Federal Court of Australia
FEDERAL COURT OF AUSTRALIA
Baygol Pty Ltd v Foamex Polystyrene Pty Ltd [2004] FCA 887
PRACTICE AND PROCEDURE – Discovery – application for further and better discovery – discovery in relation to defined categories of documents – principal proceeding patent claim under s 117 of the Patents Act 1990 (Cth) – categories for further discovery not too broad – application granted – parties to agree on appropriate regime regarding commercial sensitivity. BAYGOL PTY LTD v FOAMEX POLYSTYRENE PTY LTD N 1530 OF 2003 TAMBERLIN J SYDNEY 12 JULY 2004
IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY N 1530 OF 2003
BETWEEN: BAYGOL PTY LTD
ACN 008 055 212
APPLICANT
AND: FOAMEX POLYSTYRENE PTY LTD
ACN 088 759 264
RESPONDENT
JUDGE: TAMBERLIN J
DATE OF ORDER: 12 JULY 2004
WHERE MADE: SYDNEY
THE COURT ORDERS THAT: 1. The respondent make discovery of the documents requested in the letter of the solicitor for the applicants to the solicitor of the respondents of 23 March 2004. 2. Liberty to apply on one day's notice in relation to the question of confidentiality and the formulation of an appropriate confidentiality regime if the parties cannot otherwise agree. 3. Costs of this application be costs in the principal proceeding. Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.
IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY N 1530 OF 2003
BETWEEN: BAYGOL PTY LTD
ACN 008 055 212
APPLICANT
AND: FOAMEX POLYSTYRENE PTY LTD
ACN 088 759 264
RESPONDENT
JUDGE: TAMBERLIN J
DATE: 12 JULY 2004
PLACE: SYDNEY
REASONS FOR JUDGMENT 1 This is an application made by the applicant, Baygol Pty Limited ("Baygol"), for further and better discovery by the respondent Foamex Polystyrene Pty Limited ("Foamex"). 2 The principal application is for relief which is relevantly based upon alleged patent infringement pursuant to s 117 of the Patents Act 1990 (Cth). That section provides: "117 Infringement by supply of products (1) If the use of a product by a person would infringe a patent, the supply of that product by one person to another is an infringement of the patent by the supplier unless the supplier is the patentee or licensee of the patent. (2) A reference in subsection (1) to the use of a product by a person is a reference to: (a) if the product is capable of only one reasonable use, having regard to its nature or design – that use; or (b) if the product is not a staple commercial product – any use of the product, if the supplier had reason to believe that the person would put it to that use; or (c) in any case – the use of the product in accordance with any instructions for the use of the product, or any inducement to use the product, given to the person by the supplier or contained in an advertisement published by or with the authority of the supplier." 3 In this application the provisions of ss 2(a), (b) and(c) are of relevance. 4 The allegation is that Foamex manufacturers products known as "pods" that are used in an infringing method of making a building foundation in accordance with the method claimed in the patent. 5 On 31 October 2003, a direction was made that discovery would be given by both parties of all documents on which they propose to rely in support of their case and all documents of which they were aware that to a material extent, adversely affected their own case or supported the other party's case. Discovery was ordered to be made by 2 February 2004. 6 On 2 February 2004, Foamex served a list of documents, and there was a dispute between the parties in relation to the extent of discovery sought. Finally, on 23 March 2004, Baygol's solicitors wrote to the solicitors for Foamex seeking discovery under the motion of the following documents: "(a) Manufacturing specifications, drawings, designs and any other documents relating to the manufacture by the Respondent of pods; (b) Quotations, estimates, advertisements and all documents relating to the offer for sale of pods; (c) All documents which relate to the manufacture, sale or delivery of pods for use in waffle pod foundations, all instructions and general communications given by the Respondent to its customers; (d) The identity of all customers and end users who purchase products from the Respondent; (e) Documents relating to instructions given by the respondent for the use of the products, and documents relating to inducements made by the Respondent and contained in advertisements published by or with the authority of the Respondent." 7 Foamex seeks to resist discovery of these documents on two grounds. The first is a general ground based on the issues said to arise under the pleading and particulars. This is to the effect that there are defects and inconsistencies in Baygol's pleading which make it embarrassing. Foamex therefore alleges that the pleadings are improperly particularised, internally inconsistent and inadequate and that, on the basis of these pleadings, Foamex should not have to produce any of the further documents claimed. Foamex concedes that a narrower range of discovery relating to instructions or inducements it has made or authorised since October 1987 concerning the use of the pods in forming building foundations would be relevant and appropriate, and it accepts that it has an ongoing obligation to make discovery relevant to this issue. It identifies only one additional document as coming within this category. Foamex also raises an issue regarding the commercial sensitivity and confidentiality of the documentation, but this is a distinct issue from the appropriate extent of discovery and can be catered for by a proper confidentiality regime. 8 On 8 April 2004, Baygol provided submissions in reply in which it disputes the allegations concerning the pleading and particulars alleged by Foamex. Foamex has also made detailed submissions dealing with each of the allegations in the pleading. 9 At the time of this application there has been no step taken to strike out or challenge the pleading and the essential question before me is the extent of discovery on the basis of the pleading as it stands. I do not consider it necessary or appropriate to rule on the question of the sufficiency of the pleading in the absence of any proper challenge to it. Nor am I suggesting that I consider there is any defect in the pleading as contended by Foamex. I therefore turn to the specific documents in question and I approach the issue on the basis of the provisions of s 117 which have been pleaded.
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