FEDERAL COURT OF AUSTRALIA Woodbridge Foam Corporation v AFCO Automotive Foam Components Pty Ltd [2002] FCA 1433 PRACTICE – patent action – discovery – documents disclosing names of employees who witnessed manufacture process – not relevant to material fact in issue Alliance Pure White Lead Syndicate v MacIvor's Patents (1891) 39 WN 487 distinguished Birch v Mather (1883) 22 ChD 629 distinguished Crossley v Tomey [1875] 2 ChD 533 distinguished Cumming v Matheson (1970) 92 WN (NSW) 339 applied Eade v Jacobs (1877) 3 ExD 335 applied Finnegan v James (1874) 19 Eq 72 distinguished Frost v Brook (1875) 23 WN 260 applied George Ballantine & Son Ltd v F E R Dixon & Son Ltd [1974] 1 WLR 1125 applied J & E Hall v Liardet (No. 2) [1883] WN 175 not followed Lyon v Tweddell (1879) 13 ChD 375 applied Knapp v Harvey [1911] 2 KB 725 applied Marriott v Chamberlain (1886) 17 QBD 154 distinguished National Starch Company v Robert Harper and Co Proprietary Limited [1906] VLR 8 applied Potter v Metropolitan District Railway Co (1873) 28 LT 231 not followed Saunders v Jones (1877) 7 ChD 435 applied West v Conway (1923) 23 SR (NSW) 344 applied WOODBRIDGE FOAM CORPORATION v AFCO AUTOMOTIVE FOAM COMPONENTS PTY LTD V 39 of 2002 FINKELSTEIN J 21 NOVEMBER 2002 MELBOURNE IN THE FEDERAL COURT OF AUSTRALIA VICTORIA DISTRICT REGISTRY V 39 of 2002 BETWEEN: WOODBRIDGE FOAM CORPORATION Applicant AND: AFCO AUTOMOTIVE FOAM COMPONENTS PTY LTD Respondent BETWEEN: AFCO AUTOMOTIVE FOAM COMPONENTS PTY LTD Cross Claimant AND: WOODBRIDGE FOAM CORPORATION Cross Respondent JUDGE: FINKELSTEIN J DATE OF ORDER: 21 NOVEMBER 2002 WHERE MADE: MELBOURNE THE COURT ORDERS THAT: Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules. IN THE FEDERAL COURT OF AUSTRALIA VICTORIA DISTRICT REGISTRY V 39 of 2002 BETWEEN: WOODBRIDGE FOAM CORPORATION Applicant AND: AFCO AUTOMOTIVE FOAM COMPONENTS PTY LTD Respondent BETWEEN: AFCO AUTOMOTIVE FOAM COMPONENTS PTY LTD Cross Claimant AND: WOODBRIDGE FOAM CORPORATION Cross Respondent JUDGE: FINKELSTEIN J DATE: 21 NOVEMBER 2002 PLACE: MELBOURNE REASONS FOR JUDGMENT 1 This is a typical patent action. The applicant sues for the infringement of its patent which, in this case, was granted in respect of a method of producing a foamed article in a vented mould which reduces wastage by minimising the extrusion of raw material into the vent during venting of the mould. The respondent, who manufactures headrests using an allegedly infringing process, denies infringement and also seeks an order for the revocation of the patent on most, if not all, available grounds. One of those grounds is that the claimed invention is not useful. By way of particulars the respondent asserts that the use of a mould according to the principal claim defining the invention will not always, or generally, prevent leakage from one or more of the mould's vents and that the operating temperature of the moulding process will effect the operation of the mould. If this ground is pressed no doubt we will hear evidence at trial about the respondent's production process. The applicant is anxious to learn what it can about how the moulds are used by the respondent. So it seeks, by way of discovery, the respondent's employment records because they will disclose the names of the respondent's staff who work in production thus enabling the applicant to approach them to gain details about the manufacturing process. Whether the information will be disclosed is altogether another matter. All I must decide is whether the applicant is entitled to the discovery it seeks. 2 The leading cases upon which I am about to rely relate to interrogatories. But as the delivery of interrogatories is based upon the same principles as the discovery of documents – interrogatories being just one aspect of discovery – it is appropriate to be guided by them. Walton J took this approach in George Ballantine & Son Ltd v F E R Dixon & Son Ltd [1974] 1 WLR 1125, 1129. 3 There is an old rule to the effect that it is usually not permissible to interrogate to ascertain the names of witnesses which a party intends to call. The cases which have applied the rule include Frost v Brook (1875) 23 WN 260, Eade v Jacobs (1877) 3 ExD 335, Saunders v Jones (1877) 7 ChD 435, Lyon v Tweddell (1879) 13 ChD 375 and Knapp v Harvey [1911] 2 KB 725. Although the cases are concerned with attempts to discover the evidence of opponents, I do not regard this to be the underlying reason for the disallowance of the interrogatories. In my opinion, the true basis for each decision is that the names of witnesses did not form any substantial part of the material facts of the case, and for that reason did not need to be disclosed. This emerges from a number of cases including West v Conway (1923) 23 SR (NSW) 344, 348 and Cumming v Matheson (1970) 92 WN (NSW) 339. Cumming v Matheson was a suit for an injunction to restrain the defendants from improperly using confidential information alleged to have been given by the plaintiff to the defendants. The defendants claimed that they had obtained a part of the information otherwise than as alleged by the plaintiff. The plaintiff sought to administer interrogatories with respect to the identity of the person who, according to the defendants, had given them the information. The interrogatories were refused. Hope J held that the information was irrelevant. He referred to early cases that he said establish the proposition that only in very special circumstances will interrogatories as to the identity of persons who have done certain acts be allowed. As regards libel actions, where such interrogatories had been sought, Hope J said (at 345) that "in general terms, the identity of the person who makes the [libellous] statement is irrelevant. The fact that the statement was made is the relevant matter." See also National Starch Company v Robert Harper and Co Proprietary Limited [1906] VLR 8, 12, a trespass action where Hodges J said: "It is quite true that it would be a good thing for defendant to know the character of these witnesses [who witnessed an event], in order to investigate whether they are to be believed or not. So he might find such knowledge useful in the case of every witness. But his name is not a material part of the case." 4 This is not suggest that the names of persons who have witnessed an event, made a statement or performed an act will never be relevant in a particular case. That is not the law. Take for example Marriott v Chamberlain (1886) 17 QBD 154, a libel action where the defendant pleaded truth. The substance of the libel was that the plaintiff had fabricated a story that a certain letter purporting to be signed by the defendant had been sent to the defendant's competitors. The plaintiff stated that he had seen a copy of the letter and that it was in the possession of certain persons. The defendant administered interrogatories asking the plaintiff to state the name and address of his informant in whose hands he had seen a copy of the letter, and the names and addresses of the persons to whom the letter had been sent. The interrogatories were allowed because the plaintiff's statements that he had been shown a copy of the letter and that it was in the possession of others were material facts which would be in dispute at the trial and which, if proved, could be fatal to the defendant's plea of justification. Lord Esher MR said (at 163): "These facts may be called part of the plaintiff's case, but, if they are, I think the defendant has a right to interrogate with regard to them, because they are part of the plaintiff's case." 5 Another example arises in patent actions. In cases where a defendant has denied the validity of a patent on the ground of prior user, he has been required to give the names and addresses of the person by whom the plaintiff's invention had been used: see for example Finnegan v James (1874) 19 Eq 72; Crossley v Tomey [1875] 2 ChD 533; Birch v Mather (1883) 22 ChD 629; Alliance Pure White Lead Syndicate v MacIvor's Patents (1891) 39 WN 487. But there again the information sought related directly to a fact in issue. 6 It is easy to find cases that do not fit within the old rule and which cannot be reconciled with the rule's basic premise. An example is Potter v Metropolitan District Railway Co (1873) 28 LT 231. This was an action for damages arising out of a railway accident. The plaintiff was given leave to interrogate as to the name of the driver of the engine, the inspector who directed that the plaintiff be taken home and the two porters who assisted her home. But she was not permitted to interrogate whether any servant of the defendant witnessed the accident. Another is J & E Hall v Liardet (No. 2) [1883] WN 175. That action was for the price of work done in constructing models of certain machines. The defence claimed that the models were unworkable. The plaintiffs were granted leave to interrogate whether the models were exhibited at an exhibition and received a prize. They were also entitled to interrogate who the judges were, although Field J at one point said that he had "great doubt as to whether an interrogatory as to the names of the judges would be permissible." In the end, he allowed the interrogatory but without explanation. I am not disposed to apply these cases. 7 Here, I have no doubt that the applicant can get discovery of documents concerning the respondent's manufacturing processes. So much is accepted by the respondent, and the relevant records are in the process of being made available. But the applicant is not entitled to have discovery of the respondent's employment records, because the identity of those employees is not a relevant issue in this piece of litigation. I certify that the preceding seven (7) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Finkelstein. Associate: Dated: 21 November 2002 Counsel for the Applicant: Mr B Caine Solicitor for the Applicant: Davies Collison Cave Solicitors Counsel for the Respondent: Mr B Hess Solicitor for the Respondent: Deacons Date of Hearing: 15 November 2002 Date of Judgment: 21 November 2002