Abbey Laboratories Pty Ltd v Virbac (Australia) Pty Ltd (No 2)

This judgment arose inside a larger patent revocation proceeding. Abbey Laboratories was seeking to revoke a patent owned by Virbac concerning formulations for the topical treatment of cattle for parasites. Abbey's pleaded grounds included novelty and lack of inventive step.

The immediate issue before the Court was much narrower. It was not a final ruling on patent validity. Instead, it was an interlocutory fight about whether Abbey had to comply with a notice to produce served by Virbac shortly before the hearing.

Abbey had relied on expert evidence from Dr Fadil Alawi, a veterinary pharmaceutical formulator. In his affidavit, Dr Alawi explained his consulting work through Pharminnovation Ltd and disclosed that Pharminnovation had been retained by Abbey on approximately 5 to 9 animal health product development projects since April 2019, with the most recent ending in June 2022.

Virbac then sought documents about each of those projects. The request was broad. It sought documents sufficient to identify active ingredients, excipients including solvents, method of administration and target animal, and also documents recording the name of any registered animal health product resulting from a project.

That request was important because it reached beyond the immediate patent subject matter. The Court specifically noted that the notice was not confined to projects involving formulations for the topical treatment of cattle for parasites. Abbey therefore applied for an order dispensing with compliance.

The notice to produce was tied to paragraph 18 of Dr Alawi's affidavit, where he disclosed the existence of 5 to 9 Abbey projects handled by Pharminnovation. Virbac used that disclosure as the foundation for a request covering each of those projects.

The categories sought were commercially sensitive. They included the active ingredient or ingredients, excipients including solvents, method of administration and target animal for each project. If any project had resulted in the registration of an animal health product, Virbac also wanted documents recording the name of that registered product.

For a business, that is a significant level of detail. It can reveal product strategy, formulation choices, development pathways and market focus. In many technical disputes, those details may be among the most commercially valuable records a company holds.

The Court highlighted two features of the request. First, it was not limited to projects involving the same type of formulation as the patent in suit. Second, the projects fell in a period eight to eleven years after the patent's priority date, during which common general knowledge and Dr Alawi's own views and practices may well have changed.

Those features mattered because they weakened the apparent connection between the requested documents and the issues the Court had to decide in the revocation proceeding.

The central question was whether Virbac's notice to produce had a legitimate forensic purpose. The Court said that the concept of relevance applicable to subpoenas also applies to notices to produce, and Virbac accepted that position.

Justice Jackman referred to the Full Court decision in Seven Network (Operations) Ltd v Fairfax Media Publication Pty Ltd and to the New South Wales Court of Appeal decision in Secretary of the Department of Planning, Industry and Environment v Blacktown City Council. The judgment drew together several related propositions.

First, the issuing party bears the onus of demonstrating a legitimate forensic purpose in relation to the issues in the proceeding. Second, the inquiry is not about rigid tests but about whether the process is being used properly. Third, it is not necessary to prove that the documents definitely will assist the issuing party's case. It is enough if the documents can plausibly be seen to relate to an issue in the proceeding or cast light on such an issue, and if there is a reasonable basis beyond speculation for thinking they would likely add in some way to the relevant evidence.

That framework is important for businesses because it sets the boundary between a properly targeted request and a fishing expedition. A notice to produce cannot be used simply because the requested material might be commercially interesting or because the issuing party hopes something useful may turn up.

Virbac also argued that the documents might be relevant to Dr Alawi's independence as an expert. That gave the Court a secondary issue to consider: whether the broader project documents were needed to test independence beyond what Dr Alawi had already disclosed in his affidavit.

Justice Jackman held that, on the evidence currently before the Court, he was unable to see how the documents sought could plausibly be seen to relate to any issue in the proceedings or cast light on such an issue. He also said there was no reasonable basis for supposing that the material called for would likely add, in the end, in some way or another, to the relevant evidence in the case.

The judge described it as speculative whether the documents sought would materially assist on any issue in the proceedings. On that basis, he regarded the notice to produce as a fishing expedition.

The Court also rejected Virbac's argument about expert independence, at least on the material then available. Justice Jackman said he could not presently see that the requested documents were relevant to Dr Alawi's independence beyond the information already conveyed by paragraph 18 of the first affidavit. In the judge's view, that paragraph contained sufficient disclosure for any submission to be put on that topic at that stage.

The Court therefore ordered that compliance with the notice to produce dated 21 August 2025 be dispensed with. Virbac was ordered to pay Abbey's costs of the interlocutory application dated 27 August 2025.

The form of order is worth noting. Abbey's application sought an order dispensing with compliance, but in oral submissions Abbey also argued that the notice should be set aside. The judge preferred to dispense with compliance rather than set the notice aside outright. He explained that this was preferable against the possibility that evidence not currently before the Court might later throw further light on the legitimacy of the notice.

If your business is involved in patent litigation or any technical dispute, this case is a reminder that the other side cannot automatically use a notice to produce to obtain broad categories of internal project material. The Court will look for a real connection between the documents sought and the issues in the case.

That is especially important where the request reaches into unrelated projects, different products, different methods of administration or different target markets. The broader the request, the more clearly the issuing party may need to explain its forensic purpose.

The decision is also useful where an expert has disclosed prior consulting work with a party. Disclosure of that relationship may be enough for submissions about independence, without opening the door to production of all project records. That will depend on the circumstances, but this case shows that a court may resist attempts to turn a disclosed consulting relationship into a broad document trawl.

Timing is another practical point. The notice here was served less than two weeks before the hearing. The judgment does not say that lateness alone was decisive, but businesses should treat late-stage requests seriously because they can create immediate operational pressure. Collecting technical records, reviewing confidentiality issues and taking legal advice can be expensive and disruptive, particularly for smaller teams.

For businesses issuing notices to produce, the lesson is equally clear. Draft narrowly. Tie each category to a live issue in the pleadings, evidence or expert case. Be ready to explain why the documents could plausibly cast light on that issue. If you cannot do that, the request may fail and you may face a costs order.

When a notice to produce arrives, businesses should start with the issues in the proceeding, not with the document categories in isolation. Ask whether the request is directed to a pleaded issue, an identified evidentiary issue or a specific challenge to expert evidence. If the connection is unclear, that may be a warning sign.

Next, look at scope. A request that extends to multiple projects, products or time periods may be harder to justify than one focused on the product or conduct actually in dispute. In this case, the lack of confinement to topical cattle parasite formulations was a significant feature.

Then consider timing and burden. A notice served close to hearing can create practical prejudice even if the judgment does not treat lateness as a standalone ground. Businesses should assess how much work would be needed to identify, collect, review and potentially redact responsive documents.

Where expert independence is raised, compare the request against what has already been disclosed. The Court here considered the affidavit disclosure sufficient for submissions on independence at that stage. That does not mean further material can never be sought, but it does mean the issuing party needs a proper basis for going further.

Finally, keep records in a way that allows you to respond efficiently. Clear consultant engagement terms, project descriptions, dates and document management practices can reduce cost and help your legal team assess whether a request is properly targeted or should be resisted.

The judgment was delivered by Jackman J on 2 September 2025 in the General Division of the Federal Court of Australia, New South Wales Registry. It was delivered ex tempore and revised from transcript.

The ruling concerns an interlocutory application dated 27 August 2025 about a notice to produce dated 21 August 2025. It should not be read as deciding the underlying patent revocation proceeding.