The University of Sydney v ResMed Ltd [2008] FCA 1020

FEDERAL COURT OF AUSTRALIA

The University of Sydney v ResMed Ltd [2008] FCA 1020

PRACTICE AND PROCEDURE – discovery – relationship between categories of documents and Order 15 rule 2 of the Federal Court Rules (Cth)

Federal Court Rules (Cth) O 15 r 2 Australian Competition and Consumer Commission v Qantas Airways Ltd [2003] FCA 907 referred to Aveling v UBS Capital Markets Australia Holdings Ltd [2005] FCA 415 referred to THE UNIVERSITY OF SYDNEY v RESMED LTD

NSD 200 of 2007

LINDGREN J

4 July 2008

SYDNEY IN THE FEDERAL COURT OF AUSTRALIA

NEW SOUTH WALES DISTRICT REGISTRY NSD 200 of 2007

BETWEEN: THE UNIVERSITY OF SYDNEY

Applicant/Cross-Respondent

AND: RESMED LTD

Respondent/Cross-Claimant

JUDGE: LINDGREN J DATE OF ORDER: 4 July 2008

WHERE MADE: SYDNEY

THE COURT ORDERS THAT:

1. The proceeding be listed on 9 July 2008 for the making of directions. 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 NSD 200 of 2007

BETWEEN: THE UNIVERSITY OF SYDNEY

Applicant/Cross-Respondent

AND: RESMED LTD

Respondent/Cross-Claimant

JUDGE: LINDGREN J

DATE: 4 july 2008

PLACE: SYDNEY

REASONS FOR JUDGMENT

Introduction 1 These reasons relate to a complex discovery dispute. Over a period the parties have managed to reach agreement in relation to many categories of documents. Their efforts are to be commended. The categories on which a decision is required are set out in an annexure to these reasons for judgment. On the second day of the hearing, the applicant (the University) proposed amendments to a number of those categories on the basis that the University may seek discovery of the original categories at a later date. The respondent (ResMed) opposed such a course. I discuss this proposal in more detail at [82]ff below. 2 The University is the registered proprietor of Australian Patent No 643994 for an invention entitled "Nasal mask" (the Patent). Its priority date is 21 May 1990. 3 At the heart of the parties' dispute is a written agreement dated 17 May 1991 entitled "Licensing Agreement" between the University and ResMed (the Agreement). In the Agreement ResMed is called "the Licensee". 4 The University sues ResMed for infringement of the Patent and for breach of the Agreement. The question whether the categories of documents in dispute are discoverable turns largely on the Agreement and on a proper construction of the University's further amended statement of claim (FASOC). ResMed has filed a further amended defence and an amended cross-claim. 5 ResMed resists discovery on grounds of relevance and oppressiveness, that is to say, that the categories in dispute are not relevant for discovery purposes (see [40] below) to the issues raised on the FASOC, and to the extent that any of them are relevant for those purposes, it would be oppressive for ResMed to have to give discovery of them. 6 In accordance with a suggestion made by ResMed, I have decided to publish these reasons addressing, for the present interlocutory purposes only, certain questions of construction and other issues in the hope that the parties in the light of the reasons may yet be able to agree on the course to be followed. If they cannot do so, I will deliver the remaining instalment of the reasons and make orders. 7 I decide nothing finally on this interlocutory application. For one thing, I note that the Agreement is not to be construed in a vacuum, and I do not have before me evidence of the background against which it was entered into and which could bear upon its proper construction. However, I am required to form tentative views for the purposes of the exercise of my discretion on the discovery of the dispute.