Martino v The Mac Services Group Limited [2009] FCA 546

FEDERAL COURT OF AUSTRALIA

Martino v The Mac Services Group Limited [2009] FCA 546

DISCOVERY – categories of discoverable documents in proceeding involving patent –where documents potentially relevant to question of inventive step under s 7(2) and (3) of Patents Act 1990 (Cth) – whether Court has power under O 15 to order discovery of limited categories of documents not necessarily satisfying criteria in O 15 r 2(3) Held: order for discovery made – Court has power to order discovery in accordance with limited categories proposed.

Patents Act 1990 (Cth) s 7, s 18 Federal Court Rules O 15 rr 2, 3, 8, 15, O 29 r 2, O 35, r 10A Australian Competition & Consumer Commission v Advanced Medical Institute Pty Ltd [2005] FCA 366 cited Aveling v UBS Capital Markets Australia Holdings Ltd [2005] FCA 415 cited Egglishaw v Australian Crime Commission (No 2) (2009) 253 ALR 354 cited The Compagnie Financiere et Commerciale du Pacifique v The Peruvian Guano Co (1882) 11 QBD 55 referred to FRANCESCO ANTONIO MARTINO v THE MAC SERVICES GROUP LIMITED (ACN 003 657 510)

SAD 45 of 2008

BESANKO J

27 MAY 2009

ADELAIDE

IN THE FEDERAL COURT OF AUSTRALIA

SOUTH AUSTRALIA DISTRICT REGISTRY SAD 45 of 2008

BETWEEN: FRANCESCO ANTONIO MARTINO

Applicant

AND: THE MAC SERVICES GROUP LIMITED (ACN 003 657 510)

Respondent

JUDGE: BESANKO J

DATE OF ORDER: 27 MAY 2009

WHERE MADE: ADELAIDE

THE COURT ORDERS THAT:

1. The applicant give discovery of all documents in its possession, custody or control in the categories listed below: Category 1: All documents that will be relied upon by the claimant to support the claim of patent infringement. Category 2: All documents that disclose, describe or note buildings and/or transportable structures that have a frame connected to and extending around a plurality of elongate beams where said frame is adapted to support a side wall of the building or structure. This request is limited to documents that fall within (a)(i) of the definition of 'prior art base' in Schedule 1 to the Patents Act 1995, i.e. documents publicly available before 28 April 2003, and documents that describe or disclose buildings and/or transportable structures that were made before 28 April 2003 and which fall within (a)(ii) of the said definition. Category 4: Documents that disclose, describe or note buildings and/or structures that have or had the following features: (i) at least two elongate spaced apart load-supporting I-beams disposed parallel to the longitudinal axis; (ii) each I-beam having a top flange and bottom flange connected by a web and respective front and rear ends; (iii) a plurality of elongate beams extending laterally across the top flange of both I-beams adapted to support a floor of the building or structure. (iv) a pair of spaced apart longitudinal channels extending through the web of each I-beam for engagement with forks of a forklift for lifting the building or structure. This request is limited to documents that fall within (a)(i) of the definition of 'prior art base' in Schedule 1 to the Patents Act 1995, i.e. documents publicly available before 28 April 2003, and documents that describe or disclose buildings and/or transportable structures that were made before 28 April 2003 and which fall within (a)(ii) of the said definition. Category 5: Inventors books, inventors notes, and all other documents created during the time of inventing and that relate to the invention claimed in AU2003227102 or PCT/AU2003/000947 Category 6: All documents that fall within (a)(i) of the definition of 'prior art base' in Schedule 1 to the Patents Act 1995, i.e. documents publicly available before 28 April 2003, and documents that describe or disclose buildings and/or transportable structures that were made before 28 April 2003 and which fall within (a)(ii) of the said definition listed or referred to in patent search reports pertaining to the applicant's invention claimed in AU2003227102, whether they be search reports of a Patent Office, or by a patent attorney firm or patent search company and all such reports which list or refer to matter falling within the definition of 'prior art base'. This category is limited to documents that disclose buildings or structures that have or had the following features: (i) a longitudinal chassis or frame including two elongate spaced apart load-supporting I-beams disposed parallel to the longitudinal axis; (ii) each I-beam having a top flange and bottom flange connected by a web and respective front and rear ends; (iii) a plurality of elongate beams extending laterally across the top flange of both I-beams adapted to support a floor of the building or structure. Category 7: All documents describing or disclosing a building described in the background to the invention section of AU2003227102 or PCT/AU2003/000947 including specifically buildings (rectangular or otherwise) which prior to the priority date were lifted by crane as described in the background to the invention and that were made before April 28 2003.