such documents are relevant to the issues raised by the claim in these proceedings. The infringement alleged relates to the final product.

Accordingly, the plaintiff is entitled to an order for discovery in the revised form of paragraph 1 of the notice of motion subject to the deletion of the words, inception, creation and development in paragraph (a).

 

Keating v Radio Telefís Éireann & ors

[2013] IESC 22 (09 May 2013) McKechnie J

 

Motion for Discovery:

11. Against this background and having been refused voluntary discovery, the defendant, by notice of motion dated the 22nd October, 2007, seeks orders pursuant to O. 31, r, 29 of the Rules of the Superior Courts (“RSC”) requiring non-party discovery. From An Garda Síochána, R.T.É. seeks all documents referable to the plaintiff’s involvement in the unlawful importation of controlled drugs and to his possession of such drugs for sale, distribution or supply. From the Revenue it seeks in identical terms all documentation regarding their importation, but not regarding their possession; in addition and “without prejudice” to what was previously sought, it further requested:

 

“… all documentation referable to the detention or questioning of the plaintiff or both, by an officer of Customs and Excise at Ringaskiddy, County Cork on or about the 3rd June, 1998, including but not limited to any report concerning that incident”.

12. As part of its search for documentation it should also be noted that R.T.É. wrote to Coughlan Griffith & Company, the plaintiff’s solicitors, on the 3rd August, 2005, seeking voluntary discovery of five different categories of documents, with the first three being described as follows:
13. all statements made by the plaintiff as a witness in any or any intended criminal proceeding within this State;
14. all documentation regarding the nature and operation of “The Witness Protection Programme” and the plaintiff’s eligibility therefor, and participation in, allowing for redaction where strictly necessary to prevent identification of the undisclosed current residence of the plaintiff; and

 

3. all documentation relating to any and all criminal convictions of the plaintiff, whether incurred in this State or any other jurisdiction.

 

The remaining categories were relevant only to damages, if and when that issue should arise.

13. The response, by way of letter dated the 14th January, 2006, confirmed that voluntary discovery of categories 1 to 4 would be made within four weeks of that date. Category number 5 was not mentioned. Ms. Whelan subsequently wrote to the plaintiff’s solicitors on a number of occasions seeking confirmation as to whether or not the plaintiff intended to make discovery of category 5, to no avail. The time line as given by the plaintiff’s solicitors and subsequently extended, was not in fact adhered to, as the plaintiff’s solicitors apparently had some difficulty in obtaining instructions from their client. Further slippage followed. Eventually the defendant issued a motion on the 21st June, 2006 seeking discovery against the plaintiff in the same terms as previously sought. The Master of the High Court made the requested order on the 2nd November, 2006 and allowed a period of twelve weeks for due compliance. That order was not appealed. However, to date, R.T.É. has generally been dissatisfied with the plaintiff’s response and issued a further motion to have the proceedings struck out for failure to make proper discovery. That motion which was eventually struck out by consent has not materially altered the situation.

The High Court Judgment:

14. As above outlined, the High Court on the 23rd July, 2008, made an order for discovery against both the Commissioner of An Garda Síochána and the Revenue Commissioners in the terms sought, save that its ambit was limited to documents created prior to but not after, the 19th July, 2001, the date of the R.T.É. broadcast. The learned judge, having noted in his judgment that the plaintiff did not have in his possession such documents, was satisfied as to both relevance and necessity: he so concluded, in particular, having had regard to the nature of the allegations made by the plaintiff, even if such were viewed only in the context of his record and his admitted criminality. He rejected the argument that such discovery was oppressive. He dealt with the suggestion that in any event the “privilege”, which the Revenue would undoubtedly assert was a complete answer, by stating; “that if, plainly and without capacity to contradict, a document sought was privileged the court would refuse an application for discovery and would have regard to the reality of the situation”. It seems self-evident from his decision that in his view this was not such a case. Quite obviously it remained open to the non-parties to claim privilege in the normal way if they so wished. As that stage had not been reached he quite correctly saw no reason to decide on the competing public interests at issue: the administration of justice versus crime fighting and confidential communications intra officials and between officials and informers. He was therefore satisfied to make the order as mentioned.

Appeal:

15. The Commissioner of An Garda Síochána has not appealed the aforesaid order and accordingly, on his behalf the required affidavit was sworn on the 22nd December, 2008. In the First Part of the First Schedule there is one document disclosed, which is a two page custody record relating to a detention of Mr. Keating on the 27th of June, 1997. In the Second Part of that Schedule six documents are identified over which privilege is claimed. This claim is supported on the basis that such documents are of a sensitive and confidential nature, and also that they refer to sources of garda intelligence. It is further said that the disclosure of these would be damaging to the detection and prevention of crime as they would reveal some the confidential working practices and techniques of the force. Finally it is also stated that such disclosure would potentially put at risk the safety and lives of the persons referred to therein. Accordingly, their content should be preserved and their detail protected.

 

16. It should be noted that this generalised justification applies to all documents so identified: in addition, legal professional privilege is also claimed in respect of two of these documents. As is evident from what has previously been stated, the validity of the privilege objections, as raised by this non-party is yet to be determined.

 

17. On the 21st day of November, 2008, the Revenue appealed against the said High Court order on fourteen grounds. These may be grouped into the following categories, all suggesting that the learned judge, in a variety of ways, erred in law or in fact, or in combination of both:

 

(i) in failing to hold that, as R.T.É. wished to explore the relationship between the plaintiff and An Garda Síochána, there was no basis for making an order against the Revenue or at least, none for doing so prior to discovery being exhausted against An Garda Síochána and the plaintiff;

(ii) in holding that the documents sought were relevant and necessary and that the criteria for third party discovery had otherwise been satisfied;

 

(iii) in failing to have due regard to the fact that the documents sought would be subject to a privilege plea;

 

(iv) in failing to pay any or any due regard to the competing interests involved in such a claim, in particular that referable to the sensitive and confidential nature of the information requested;

 

(v) in failing to find that R.T.É.’s move was merely a fishing exercise to reinforce justification for the upcoming action; in any event the discovery order was overly broad and oppressive; and

 

(vi) in failing to exercise his discretion properly and refuse the order sought.

 

 

Appellant’s Submissions:

18. The legal submissions filed in support of the appellant can conveniently be understood in the context of the affidavit evidence sworn by Mr. Brian Smyth, an Assistant Principal with the Central Intelligence and Drugs Enforcement Branch of the Revenue’s Customs Service, in opposing the High Court application, in which he also draws on the affidavit filed, for a similar purpose, by the Commissioner of An Garda Síochána. Before dealing with that however, an overview of what the Revenue factually says.
19. It is stated by the Revenue firstly, that it has a shared competence with the gardaí in the enforcement of drug legislation and to that end, has a deep interest in information gathering and surveillance. Trust, confidence and cooperation are critical for the effective functioning of this inter-unit responsibility. Secondly, whilst the actual existence of material falling within the parameters of what is sought is not denied, the same was obtained in confidence and any forced disclosure would seriously impact on the free flow of such information, as trust is the vital commodity underpinning such arrangements. Therefore, access to such documents would gravely prejudice the success of both agencies in this regard. Thirdly, it further says that the force of this argument is enhanced by the support which it receives from the affidavit of the Commissioner which it also relies upon.

 

20. In his affidavit, which like that of Mr. Smyth’s was sworn prior to the High Court hearing, Chief Superintendent Cloonan informs us that the plaintiff is a participant in the Witness Protection Programme and that such programme is designed to deal only with matters of the highest security and to provide protection for those admitted, who invariably face a serious threat to their lives. For such programme to function effectively there must be full trust, confidence and cooperation between all involved: this demands that the identity of an individual who participates in the Programme should remain absolutely immune from disclosure, at all costs.

 

21. The Chief Superintendent goes on to say that securing an unrestricted flow of confidential information between statutory agencies with which the gardaí have a relationship in their fight against crime, is essential: if trust should break down, that line of vital communication would be hampered. It is thus critical that the arm of discovery should not extend in the far-reaching way as now suggested by the plaintiff.

 

22. Furthermore, he says that “there is little to be gained and in fact there is much to be lost”, should the Commissioner be directed to make non-party discovery where a claim for privilege will be asserted, and where that claim most likely will be upheld by the courts. In such circumstances therefore, this discretionary remedy should be refused.

 

23. Anchoring itself firmly within this setting, the Revenue submits that the trial judge miscalculated the competing interests in play and should have assigned to those advanced on behalf of the public – the prevention, investigation and prosecution of serious crime, including the agency’s methodology, tactics and procedures – far greater weight than what he did. To produce, even to list by description the requested documents, would prejudice the functioning of the Customs & Excise office in this important area, thus discovery from the outset and as a matter of principle should be refused (Director of Consumer Affairs and Fair Trade v. Sugar Distributors Ltd. [1991] 1 I.R. 225(“ size=”2″ face=”Verdana”>Director of Consumer Affairs”); Foley v. Bowden & Anor. [2003] 2 IR 607 (“Foley”); and McLoughlin v. Aviva Insurance (Europe) & Anor. [2012] I.L.R.M. 487).

 

24. While acknowledging that the issue of privilege does not, as such arise, it is nevertheless submitted that as non-party discovery is a discretionary matter, the Court, in light of the privilege plea which is almost bound to succeed, should terminate the proceedings, even at this stage. To do otherwise would ultimately be pointless: see Corscadden v. BJN Construction Ltd. & Anor. [2007] I.E.H.C. 42.

 

25. The Revenue also states that the raison d’être for R.T.É.’s application is simply to buttress its defence inter alia of justification for the forthcoming trial, a purpose which cannot justify a general trawl for relevant documentation. Hannon v. The Commissioner of Public Works & Ors. (Unreported, High Court, McCracken J.) 4th April, 2001 is cited in support.

 

26. On the vitally important question of “necessity”, it is asserted that such has not been established for a number of reasons: firstly, R.T.É. has not disclosed what material it already possess relating to Mr. Keating’s activities; secondly, the correct respondent to such a request would be An Garda Síochána, as it is the particular relationship between it and Mr. Keating which is in issue and not the Revenue’s relationship with him; thirdly, if R.T.É. succeeds in rebuffing the claim of privilege as advanced by An Garda Síochána, the documents then obtainable will render the application against the Revenue moot; fourthly, equally if R.T.É. fails on this issue, it is also most likely that it would fail in its application against the Revenue, thereby once again rendering the application moot; and lastly, the plaintiff himself may be the depository of such documents.

 

27. Finally it is said that the order as drawn is overly broad (McDonagh v. Sunday Newspapers Ltd. [2005] 4 IR 528 (“McDonagh”)) and is oppressive in nature.

 

Respondent’s Submissions:

28. The respondent to this appeal counters that the submissions of the Revenue Commissioners as outlined, are based on a misunderstanding of its application, in many respects. Firstly it must be pointed out that discovery is sought not simply to establish the nature of the relationship in question, but more acutely, to identify the limits of that relationship, so that the criminal activities of the plaintiff can be appropriately positioned. Secondly, as these illegal activities are entirely at odds with the Revenue’s role in drugs law enforcement, it cannot be heard to argue that it is indifferent to the controversy in question, or that it might not have documentation pertaining to these said activities. Evidently, it is part of its function to have such documentation. Furthermore, as the June 1998 questioning is not denied nor is the compilation of the subsequent report, it is untenable to claim that An Garda Síochána should be the only party to the discovery application, particularly now in light of its discovery affidavit.

 

29. With regard to the objection based on an alleged trawling exercise, R.T.É. firmly rejects this: it says that it is unnecessary to disclose the full extent of the justification evidence which it has, it being sufficient to point to what the pleadings have already disclosed. In addition it seeks to distinguish McDonagh on the basis that a simple plea of justification was raised in that case, with effectively no particulars of any kind being furnished before the discovery application was moved. Furthermore, it is entirely dismissive of the “oppression” point, particularly in light of the Gardaí’s discovery affidavit dated the 22nd December, 2008, which lists a total of only seven documents, six of which it claims privilege over. Given their similar roles in the investigation of drug trafficking, it is difficult to see any merit whatsoever in this argument. Moreover, given the specific and precise category of document sought – namely that relating to the questioning of Mr. Keating by a Customs Excise officer on the 3rd June, 1998, and the subsequent report – it cannot be argued with any credibility, as is attempted, that such is a randomised chase for documentation.

 

30. It is also submitted that an assertion of privilege in itself does not in any way exempt a party or a document from the discovery process: if an order for discovery is made, the document has to be listed in the affidavit in the normal way but, if relevant and applicable, privilege can be pleaded in respect of it (Haughey & Ors. v. Moriarty & Ors. (Unreported, High Court, Geoghegan J.), 20th January, 1998 (“Haughey”) at p. 10). While there can be circumstances where a claim of privilege can defeat an application for discovery, such would be very much an exception to the general rule and can only arise in very limited circumstances, which do not exist in this case. In any event, where such a plea is made, the onus lies on the party so asserting to establish it: such is not achieved by simply relying on a general public interest claim in doing so. Whilst the appellant expresses general concerns for inter-agency co-operation and for the free exchange of information and also mentions the effectiveness of the Witness Protection Programme, it does not outline how the documents sought might affect any of these matters. Moreover, it is for the courts, not the executive to determine such an assertion (Ambiorix & Ors. v. Minister for the Environment & Ors. (No. 1) [1992] 1 I.R. 277 (“Ambiorix”); Breathnach v. Ireland & Ors. (No. 3) [1993] 2 I.R. 458 (“Breathnach”); Livingstone & Ors. v. Minister for Justice & Ors. (Unreported, High Court, Murphy J.) 2nd April, 2004; and Foley).

 

31. The respondent finally submits in this regard that while there are some differences between the criteria relating to inter- and non-party discovery, the essential elements remain the same, i.e. whether the documentation sought is both relevant and necessary. None of the additional factors highlighted by Finlay C.J. in Allied Irish Banks plc & Anor. v. Ernst & Whinney & Anor. [1993] 1 I.R. 375 (“Allied Irish Banks plc”) are relevant in the instant case. It is therefore said that the High Court, having properly identified the non-party criteria, correctly applied the resulting test.

 

Discussion – Conclusion:

 

The Decision Maker:

32. The primary submission articulated by the appellant in oral argument is one which, in essence, seeks to avoid the consequences of Murphy v. Dublin Corporation and The Minister for Local Government [1972] I.R. 215 (“Murphy”), and a host of later cases all of which endorsed, supported and followed that particular decision. In Murphy, as part of his challenge to the validity of a Compulsory Purchase Order, the plaintiff sought discovery of an inspector’s report prepared for the Minister under Art. 5(2) of the Third Schedule to the Housing Act, 1966. Such an application was resisted on two main grounds: firstly, that the document fell within a “class of documents” which should be withheld on public interest grounds; and secondly, that in any event disclosure should also be denied as the same would be contrary “to public policy and detrimental to the public interest and the public service”.

 

33. Underpinning this argument was the crucial submission that on so certifying the Minister, as part of the executive organ of government, should, as such and by reason of his own judgment, be allowed to withhold such document. That argument gave rise to a central issue in the case which Walsh J. characterised as follows:

 

“[t]he present claim of privilege is that in a civil action the executive organ of government may by its own judgment withhold relevant evidence from the organ of government charged with the administration of justice and engaged in the determination of the rights of the litigants, and that this may be done when the claim of privilege is made on either or both of the grounds already mentioned” (p. 233 of the report).

34. The Court emphatically rejected this contention on constitutional grounds, holding that it was solely for the judicial power, as part of its exclusive competence in the area of administrating justice, to make such judgment. It was therefore impermissible to allow any other body or entity to embark upon such an inquiry or to reach such a decision.
35. Several years later the Supreme Court was asked to revisit Murphy: it did so in Ambiorix, but rejected any alteration to the stated principles, which Finlay C.J. (not by way of expansion or qualification), summarised at p. 283 as follows:

 

“1. Under the Constitution the administration of justice is committed solely to the judiciary by the exercise of their powers in the courts set up under the Constitution.

2. Power to compel the production of evidence (which, of course, includes a power to compel the production of documents) is an inherent part of the judicial power and is part of the ultimate safeguard of justice in the State.

 

3. Where a conflict arises during the exercise of the judicial power between the aspect of public interest involved in the production of evidence and the aspect of public interest involved in the confidentiality or exemption from production of documents pertaining to the exercise of the executive powers of the State, it is the judicial power which will decide which public interest shall prevail.

 

4. The duty of the judicial power to make that decision does not mean that there is any priority or preference for the production of evidence over other public interests, such as the security of the State or the efficient discharge of the functions of the executive organ of the Government.

 

5. It is for the judicial power to choose the evidence upon which it might act in any individual case in order to reach that decision.”

 

36. In the implementation of these principles the following practice has developed:

(i) in general, where competing interests conflict the court will examine the text of the disputed document and determine where the superior interest rests: it will carry out this enquiry on a case-by-case basis;

(ii) this exercise may not always be necessary. On rare occasions, it may be possible for the court to come to a decision solely by reference to the description of the document as set out in the affidavit; that is, without recourse to an examination of the particular text of the document itself (Breathnach p. 469);

 

(iii) in all cases however (and this is the crucial point) it will be for the examining court to both make the decision and to decide on what material is necessary for that purpose; and finally

 

(iv) in performing this exercise, no presumption of priority exists as between conflicting interests.

 

37. As can therefore be seen, as a result of this constitutional position, which is mandated by the separation of powers and which permits of no exception, it is for the courts alone to resolve, in a justiciable setting, any conflict or tension which may arise between the public interest in the administration of justice on the one hand, and the public interest, howsoever articulated, which is advanced as a ground for non-disclosure of documents on the other. That being so, neither the Executive nor any other person can arrogate to themselves the power to make a decision such as the one in issue in this appeal. If it were otherwise, it would be, in the words of McCarthy J. in Ambiorix (p. 289) “to lessen or impair judicial sovereignty in the administration of justice”. Such an occurrence in fact would in itself be inimical to the common good as the public also has a vital interest in the role which this organ of government is committed to perform under the Constitution.
38. Given the complexity of modern government, at both national and local level, it is no surprise to see that many different forms of public interest, asserted in support of the effective functioning of the public service, have been offered as a defence to disclosure requests. Some of these include:

 

(i) the conduct of an investigation into the affairs of Bord na gCón (Fitzpatrick v. Independent Newspapers and Anor. [1988] I.R. 132;

(ii) the making of a complaint to the Director of Consumer Affairs, who has important law enforcement functions (Director of Consumer Affairs);

 

(iii) the general investigation and prevention of crime (Breathnach); and

 

(iv) the statutory functions of the Garda Síochána Complaints Board (Skeffington v. Rooney & Anor. [1997] 1 I.R. 22).

 

 

Whatever the particular interest relied upon, it should be noted that its terms must be formulated by reference to the issues in question and must be particularised in such a way that the courts can properly adjudicate thereon.

39. In applying the above principles it is clear that the Revenue’s first line of resistance to the application under appeal cannot be allowed to succeed, for if it was, such would seriously trespass upon what is the lone province of the court in determining the underlying dispute between itself and R.T.É. on the discovery issue. In effect, as a party to the motion, it seeks also to become a judge in the cause. This it cannot do: there is but one arbiter which has the authority to determine such a matter. That competence cannot be foreclosed upon and neither by design nor default can it be assumed by any other. This simply reflects what the Constitution ordains. Thus, the only decision maker in this type of situation is the judicial power. Any other course would be to subvert the constitutional role of the courts, to distort the separation of powers and to step down the safeguards which these values seek to uphold. Accordingly, the suggested approach of the Revenue is incompatible with constitutional norms, as identified in the established case law and must therefore be rejected.

 

40. The position as outlined would only call for a different analysis if the extreme situation postulated in Murphy or one of equal gravity came to exist, in which event, an opinion from the executive branch, depending on circumstances, may have entirely different consequences. Walsh J., in the following passage at p. 234 made reference to this point:

 

“[a]gain, taking the example of the safety of the State, it might well be that the court would be satisfied to accept the opinion of the appropriate member of the executive or of the head of the Government as sufficient evidence of the fact upon a claim being made for non-disclosure or non-production, as the case may be, on that ground. I have referred to non-disclosure and non-production as distinct matters because in certain circumstances the very disclosure of the existence of a document, apart altogether from the question of its production, could in itself be a danger to the security of the State.”

However, the learned judge quickly added that such was not the case in Murphy and therefore it was “unnecessary to deal further with this aspect of public interest” (p. 234).

41. This particular issue was also touched upon in Ambiorix by Finlay C.J. who, having clearly read the above passage as confining such cases to those relating to the security of the State, added the following:

 

“I would emphasise that the facts of the instant case on the submissions of counsel for the defendants quite clearly do not introduce any such question of the safety of the State, such as is dealt with in this passage, and I would, as did Walsh J., prefer to leave over further consideration of that particular issue until it arises for decision in a case” (p. 284).

It was therefore in his opinion not necessary to further develop the point.

42. Likewise, it is not my intention to do so, but may I be permitted to make but one observation on what the situation would be if the type of threat referred to should come to pass. It is that the public interest, in our institutional structures and their functioning, in the integrity of citizens, as individual persons and as a collective body, in the security of homes, property and other possessions, or in whatever particular area should immediately be under peril, would have to be evaluated by reference to the circumstances actually presenting and be judged against the public interest in ensuring that the rule of law, in its full judicial sense, continued to afford true and meaningful protection to all. As with the former types of public interest, the latter is likewise crucial to the safety and security of the State. That said however, as such matters do not fall for consideration in this case, like Walsh J. in Murphy and Finlay C.J. in Ambiorix, I too would defer any further discussion of State safety until the issue should actually arise.

 

43. Accordingly, as the Revenue has not advanced any further argument in support of its first submission, this ground of appeal must fail.

The Privilege Plea:

44. By a separate and independent route, the apellant has urged that the same conclusion should be arrived at, on the basis that its intended claim for privilege is bound to succeed and accordingly, to force the creation of a discovery affidavit would be an exercise in futility. By means of this argument, founded on a public interest claim said to be closely associated with its role and responsibility in drug enforcement and information sharing, it seeks to avoid making any affidavit. Such proposition, which is advanced as a complete answer to the application, is of course made at the first step of the process, namely disclosure as distinct from production. Whilst it is acknowledged that this is not the norm, nonetheless it is said that this is a suitable case for the adoption of such a procedure.

 

45. It is not suggested by the Revenue that by simply asserting a claim for privilege, a person, either a party or non-party to litigation, is thereby excluded from the discovery process: that is not and never has been the situation, nor is it stated to be. Accordingly, the normal Rules of Court apply which means that all relevant documents must be listed in Part Two of the First Schedule, if privilege is sought in respect of them. Having done that, the nature both of the asserted privilege and of the document the subject thereof, must be sufficiently particularised so as to permit the court to evaluate the claim. Generalised, non-specific details will not suffice: O’Brien v. Minister for Defence & Ors. [1998] 2 I.L.R.M. 156 at p. 159. In the vast majority of cases, it is only via this procedure that the privilege issue will be determined.

 

46. That being said however, there is also no doubt but that on a discovery motion the court has an inherent jurisdiction to refuse the application on the basis that its entire purpose, namely access to relevant evidence capable of aiding or defeating a particular claim, can never be achieved in the face of a privilege plea which inevitably must succeed. Before holding however that the normal process can be abridged in this way and that privilege can ground a refusal for a discovery order as distinct from an inspection order, the court will have to be satisfied that such plea permits of no other possible result. For if it should or might, the court will not refuse to grant a discovery order on such grounds. To view the situation otherwise would be to conflate distinct steps in a two-tier process which involve addressing different questions and determining different issues. Accordingly, when the matter is raised at this stage of the process, the first enquiry must be to determine whether success on the plea is unavoidable. It is only if it is, that an affidavit as to documents will not be required.

 

47. This view of the process is not in any way inconsistent with the decision of Geoghegan J. in Haughey. In fact the observations of the learned trial judge at p. 10 of the judgment are entirely supportive of what should normally be done. As it happened in that case, because of the great urgency involved, the two stages of the process were merged into one with the agreement of all parties; who to that end made available for the hearing all relevant documents, appropriately described and particularised. The case therefore, as the trial judge himself said, is an exception to what will routinely happen.

 

48. When examining the factual side of the instant case in the context of these principles it is clear that I should refrain from expressing any view more than what is necessary to deal with the particular point, for to do otherwise may risk pre-empting the ultimate outcome of the privilege issue. In light of that I refer only to the following matters:

 

(i) R.T.É. has not sought disclosure of any documents from either the Revenue Commissioners or from An Garda Síochána referable to the Witness Protection Programme, or the plaintiff’s participation in it;

(ii) what is requested is documents which were generated in or about 1995/1997 to coincide with the plaintiff’s criminal activities. As such, it is difficult to see how they could have any relevance to his participation in the Programme which only commenced in 2001;

 

(iii) as the plaintiff has never given State evidence in any criminal trial of third parties arising out of these activities, it must be very doubtful at this remove if he ever will;

 

(iv) it must be at least arguable, or perhaps even likely, that the expressed concerns regarding the exchange of information may be overstated as the relevant events occurred almost 15 years ago;

 

(v) further it seems a surprising proposition in law, that the sharing of information with third parties would, by reason of that fact alone, insulate such information from disclosure; if that was the case, such a simple expedient could have very far-reaching consequences for the administration of justice;

 

(vi) in any event it is quite likely that the Revenue may have at least some documents, generated otherwise than by the exchange of information with other agencies; it has not denied that this may be the case and has not specifically put in issue the 1998 encounter; and finally

 

(vii) it seems to be established law that the furnishing of documents in confidence does not of itself make them privileged: In re Kevin O’Kelly [1974] 108 I.L.T. 97 and Burke & Ors. v. Central Independent Television plc [1994] 2 I.R. 61.

 

49. In addition, no reason particular to its work or prejudicial to its activity is prayed in support of this submission – certainly nothing of significance which cannot be argued and fully ventilated at the inspection stage. It is therefore difficult to see what justification there is for circumventing the detailed rules and the well-established practices which have regulated the discovery process for many years.
50. In light of the above therefore and in the absence of knowing how the Revenue will formulate a privilege claim in respect of what documents they might have, I am far from satisfied at this stage of the procedure that any privilege so asserted will inevitably succeed. Or to put it differently, I cannot say that R.T.É. will ultimately exit this process empty-handed. Accordingly, this ground of appeal must also fail.

 

51. As is evident from what previously appears, the application before the High Court was for third party discovery and therefore O. 31, r. 29 RSC applies. It is unnecessary to recite that rule, it being sufficient to say that by reference to the issues raised in this appeal, it is necessary for the moving party to establish:

 

(i) that the Revenue has or is likely to have in its possession or power documents falling within the parameters of the type of documents sought;

(ii) that such are relevant to an issue or issues in the action;

 

(iii) that an order for discovery is necessary for disposing fairly of the cause or matter or for saving costs; and

 

(iv) that any order made, by reference to its scope, is not oppressive.

 

See Allied Irish Banks plc.

In addition it should be noted that the making of such an order is at all times a discretionary matter.

 

52. As is clear from the above the Revenue Commissioners have not denied the existence of documents of the type sought to be discovered nor have they denied the occurrence of the June, 1998 interrogation or the creation of specific documents relating to that incident. Therefore, the requirement specified at para. 51(i) has been satisfied. Consequently, the next question is whether the test of “relevance” has been satisfied, followed closely by the issue of “necessity”.

Relevance and Necessity:

53. It is well established that documentation sought by discovery “[has] to be relevant to the matter in issue” (Stafford v. Revenue Commissioners (Unreported, Supreme Court, O’Flaherty J., 27th March, 1996). The question of what documentation so qualifies was considered by Brett L.J. in the well-known case of Compagnie Financière et Commerciale du Pacificque v. Peruvian Guano Company (1882) 11 Q.B.D. 55 at p. 63 where he stated that:

 

“[i]t seems to me that every document relates to the matters in question in the action, which not only would be evidence upon any issue, but also which, it is reasonable to suppose, contains information which may – not which must – either directly or indirectly enable the party requiring the affidavit either to advance his own case or to damage the case of his adversary. I have to put in the words ‘either directly or indirectly,’ because, as it seems to me, a document can properly be said to contain information which may enable the party requiring the affidavit either to advance his own case or damage the case of his adversary, if it is a document which may fairly lead him to a train of inquiry, which may have either of these tw[o] consequences” (sic).

54. This statement was quoted with approval by Kenny J. in Sterling-Winthrop Group Ltd. v. Farbenfabriken Bayer A.G. [1967] I.R. 97, at p. 102 and subsequently was followed on multiple occasions in this jurisdiction. It was quoted with approval again, as recently as 2003, as remaining “the universally accepted test of what is the primary requirement for discovery, namely the relevance of the documents sought” (Fennelly J. in Ryanair plc v. Aer Rianta c.p.t. [2003] 4 IR 264 (“Aer Rianta”) at p. 275). In short therefore, relevance will be established not only where the documentation sought would be evidence of some issue, but also if what is sought can or may advance one’s own case or damage that of one’s adversary, including if it may lead to a line of inquiry which may result in either.
55. In accordance with this test and on any understanding of the issues as pleaded (paras. 4, 5, 8 and 10 supra) – such being the relevant issues and not those in the submissions – it is in my view an inescapable fact that the documents sought readily meet this criteria and therefore must be considered relevant.

 

56. On the question of “necessity” some observations of a general nature may firstly be made. As was pointed out by Fennelly J. in Aer Rianta, once documents are found to exist which are relevant, it seems unfair to deprive a party of their availability to either advance his case or to rebuff that which he is expected to meet. As a sense of individual justice, this seems undoubtedly correct, as it does also in serving the course of justice. Although relevance and necessity are separate concepts, there is a close relationship between the two. Hence, once the former criteria is established it will most usually follow that the documents in question can also be regarded as being necessary, i.e. necessary within the meaning of O. 31, r. 12(3) RSC which also applies to non-party discovery. Indeed, this point was made by Geoghegan J. in Taylor v. Clonmel Healthcare Ltd. [2004] 1 IR 169, and echoed in very much the same language by Murray J. in Framus Ltd. & Ors. v. CRH plc & Ors. [2004] 2 IR 20. An important indicator in this regard is whether the documents requested are required for the fair disposal of the issue to which they are addressed. If they are, it is most likely that they will be considered necessary.

 

57. This issue has also been argued under a number of specific headings, many of which can quickly be disposed of. It is clear from the accepted position of the plaintiff that he does not have in his possession, or have the power to acquire any documents of the type sought in the discovery motion. That possible alternative source is therefore not available. The position with An Garda Síochána, as it presently stands, is that the only document discovered over which privilege is not claimed is a custody record of the plaintiff’s detention in June, 1997, which is unlikely to be of much value. Whether that will be supplemented by any further documents will have to await the determination of the privilege issue. However and notwithstanding the outcome, whatever it might be, it is difficult to see why in principle discovery should not have been sought against the Revenue given its frontline involvement in drug enforcement and its cooperative engagement with An Garda Síochána in that regard. Whilst there is a possibility of some overlap in the documentation which both non-parties might have, nonetheless, even if this is the case, which is anything but clear, that factor in itself could not be a bar to seeking third party discovery against more than one non-party. In addition, I am satisfied as a matter of probability that whether ultimately obtainable or not, both non-parties are likely to have some documents independent of each other which are relevant to the justification plea. Consequently, I believe that the application against the Revenue is justified and that properly viewed it must be looked upon, free from the constraints of the Revenue’s position.

 

58. In this case therefore, there is no doubt in my mind but that at both a general and specific level, the requested documents comfortably satisfy the well-established approach to this necessity issue.

Purpose of Discovery:

59. In several of ways the Revenue has argued that this application is abusive, either as a fishing exercise or as a trawl search for any evidence to support the justification plea, in circumstances where R.T.É. has not disclosed what material it already possesses to stand over that plea.

 

60. Discovery has been described as “an instrument to advance the cause of justice” (O’Flaherty J. in Allied Irish Banks plc at p. 396). Its purpose is to aid a party in the progress of litigation: it is not designed to identify grounds capable of establishing a cause of action, i.e. it cannot be used to enable a person to plead a cause of action or a defence which he is not otherwise in a position to plead. Flaherty J., by reference to authority and principle, has stated so unequivocally in Galvin v. Graham-Twomey [1994] 2 I.L.R.M. 315 (“Galvin”). In that case the plaintiff, the vice-principal of a primary school, claimed damages inter alia for libel and for a breach of her constitutional right to her good name against another teacher at the same school. In the Civil Bill it was alleged that the defamatory allegations were contained in letters which had been sent by the defendant to third parties. The plaintiff did not have possession of and in fact had never seen the letters of which she sought discovery. In dismissing the plaintiff’s appeal he held that in suing for defamation a person must set forth in the pleadings the details of her complaint with some particularity. A plaintiff “cannot be permitted to launch his proceedings and then hope by discovery to be able to amend his pleadings and thereby make his case” (at p. 320). In such circumstances the attempted use of the discovery process was inappropriate and the defamation aspect of her claim was stuck out.

 

61. This is in keeping with the strong dicta of the courts that mere fishing expeditions are prohibited: Finlay C.J. stated in Bula Limited (In Receivership) & Ors. v. Crowley & Ors. [1991] 1 I.R. 220 that “before making any order for further discovery [a court] … should not, in particular, permit the opposing party to indulge in an exploratory or fishing operation” (p. 223). Similar comments were made in the case of Aquatechnologie Ltd. v. National Standards Authority of Ireland & Ors. (Unreported, Supreme Court, Murray J., 10th July, 2000), who noted that:

 

“documents sought on discovery must be relevant, directly or indirectly, to the matters in issue between the parties in the proceedings. Furthermore, an applicant for discovery must show it is reasonable for the Court to suppose that the documents contain information which may enable the applicant to advance his own case or to damage the case of his adversary. An applicant is not entitled to discovery based on mere speculation or on the basis of what has been traditionally characterised as a fishing expedition.”

62. From these cases and disregarding actions for discovery, in respect of which see Megaleasing U.K. Ltd. & Ors. v. Barrett & Ors. [1993] I.L.R.M. 497 and Doyle v. Garda Commissioner [1999] 1 IR 249, it seems clear, at least in principle, that a sharp distinction exists between situations where a party, be he plaintiff or defendant, seeks discovery to support or advance his particular viewpoint and where such is sought for the purposes of making or formulating a claim which otherwise does not exist. In other words, discovery is an aid to further a viable action or defence, or an issue in either, but not a means in itself to establish one. Whilst in practice such a distinction may not always be self-evident, nonetheless, as a matter of principle it clearly exists. Therefore, any attempt to use the process purely to create a cause of action will be regarded as abusive. Galvin, both conceptually and in practice, amply demonstrates this point.
63. This issue may arise at two distinct points in the litigation process, prior to the commencement of the trial itself. The first may relate to an allegation by the plaintiff that the defendant, in his defence, has failed to particularise the justification plea or to outline the material facts upon which it is based. That is not the situation in this case. The second, as in the instant case, is where discovery is sought to support such a plea. In order to avoid breaching the fishing prohibition, to use an old but apt phrase, it is necessary for the moving party to disclose some information upon which the plea is based. Whether such appears in the defence document or in the particulars matters not: nor does the means by which such information had been acquired. Provided the court is satisfied that some such evidence exists, that will be sufficient. The court does not and should not evaluate its strength as a defence plea. This is not its role on such an application. Nor is it necessary for a defendant to disclose the full extent of what information he may have. He does not have to compromise his defence in this regard. Once it is shown that the plea can be supported, the discovery application cannot be regarded as a fishing exercise or as one whose sole purpose is to establish a justification plea: rather, its proper characterisation in such circumstance, is one of aiding and supporting the material which already exists. This of course is the essence of what discovery is.

 

64. In this case, as appears from the documentation which is partly outlined elsewhere in this judgment, it is quite clear that the criminal activity to which the justification plea is addressed has been detailed and particularised. There can be no doubt but that all interested persons are fully aware of what this plea relates to. That in my view is quite sufficient to dispose of this argument. Therefore the application cannot be resisted on this basis. In addition, perhaps it is worth noting that this ground of objection is not that of the plaintiff but that of a non-party whose involvement is solely confined to the discovery application.

 

65. Finally, in my view, there is no substance in the argument that the order as drawn is oppressive. Firstly it is specific to a single individual; secondly it relates to particular conduct which has been clearly described; thirdly it is confined in time, by reference to the criminal activity as the start date and by reference to the express terms of the order as the end date; fourthly the interrogation issue could not be more specific. In addition, given the information supplied the Revenue will have no difficulty in identifying the issues. Lastly, a simple reference to the affidavit of the Commissioner of An Garda Síochána immediately demonstrates the lack of substance to this point.

 

66. For these reasons, I would dismiss this appeal and note that if an issue of privilege should arise it can be dealt with in the normal way.

 

 

Edward Keating v Radio Telefis Eireann (No.2)

[2013] IEHC 393 (29 July 2013)JUDGMENT of Kearns P. delivered on the 29th day of July, 2013

This is the defendant’s motion for inspection of discovery against the first named non-party, the Commissioner of An Garda Síochána, arising out of proceedings initiated against the defendant by the plaintiff seeking damages for defamation, negligence, breach of duty and breach of both Constitution and Convention rights on foot of a Prime Time programme broadcast on the 19th July, 2001, investigating the importation of drugs into this jurisdiction and their subsequent possession for sale and supply, in which the plaintiff asserts, inter alia, that he was clearly identifiable.

BACKGROUND FACTS

On the 19th July, 2001, the defendant broadcast an episode of the current affairs programme, “Prime Time”, investigating the importation of drugs into this jurisdiction in the years 1995 and 1996, their subsequent possession for sale and supply and the persons allegedly involved in such criminal activities.

 

As the plaintiff’s identity was clearly visible in the promotional “trailers” publicising the programme which were aired prior to the programme’s transmission, An Garda Síochána requested the defendant to remove images and references to the name of the plaintiff. Consequently, on the night the programme was broadcast, the following announcement was made immediately prior to its airing:

 

“[f]or reasons of security it has been deemed necessary to remove at late notice images and references to the name of one of the key individuals named in tonight’s programme”.

Arising from this broadcast, the plaintiff initiated proceedings against the defendant seeking damages for alleging that the programme had inferred that, not only was he a Garda informer and “criminal insider”, but also participated in unlawful criminal activities for his own benefit and, therefore, had “served two masters”. The plaintiff further alleged that the programme had identified him by name, with his image partially visible, notwithstanding the fact that the defendant had received a request from the first non-party to remove images of and references to the name of the plaintiff.

The defendant has admitted the broadcast in question, but has pleaded, inter alia, justification for the aforementioned allegations.

 

By notice of motion dated the 22nd October, 2007, the defendant sought non-party discovery pursuant to O. 31, r, 29, from both non-parties, but specifically from An Garda Síochána of the following documents:

 

“(i) All documents in the possession of An Garda Síochána concerning the plaintiff’s involvement in the unlawful importation of controlled drugs into the State, or his possession for sale, distribution or supply of such controlled drugs.”

On the 23rd July, 2008, the High Court (McCarthy J.) made an order for discovery (following an appeal against the refusal of the Master of the High Court, dated the 18th December, 2007, to grant discovery in the terms sought) against the Commissioner of An Garda Síochána in the above terms but limited its scope to documents created prior to but not after, the 19th July, 2001, the date the Prime Time programme was broadcast. The second named non-party appealed the order as it pertained to them to the Supreme Court, in which McKechnie J. gave judgment of the court on the 9th May, 2013. In Keating v. Radio Telefis Eireann [2013] IESC 22, the court held that the contention that disclosure would be detrimental to public policy and the public interest was a matter for the judiciary to evaluate, only they alone could weigh up the tension which may arise between the public interest in the administration of justice and any other competing public interests. The court ultimately dismissed the appeal, finding that the disclosure granted was not oppressive and rejected the argument for non-disclosure based futility as the motion for privilege was bound to succeed as the court was not convinced that such an argument would inevitably succeed and held that should an issue of privilege arise, it could be dealt with in the normal way.

The Assistant Commissioner of An Garda Síochána, Kevin Ludlow, swore an affidavit of discovery on the 22nd December, 2008, in which he listed six categories of documents over which privilege is asserted, two of which on the grounds of legal professional privilege and the remaining four categories of documents over which privilege is claimed as follows:

 

1) Letter from Deputy Commissioner Conroy to the Assistant Commissioner Eastern Region dated the 26th March, 1999 enclosing a 1 page report of Deputy Commissioner Conroy dated the 18th March, 1999 in respect of a fact finding mission concerning allegations of serious improprieties in the course of drugs and firearms cases in Cork and a 4-page Report of Assistant Commissioner T.A. Hickey dated the 4th January, 1999 to Deputy Commissioner, Operations also in respect of a fact finding mission concerning allegations of serious improprieties in the course of drugs and firearms cases in Cork.

2) 1 page printout from Cor_Reg (computerised correspondence register) from Private Secretary, Commissioners Office in respect of a fact finding mission concerning allegations of serious improprieties in the course of drugs and firearms cases in Cork.

 

3) 12 pages of diary entries from Detective Chief Superintendent T.A. Quilter.

 

4) 13 pages of notebook entries from Detective Chief Superintendent T.A. Quilter.

 

Public interest privilege is claimed in respect of each category of documents and is in the following identical terms:

“Public Interest Privilege is claimed in respect of this document on the basis that it concerns sensitive and confidential activities and practices of An Garda Síochána in the prevention and detection of crime and its disclosure would disclose key Garda intelligence and the sources of same potentially putting at risk the lives and wellbeing of the individuals referred to therein.”

The defendant served a notice to produce documents, pursuant to O. 31, r 18, dated the 28th April, 2009, to produce for inspection the four categories of documents referred to above. The first named non-party replied by letter dated the 1st May, 2009, stating that it was not prepared to waive its claim of privilege over the said documents. Consequently, by notice of motion, dated the 24th September, 2009, the defendant issued a motion for inspection of the above categories of documents.

In the affidavit grounding the above motion, Ms. Anne McManus, solicitor for the defendant, submitted that the following factors were relevant to the balancing exercise now facing the court. Firstly, that as the events, the subject of which the documents relate, occurred over a period of two years in 1995 and 1996, some thirteen years prior to the issuing of the motion for inspection, “both the confidentially and sensitivity of any given activities or practices of An Garda Síochána in the prevention and detection of crime must decrease as the conduct of those activities or practices recedes further into the past”.

 

Secondly, she contended that no person was ever charged or tried with any offence arising out of the investigation of those events and questioned whether any investigation of same remained open.

 

Thirdly, she submitted that, in the absence of any reprisal against the plaintiff in the intervening period, the possibility of disclosure of documents from 1995 and 1996 leading to such recourse must be regarded as non-existent.

 

Fourthly, she further contended that the only suggested source of Garda intelligence was the plaintiff himself who had already publicly identified himself as a Garda informant for the purpose of these proceedings, thereby no other Garda sources or other other individuals could be put at risk. Furthermore, by revealing his identity as a Garda informant, it was submitted, the plaintiff had waived the informer privilege that might have otherwise attached to any such document.

 

The solicitor for the plaintiff, Mr Tom Griffith, replied by affidavit, dated the 15th February, 2010, in which he averred that shortly after the Prime Time programme was broadcast, the plaintiff had been admitted to the State’s Witness Protection Programme and stating his belief that the threat to the plaintiff continued to be “very real, grave and ongoing” from a criminal gang in Cork about whose drug-importation and distribution operations he had informed on to An Garda Síochána.

 

On the 12th April, 2010, the solicitor for the defendant, Ms. McManus, replied, pointing out that since the events in question, in 1995 and 1996, and the transmission of the Prime Time programme in 2001, there had been no evidence of any threat being made to the plaintiff. She further maintained that an order for inspection of the documents sought could not disclose the plaintiff or his family’s whereabouts since they pre-dated the plaintiff’s admission to the Witness Protection Programme.

 

By affidavit dated the 6th May, 2010, Chief Superintendent Brendan Cloonan, on behalf of the first named non-party, expanded upon the first named non-party’s claim of public interest privilege, asserting that not only the trust and confidence of all participants in the Witness Protection Programme would be affected if the documents sought for inspection were disclosed, but inter-agency co-operation between the first non-party and second non-party could also be affected by such disclosure.

 

He further stated that the plaintiff and his family were in fact no longer participants in the Witness Protection Programme, but that the threat to his life was being addressed by “certain future commitments” from the Gardai, including the facilitation of his return to the State on two instances in 2004 and 2007.

 

There followed a number of lengthy and detailed affidavits between the solicitors for the plaintiff, defendant and first named non-party, including affidavits from the plaintiff and his wife, as to the precise status of the plaintiff under the Witness Protection Programme.

 

On the 17th July, 2012, in an affidavit in response to the above affidavits, Ms. Trish Whelan, a solicitor for the defendant, asserted that, irrespective of the exact status of the plaintiff under the Witness Protection Programme, there could be no viable threat to his life created by making the order of inspection sought by the defendants, as there was no evidence in the pleadings or affidavits to provide any basis for his assertion that any of the documents sought could reveal his location.

 

On the 16th November, 2012, Detective Superintendent Liam King swore an affidavit on behalf of the first named non-party in reply, averring that the plaintiff was, in fact, no longer a participant on the Witness Protection Programme, having signed what is described as an “exit document” on the 25th September, 2003 (which the plaintiff maintains was a receipt for the €20,000 loaned to him by An Garda Síochána). Despite this, the plaintiff remained the subject of ongoing security arrangements which were put in place for him on each of his return visits to the State, and therefore his exit from the Witness Protection Programme could not be taken to mean that his life was no longer at risk.

 

Detective Superintendent King further averred that notwithstanding the above, his primary objection to the disclosure sought was that it would undermine the confidentiality of the Witness Protection Programme in general.

DECISION

The issue which arises for determination on the facts of this case is whether the first named non-party’s claim for public interest privilege in respect of the said documents can be upheld. It is settled law that where a conflict between public interests arises, it is for the court to decide which public interest is to prevail.

 

In Ambiorix Ltd. v. Minster for the Environment (No. 1), [1992] 1 I.R. 277, Finlay C.J. reiterated the principles that had been laid down in Murphy v. Dublin Corporation [1972] I.R. 215 as follows, at p. 283:-

 

“1. Under the Constitution the administration of justice is committed solely to the judiciary by the exercise of their powers in the courts set up under the Constitution.

2. Power to compel the production of evidence (which, of course, includes a power to compel the production of documents) is an inherent part of the judicial power and is part of the ultimate safeguard of justice in the State.

 

3. Where a conflict arises during the exercise of the judicial power between the aspect of public interest involved in the production of evidence and the aspect of public interest involved in the confidentiality or exemption from production of documents pertaining to the exercise of the executive powers of the State, it is the judicial power which will decide which public interest shall prevail.

 

4. The duty of the judicial power to make that decision does not mean that there is any priority or preference for the production of evidence over other public interests, such as the security of the State or the efficient discharge of the functions of the executive organ of the Government.

 

5. It is for the judicial power to choose the evidence upon which it might act in any individual case in order to reach that decision.”

 

This test was applied by Keane J. (as he then was) in Breathnach v. Ireland (No.3) [1993] 2 I.R. 458, a case in which a claim of public interest privilege was relied on by the Director of Public Prosecutions to avoid discovery of communications from An Garda Síochána pertaining to the plaintiff’s arrest and detention. These communications had been made in circumstances where the investigating Gardai had believed such communications would be confidential. It was argued that it was in the public interest not to discover these documents as it was imperative that the confidentiality of such communications be maintained in order to ensure full disclosure by An Garda Síochána. Therefore, it was in the public interest not to discover these documents. Keane J. (as he then was) described the process the court should engage in, at p. 469:-

“[T]he court, as I understand the law, is required to balance the public interest in the proper administration of justice against the public interest reflected in the grounds put forward for non-disclosure in the present case. The public interest in the prevention and prosecution of crime must be put in the scales on the one side. It is only where the first public interest outweighs the second public interest that an inspection should be undertaken or disclosure should be ordered. In considering the first public interest, it is necessary to determine to what extent, if any, the relevant documents may advance the plaintiff’s case or damage the defendants’ case or fairly lead to an enquiry which may have either of those consequences. In the case of the second public interest, the various factors set out by Mr. Liddy must be given due weight. Again, as has been pointed out in the earlier decisions, there may be documents the very nature of which is such that inspection is not necessary to determine on which side the scales come down. Thus, information supplied in confidence to the gardai should not in general be disclosed, or at least not in cases like the present where the innocence of an accused person is not in issue, and authorities to that effect, notably Marks v. Beyfus (1890) 25 Q.B.D. 494, remain unaffected by the more recent decisions, as was made clear by Costello J. in Director of Consumer Affairs v. Sugar Distributors Ltd. [1991] 1 I.R. 225. Again, there may be material the disclosure of which would be of assistance to criminals by revealing methods of detection or combatting crime, a consideration of particular importance today when criminal activity tends to be highly organised and professional …”

On the subject of free communication between An Garda Síochána and the DPP, Keane J. stated at p. 472 that this was an important factor. He continued that:

“The extent to which that freedom might be inhibited by the knowledge that the documents furnished to the Director of Public Prosecutions may subsequently be disclosed in court proceedings is clearly a matter which has to be taken into consideration in determining whether the public interest in the particular case requires its production.”

While he noted that executive privilege had been eroded to some extent Keane J. observed that the position was different in respect of communications passing between An Garda Síochána and the DPP in light of the due weight that had to be given to the public interest in the prevention and detection of crime. He concluded in this regard at p. 472 that:

“The circumstances of the particular case must determine, in the light of the constitutional principles to which I have referred, whether an inspection should be undertaken by the court and whether, as a result of that inspection, production of any of the documents should be ordered.”

Although Keane J. (as he then was) ultimately refused the claim of public interest privilege in Breathnach on the facts pertaining to that case, the principles he endorsed were followed by Murphy J. in Livingstone v. Minister for Justice (Unreported, High Court, 2nd April, 2004). Rather than accepting a blanket claim of privilege based on the prevention of crime, Murphy J. considered the relevance of each category of documents sought and balanced the above competing interests on the facts of the case before him. He ultimately ordered discovery of some of the documents sought, noting that there was no “blanket ban” on ordering disclosure of the garda files and that (at p. 14), “police communications are not, as a class, privileged.”

Another decision, that of Foley v. Bowden [2003] 2 IR 607, concerned a plaintiff who sought to examine a garda witness as to payments made to the defendant in the course of his participation on the Witness Protection Programme. However, the Commissoner of An Garda Síochána resisted the application asserting that it would undermine the operation of the programme. The High Court upheld the objection, but, Keane C.J. allowed the appeal, and, following a close examination of the reality of the fears that had been expressed by the Commissioner concluded at p. 612 that:

 

“if it were the case that requiring the notice party, or whoever the appropriate officer may be, to attend before the High Court for the purpose of being orally examined as to any sums which may be owing the judgment debtor under that scheme and producing any documents relevant thereto, of itself would imperil the successful implementation of the scheme in the future, I would agree with the conclusions of the High Court Judge that the order should not be granted. It is not clear, however, that that would necessarily be the case. It does not follow that, because the relevant documents will be available at the hearing in the High Court, they must, in every instance, be produced for the inspection of the plaintiff or his legal advisors. On the contrary, if the officer objects to the production of any document on the grounds that its disclosure would not be in the public interest, the judge before whom the examination is being held can rule on the validity of that objection and, if necessary, can inspect the document himself or herself without its being furnished for inspection to anyone else. It may be that such an inspection may not be necessary and the very nature of the document may be such that the judge will be able to rule that its production would not be in the public interest and that the public interest in question is not outweighed by any legitimate interest of the plaintiff. Similarly, there should be no essential difficulty in the examination being conducted in a manner that does not disclose either the new identity or the new location of the defendant.”

The Ambiorix principles were referred to more recently by McKechnie J. in the appeal in this case referred to earlier (Keating v. Radio Telefis Eireann [2013] IESC 22), in which, noting that the following practice has developed, he stated at para. 36 that:

“(i) In general, where competing interests conflict the court will examine the text of the disputed document and determine where the superior interest rests: it will carry out this enquiry on a case-by-case basis;

(ii) this exercise may not always be necessary. On rare occasions, it may be possible for the court to come to a decision solely by reference to the description of the document as set out in the affidavit; that is, without recourse to an examination of the particular text of the document itself (Breathnach p. 469);

 

(iii) in all cases however (and this is the crucial point) it will be for the examining court to both make the decision and to decide on what material is necessary for that purpose; and finally

 

(iv) in performing this exercise, no presumption of priority exists as between conflicting interests.”

 

As noted above, there is a public interest in the prevention and detection and prosecution of crime. In this regard, it is necessary to determine to what extent, if any, the relevant documents may advance a party’s claim/defence or fairly lead to an inquiry which may have either of these consequences, when considering the public interest in the administration of justice.

The onus is on the party claiming privilege, in this case being An Garda Síochána, to prove that such privilege exists, and this burden of proof is not discharged by claiming that privilege attaches to a document by virtue of it being disclosed in confidence. Nor is it discharged by simply asserting a general public interest in withholding the relevant document. Any such plea of public interest privilege, as held by O’Malley J. in Gibb v. Minister for Justice [2013] IEHC 238 “must be evaluated by reference to the circumstances actually presenting”. However, once proven, the onus of proof shifts to the party challenging that privilege, in this case being RTE. Consequently, in determining whether privilege attaches to a document, the court will closely scrutinise any such assertion and decide whether any such claim will be upheld.

 

Therefore, taking the facts of the present case into consideration to determine whether the public interest privilege asserted by the Commissioner of An Garda Síochána should be upheld, this Court is obliged to have regard to the fact that the Commissioner is a non-party to these proceedings, and inspection is sought of these documents by the defendant to aid its defence of justification of allegations that are not connected with any act or omission on the part of the Commissioner. Moreover, it was the Commissioner who, in fact, requested the defendant to remove images and references to the name of the plaintiff in the interest of his safety and security. Furthermore, the categories of documents which have already been discovered, only came into existence in the course of the exercise by An Garda Síochána of its function in the prevention and detection of crime, a crucial function in the public interest.

 

In determining where the balance between competing public interests should lie, I am satisfied that it is not in the public interest to grant the relief sought in the defendant’s motion herein as to do so would undermine the protection, preservation and integrity of the State’s Witness Protection Programme. This was attested to by Chief Superintendent Brendan Cloonan in his affidavit dated the 6th May, 2010, on behalf of the first named non-party, in which he averred that the concerns of the first named non-party pertaining to the proper and effective functioning of the Witness Protection Programme do not diminish with the passage of time and are

 

“as relevant now as they were in 1995 or in 2001, going to the very heart of the work and methods of An Garda Síochána in the prevention and prosecution of crime. If the integrity of the programme is to be maintained it is essential that details of investigations and information provided in the course of such investigations remain completely confidential and this must be so whether or not a prosecution ultimately follows.”

Whilst I accept that neither the plaintiff nor his family are still participating in the Witness Protection Programme, there remains a considerable risk to the plaintiff’s safety, as highlighted by the efforts to which An Garda Síochána have gone to safeguard the plaintiff when within this jurisdiction. This was attested to, firstly by Chief Superintendent Cloonan, in his affidavit dated the 6th May, 2010, on behalf of the first named non-party, in which he averred that the threat to the plaintiff’s life was being catered for by “certain future commitments” from the Gardai, which included the facilitation of his return to this jurisdiction on two instances in 2004 and 2007, and more recently in February 2012, when the plaintiff returned to this jurisdiction for consultations with his legal advisors, as averred to by Chief Superintendent Liam King in his affidavit dated the 16th November, 2012.

I am equally satisfied that all aspects of the operation of the Witness Protection Programme need to remain confidential due to its ongoing nature, and adverse consequences would undoubtedly arise following disclosure of any confidential information pertaining to the programme itself and/or current and future participants on it.

 

I am further satified that to grant inspection of the documents already discovered would not be in the public interest as it would result in the disclosure of information of a confidential, sensitive nature relating to the practices of An Garda Síochána in the prevention and detection and prosecution of crime and potentially put at risk the lives and wellbeing of the individuals referred to therein.

 

I therefore refuse the relief sought in the defendant’s notice of motion.