FEDERAL COURT OF AUSTRALIA Schutz DSL (Australia) Pty Ltd v VIP Plastic Packaging Pty Ltd (No 15) [2012] FCA 781 Citation: Schutz DSL (Australia) Pty Ltd v VIP Plastic Packaging Pty Ltd (No 15) [2012] FCA 781 Parties: SCHUTZ DSL (AUSTRALIA) PTY LTD (ACN 009 069 907), SCHUTZ GMBH & CO KGAA and PROTECHNA S.A. v VIP PLASTIC PACKAGING PTY LTD (ACN 095 313 705) and VIP STEEL PACKAGING PTY LTD (ACN 095 314 195) File number: WAD 136 of 2009 Judge: MCKERRACHER J Date of judgment: 24 July 2012 Catchwords: DISCOVERY – application for further discovery pursuant to r 20.15 of the Federal Court Rules 2011 (Cth) – application of principles governing further discovery – whether burden of compiling commercially sensitive sales 'summaries' including customer details outweighs benefit – whether further discovery is necessary to establish liability and provide further and better particulars – whether further discovery application is a 'fishing expedition' Legislation: Federal Court Rules 2011 r 20.15 Cases cited: Schutz DSL (Australia) Pty Ltd v VIP Plastic Packaging Pty Ltd (2009) 82 IPR 477 Schutz DSL (Australia) Pty Ltd (ACN 009 069 907) v VIP Plastic Packaging Pty Ltd (ACN 095 313 705) (No 4) [2009] FCA 1541 Schutz DSL (Australia) Pty Ltd v VIP Plastic Packaging Pty Ltd (No 14) [2011] FCA 1159 Date of hearing: 6 June 2012 Place: Perth Division: GENERAL DIVISION Category: Catchwords Number of paragraphs: 33 Counsel for the Applicants/Cross-Respondents: ML Bennett Solicitor for the Applicants/Cross-Respondents: Bennett + Co Counsel for the Respondents/Cross-Claimants: AR Lang Solicitor for the Respondents/Cross-Claimants: Gilbert + Tobin IN THE FEDERAL COURT OF AUSTRALIA WESTERN AUSTRALIA DISTRICT REGISTRY GENERAL DIVISION WAD 136 of 2009 BETWEEN: SCHUTZ DSL (AUSTRALIA) PTY LTD (ACN 009 069 907) First Applicant/Cross-Respondent SCHUTZ GMBH & CO KGAA Second Applicant/Cross-Respondent PROTECHNA S.A. Third Applicant/Cross-Respondent AND: VIP PLASTIC PACKAGING PTY LTD (ACN 095 313 705) First Respondent/Cross-Claimant VIP STEEL PACKAGING PTY LTD (ACN 095 314 195) Second Respondent/Cross-Claimant JUDGE: MCKERRACHER J DATE OF ORDER: 24 JULY 2012 WHERE MADE: PERTH THE COURT ORDERS THAT: 1. The applicants/cross-respondents' interlocutory application for further discovery filed 22 May 2012 be dismissed. 2. The applicants/cross-respondents do pay the respondents/cross-claimants' costs of the application to be taxed if not agreed. Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011. IN THE FEDERAL COURT OF AUSTRALIA WESTERN AUSTRALIA DISTRICT REGISTRY GENERAL DIVISION WAD 136 of 2009 BETWEEN: SCHUTZ DSL (AUSTRALIA) PTY LTD (ACN 009 069 907) First Applicant/Cross-Respondent SCHUTZ GMBH & CO KGAA Second Applicant/Cross-Respondent PROTECHNA S.A. Third Applicant/Cross-Respondent AND: VIP PLASTIC PACKAGING PTY LTD (ACN 095 313 705) First Respondent/Cross-Claimant VIP STEEL PACKAGING PTY LTD (ACN 095 314 195) Second Respondent/Cross-Claimant JUDGE: MCKERRACHER J DATE: 24 JULY 2012 PLACE: PERTH REASONS FOR JUDGMENT INTRODUCTION 1 The applicants/cross-respondents (Schutz) seek further discovery from the respondents/cross-claimants (VIP) pursuant to r 20.15 of the Federal Court Rules 2011 (FCR). In discussing this motion, abbreviations in these reasons are adopted from earlier reasons in Schutz DSL (Australia) Pty Ltd v VIP Plastic Packaging Pty Ltd (2009) 82 IPR 477 (Schutz 1) to Schutz DSL (Australia) Pty Ltd v VIP Plastic Packaging Pty Ltd (No 14) [2011] FCA 1159 (Schutz 14). 2 The Schutz application was originally sought in respect of three categories but in light of the VIP response indicating no documents are available in categories 2 and 3, the application is confined to a request for further discovery in the following category: Categories of Further Discovery by VIP 1 All documents recording the sale of Cross-Bottled IBCs; CB1 IBCs or CB2 IBCs by VIP; their agents; Related Bodies Corporate and/or licensees since January 2008. [Schutz] appreciate there may be a large number of documents in this category and are prepared to accept a summary document , verified by [VIP], containing the following information about each sale of Cross-Bottled IBCs; CB1 IBCs or CB2 IBCs by VIP; their agents; Related Bodies Corporate and/or licensees since January 2008: (a) date; (b) quantity; (c) customer; (d) specifications or description of IBCs; and (e) description of UN certification labelling affixed to label plate, if any. SCHUTZ CONTENTIONS 3 Part of the reasoning behind the application is said to be that VIP insists on provision of further particulars in relation to (amongst other things) the Schutz pleaded patent infringement claim at para 66 of the fourth further amended statement of claim filed on 5 October 2011 (FFASOC). VIP seek particulars of every infringing sale. Paragraph 66, which pleads as follows, relates predominantly to aspects of VIP's conduct which is within VIP's own knowledge: 66 During the effective term of the Patent, VIP have supplied, made, sold, or otherwise disposed of, offer to supply, make, sell or otherwise dispose of, or kept for the purpose of supplying, making, selling, or otherwise disposing of: 66.1 Cross-Bottled IBCs; 66.2 further or alternatively CB1 IBCs; and 66.3 further or alternatively CB2 IBCs and/or have authorised other persons to do such acts. Particulars of Patent Infringing Conduct Paragraphs 5, 12(c), 16, 17, 25, 26, 28 and 30 of the affidavit of Jacek Zygmund Bialobrzeski sworn on 17 August 2009, a Project Engineer and Consultant employed by the Second Respondent with approximately 30 years experience in the packaging industry, his extensive knowledge of the Australasian bulk container market and his familiarity with the products of VIP and their competitors, including: A. his admissions that cross-bottling is defined as 'remanufacture', as distinct from 'repair' or 'maintenance' under the UN Recommendations on the Transport of Dangerous Goods and the ADG Code, and that a cross-bottled IBC therefore requires full testing as if it is a newly manufactured IBC in accordance with the National Association of Testing Authorities accreditation requirements; B. his admission in paragraph 28 that 'VIP's cross bottled IBC using a Schütz exterior cage and Mauser bottle and manufactured at its in [sic] Sunshine West, Victoria, manufacturing plant'; and C. his admission in paragraph 30 and pages 70 and 80 of exhibit JZB-1 of 'a cross bottled DG IBC manufactured by VIP', and similar admission in paragraph 32 of cross bottled IBCs 'manufactured by VIP' using new Mauser bottles and used Schütz cages. Repeated and consistent admissions of VIP 'manufacturing' cross-bottled IBCs in paragraphs 3, 7(b), 10, 12, 14 and 16 of the third affidavit of Jacek Zygmund Bialobrzeski sworn 15 August 2009. Paragraph 18 of the affidavit of John David Christopherson sworn 18 August 2009, and exhibit JDC22 thereto which is a photograph of one of VIP's Cross-Bottled IBCs which has a sticker placed on the metal sheet forming part of the outer metal jacket, which displays the trade mark 'Visy Industrial Packaging' and the statement: 'We make it. We take it.' Paragraphs 27, 48 and 51 of the affidavit of Andrew Robert Smith, General Manager of the second respondent, sworn 17 August 2009, and Confidential exhibit ARS-2, including his admission in paragraph 48 that VIP was 'earning several thousand dollars per day from its sale of cross bottled IBCs and selling several hundred such units every month', and his estimate that 95% of those represented cross-bottled IBCs 'remanufactured by VIP using Schütz cages and Mauser bottles'. The admission in paragraph 66 of the Defence dated 19 November 2009 that [VIP] have 'cross-bottled and sold or supplied cross-bottled IBCs'. 4 Without the requested further discovery, Schutz argues that it is unable at present to provide the further particulars sought of the conduct of VIP. 5 As a matter of principle, it is common ground that a party must not apply for an order for discovery under the FCR unless the making of an order will facilitate the just resolution of the proceeding as quickly, inexpensively and efficiently as possible (r 20.11 FCR). Those requirements are satisfied in this instance, according to Schutz, for the following reasons: 1. The documents falling within the categories sought are directly relevant to a limited factual issue in dispute on the pleadings. 2. Discovery of documents falling within the categories sought is necessary to inform Schutz of the precise nature and instances of VIP's conduct, as the documents relate to matters wholly within VIP's own knowledge. 3. The categories sought are confined to a narrow scope and are not oppressive, particularly given VIP has been maintaining diligent and accurate records of its cross-bottling conduct since August 2009. 4. The documents now sought by Schutz do not fall within any of the existing categories for discovery annexed to Sch 2 to the orders made on 14 December 2010. 5. Schutz appreciates there may be a large number of documents in each category and is prepared to accept a summary document in each category verified by VIP. VIP will not be required to give discovery of a large number of documents. 6. The Schutz application for further discovery was foreshadowed in para 39 of the further and better particulars and raised in correspondence between the parties between February 2012 and April 2012. 7. The provision of further discovery at this stage of the proceedings will not cause significant disruption to the parties' preparation for trial given the recent extension of the time within which the parties must exchange their evidence and the distance from trial, listed to commenced 3 June 2013. 8. Giving discovery in the categories sought will facilitate the efficient conduct of the proceedings by obviating the need for Schutz to commence further more onerous procedures such as notices to admit or interrogatories. 6 It is clear that the documents sought are relevant to the proceeding. Indeed, the sales documents are at the heart of the proceeding. 7 The obvious concern of VIP about the provision of this material in summary form or otherwise, apart from the great burden in collating, is that, to the extent that any commercially sensitive information may be contained in the documents, the benefit of that information should not be supplied to a direct competitor without proper safeguards. Schutz argues that there are suitable safeguards. The documents within the category would be covered by the confidentiality regime set out in the orders made on 14 December 2010 which are to this effect and on their face appear to ensure that VIP's proprietary information remains confidential: Confidentiality 4. Where any party claims that a document produced by it in these proceedings requires special protection as a confidential document (Claimant), the document should be produced in the first instance (by the relevant date ordered by the Court or agreed by the parties and production should not await the determination of any claims for confidentiality) to the other parties on the basis that disclosure be restricted in accordance with the confidentiality orders in Schedule 1 and Schedule 2, unless otherwise agreed in writing between the parties (the Confidentiality Regime). 5. If a party disputes a claim for confidentiality in respect of a particular document (Disputed Document) it can request from the Claimant written reasons supporting its claim for confidentiality of the Disputed Documents (the Request), such reasons to be provided by the Claimant within 14 days of the Request. 6. If the Claimant fails to provide written reasons within 14 days of the Request to support its confidentiality claim for the Disputed Document, or the disputing party maintains its challenge to the confidentiality of the Disputed Document notwithstanding such reasons, the disputing party may serve a notice disputing the claim in respect of the Disputed Document (Notice of Dispute) on the Claimant. Any Notice of Dispute is to be served within 28 days of the Request. 7. The Confidentiality Regime will cease to apply to any Disputed Document 14 days after receipt of a Notice of Dispute in respect of the Disputed Document if no application is made to the Court in respect of the Disputed Document within 14 days. 8. Each of the parties has liberty to apply to the Court for orders in respect of the Confidentiality Regime on seven (7) days' notice. 8 Schutz argues that it is not only the fact of each sale which is relevant to the Schutz claim but also the question of VIP's ability to identify and record matters such as the specifications and UN certification markings of each cross-bottled IBC which have been cross-bottled, sold and supplied. Schutz suggests that VIP's records would show the manner and extent to which VIP staff have been trained and are able to distinguish between Schutz manufactured IBCs of differing design types and specifications. It is argued that this is directly relevant to the Schutz pleaded case at paras 29A to 39K of the FFASOC in relation to non-conforming IBCs. The claim is denied by VIP. In these paragraphs, Schutz contends that a lack of ability by VIP staff to identify and record different IBC design types would be probative of the Schutz case in relation to non-conforming IBCs. The essence of those paragraphs of the FFASOC is as follows: 29A Schutz Australia manufactures 136 different certified Dangerous Goods (DG) IBC articles, of varying design types and specifications, in the Schutz MX product family with a capacity of or around 1000L (MX1000 IBCs). … 29B Schutz Australia is certified by the Bundesanstalt für Materialforschung und - prüfung (Federal Institute for Materials Research and Testing) (BAM) to manufacture 21 different design types of DG MX1000 IBCs. … 29D Only Schütz DSL employees have the technical expertise to differentiate between the different DG MX1000 IBC design types and articles because: 29D.1 each DG MX1000 IBC article is allocated a specific alpha-numeric code by Schütz Germany; 29D.2 Schütz employees involved in the manufacture and repair of DG IBCs receive training from Schütz on how to identify, differentiate, manufacture and repair DG MX 1000 IBC design types and articles; and 29D.3 Schütz employees have access to Schütz' confidential internal records, containing information about the alpha-numeric code, manufacturing specifications and design type approval of each DG MX1000 IBC article. VIP obtains approval of Sample Cross-Bottled IBC for use in the transport and storage of dangerous goods 30 At all material times the effect of the Dangerous Good Legislation is and was that if an IBC approved in its original manufactured form is subsequently cross-bottled, its original approval is invalidated or otherwise ceases to have effect because the replacement inner rigid plastic blow-moulded container, having been manufactured by a different manufacturer, will result in the specification of the cross-bottled IBC differing from the sample IBC that was tested and approved for use in the transport and storage of dangerous goods. … 31 By virtue of the matters pleaded at paragraph 30 above, in circumstances where VIP intended to cross-bottle an approved Schütz IBC and thereafter offer the same for sale or supply, they were required to first obtain approval from the relevant Competent Authority to offer for sale or supply the cross-bottled Schütz IBC for use in the transport or storage of dangerous goods. … 34 At all material times amongst other things, Victorian Regulations require and required that: 34.1 a person must not apply any marking required by Part 6 of ADG7 on packaging if the packaging is not of a design approved under regulation 56 (regulation 54(1)); 34.2 an application for approval of a packaging design must, amongst other things, include the information required under Part 6 of ADG7 (regulation 55(3)(b)); 34.3 WorkSafe Victoria may, on application by a person in accordance with regulation 55, approve a design for packaging for use in the transport of dangerous goods if it is satisfied that a packaging of that design: 34.3.1 will comply with, or is permitted by, Part 6 of ADG7; and 34.3.2 satisfies all the relevant testing and inspection requirements set out in that Part (regulation 56(1)); 34.4 in giving its approval, WorkSafe Victoria may impose in relation to the approval any condition about the construction, packing, use or maintenance of a packaging manufactured in accordance with the design necessary for the safe use of the packaging to transport dangerous goods (regulation 56(3)). 35 … [I]t is an offence for a person to construct, pack or fail to maintain packaging for use in the transport of dangerous goods, or use packaging to transport dangerous goods, if the person knows, or ought reasonably to know that: 35.1 a condition about the construction, packing, maintenance or use of the packaging, as the case may be, was imposed in relation to the approval of the design for the packaging; and 35.2 the construction, packing, failure to maintain, or use is in contravention of the condition (regulation 56(4)). 36 In or around December 2008, VIP applied to WorkSafe Victoria for approval to manufacture a particular cross-bottled IBC for use in the storage and transport of dangerous goods, comprised of: 36.1 a used Schütz manufactured outer steel cage of certain specifications; and 36.2 a new VIP manufactured inner rigid plastic blow-moulded container of certain specifications, … 37 In or around December 2008, WorkSafe Victoria granted VIP approval under the number 30667 to manufacture, sell and supply cross-bottled IBCs identical to the Sample for use in the transport and storage of dangerous goods on the conditions that: 37.1 the approval was valid only to the extent that the quality of manufacturing and the specifications of the design type of IBC detailed in VIP's application and the Falcon Test Engineers test report remain unchanged; and 37.2 the results of the performance tests relate only to the Sample tested and that use of other packaging methods or components would render the testing invalid, … 38 Prior to 22 October 2009, VIP had not obtained approval from WorkSafe Victoria or any other Competent Authority to manufacture cross-bottled IBCs for use in the storage and transport of dangerous goods other than the WorkSafe 30667 Approval. 39 The specifications of the Sample upon which the WorkSafe 30667 Approval was conditionally based, amongst other things, stated to the effect that the inner rigid plastic blow-moulded container of the Sample had a tare mass of 17.5 kg +/- 500g. … 39A In or around October 2009, VIP applied to WorkSafe Victoria for approval to manufacture a particular cross-bottled IBC for use in the storage and transport of dangerous goods, comprised of: 39A.1 a used Schütz manufactured outer steel cage of certain specifications; and 39A.2 a new VIP manufactured inner rigid plastic blow-moulded container of certain specifications, with a tare mass of 15.5Kg +/- 500g. … 39B On or around 22 October 2009, WorkSafe Victoria granted VIP approval under the number 30746 to manufacture, sell and supply cross-bottled IBCs identical to the Second Sample for use in the transport and storage of dangerous goods (WorkSafe 30746 Approval) on the conditions that, inter alia: 39B.1 WorkSafe 30746 Approval is valid only to the extent that the quality of the manufacturing and the specifications of the design type of IBC detailed in VIP's application and the Falcon Test Engineers test report remain unchanged; 39B.2 any proposed change to the packaging design type must be authorised by WorkSafe Victoria upon application made in accordance with Regulation 56 of the Victorian Regulations; 39B.3 all packages showing this packaging design type approval number must conform in all respects to the Second Sample; and 39B.4 WorkSafe 30746 Approval has effect only when all conditions are complied with in full. 39C … [T]he operation of WorkSafe 30746 Approval is confined to any DG Cross-Bottled IBC conforming to the specifications of the Second Sample. 39D As a consequence of the lack of detail contained in test report 4859 as to the specifications of the Schütz MX-IBC design type, there is no practicable way for any third party consumer or user to confirm whether a cross-bottled IBC manufactured by VIP purportedly in conformance with the WorkSafe 30746 Approval does in fact conform with the Second Sample. 39E Further or in the alternative, by virtue of the matters pleaded at paragraphs 29A to 29E above, VIP employees do not possess the necessary knowledge or information to enable them to differentiate between the different DG MX1000 IBCs manufactured and sold by Schütz. 39F By virtue of the matters pleaded at paragraph 39D above, further or alternatively paragraph 39E above, there is a real and appreciable risk that VIP will manufacture and offer for sale to the public cross-bottled Schütz IBC's for use in the transport of dangerous goods that do not conform to the specifications of the Second Sample (Non-Conforming IBC) and consequently each of those Non-Conforming IBCs will not be certified for use in the transport of dangerous goods. … 39I Each time VIP sells or offers for sale a cross-bottled Schütz IBC for use in the transport of dangerous goods containing Certification Markings, it conveys the representation that the IBC is certified for use in the transport of dangerous goods by virtue of the operation of WorkSafe 30746 Approval (30746 Ambit Representation). 39J By virtue of the matters pleaded at paragraphs 39B to 39F above each time VIP sells or offers for sale a Non-Conforming IBC, the 30746 Representation will be false. 39K By virtue of the matters pleaded at paragraph 39K above, each sale of a Non-Conforming IBC by VIP will contravene section 52 of the TPA, further or alternatively section 53 (a) of the TPA, further or alternatively section 53 (c) of the TPA. (emphasis added) COUNTERVAILING CONSIDERATIONS 9 Issues of both oppression and confidentiality arise. VIP argues that the further discovery in category 1 should be refused having regard to: 1. the cost and time of giving the discovery being oppressive and the cost and time associated with creating a summary document being even more so; 2. the Court has previously refused to order discovery of substantially the same category; 3. issues of quantum and liability have been split; 4. there is no basis or reason for the discovery as a matter of liability; and 5. the discovery would include VIP's highly confidential customer information in circumstances where the Schutz have previously sought to obtain the information for the purpose of writing to those customers and the Court has refused to make such an order. Oppression 10 The evidence to support the VIP response is contained in affidavits of Mr Andrew Robert Smith of 17 August 2009, 18 June 2010 and 31 May 2012. As to the question of oppression, evidence from VIP indicates that the documents would number in the thousands and would be located across multiple VIP sites including the Sunshine Plant in Victoria, the Penrith Plant in New South Wales and the Eagle Farm Plant in Queensland. They would exist in multiple formats including electronic and hard copy format. The evidence shows that if an order to discover the documents were made, employees of each relevant site would be required to search for, identify and collate documents falling within the category and to view them to determine whether they do. It is anticipated that this step would take multiple weeks and would divert those employees from their usual duties at substantial cost to VIP. 11 The provision of the summary document does not alleviate the situation. It is said that the creation of a summary document would require even further work. Schutz has sought information as to the date, quantity, customer, specification or description of the IBCs and the description of the UN certification labelling affixed to the label plate. The provision of that information requires, as a first step, the same search for and review of the documents set out above. It would then involve the further task of preparing an analysis of those documents so as to produce the summary Schutz it requires. This would involve substantial further cost and time. Previous refusal 12 VIP contends that Schutz has previously sought discovery of all documents comprising or recording the sale, supply and/or distribution in the course of trade of cross-bottled IBCs by VIP, its agents, related bodies corporate and all licensees since January 2008 which discovery was refused in Schutz 14. VIP suggests that the category incorporates the same documents as are presently sought on which I ruled (at [45]) that 'discovery of documents such as sales records, purchase orders and invoices is clearly unnecessary and oppressive' (emphasis added). VIP submits that the present category suffers the same difficulties and Schutz has not attempted to demonstrate or even identify any change in circumstances. It is necessary, VIP contends, for Schutz to demonstrate with cogency and precision why the discovery is now necessary, yet it has failed to do so. Issue of quantum and liability split 13 VIP points out that the documents (or summary document) which Schutz seeks can only go to the question of quantum of VIP's cross-bottling and thus the extent of the breach and the extent of damage. For present purposes, however, VIP submits that access to such information is unnecessary in light of the bifurcation order having been made and the undertaking VIP has given to keep accounts. There is evidence from the last affidavit of Mr Smith that VIP is continuing to maintain proper accounts. As there are no issues going to quantum, VIP argues there is no apparent relevance of the documents to any issue presently falling for consideration. No liability basis 14 It is also contended for VIP that there is no liability basis for providing discovery. The point made by VIP is that Schutz has already particularised and filed evidence in support of para 66 for liability purposes of all particulars it can give, including particulars as to certain cross-bottled IBCs in its possession which Schutz has obtained from the marketplace. 15 Schutz has referred to photographs of cross-bottled IBCs annexed to the affidavits of particular Schutz witnesses in the proceeding. In addition, the parties have recently attended an inspection of the IBCs in question in Victoria as deposed to in the affidavit of Mr Christopher Williams, solicitor for VIP. 16 The evidence discloses that Schutz already has over 200 cross-bottled IBCs in its possession. No explanation has been given by Schutz how a summary document setting the quantum of IBCs cross-bottled by VIP is necessary or, indeed, of any assistance in order to resolve any matter in dispute in relation to para 66. Commercial sensitivity 17 It is common ground that the documentation is commercially sensitive as the discovery seeks information identifying customers of VIP. The disclosure of that highly commercially sensitive and confidential information ought not be lightly compelled in proceedings between direct competitors. 18 VIP relies on my observations in Schutz DSL (Australia) Pty Ltd (ACN 009 069 907) v VIP Plastic Packaging Pty Ltd (ACN 095 313 705) (No 4) [2009] FCA 1541 (Schutz 4) (at [16]) where I said: As against that, there is a real risk that if the orders which Schutz seeks are made, it will be given the significant advantage of opening its direct competitor's books and writing in unnecessarily alarming and implicitly critical terms directly to VIP's customers with the imprimatur of the Court. This is an advantage which would certainly not be lightly given. 19 VIP also points to the lengthy history of discovery applications in this proceeding set out in the chronology which is annexure A to these reasons. CONSIDERATION 20 I have difficulty seeing that provision of this information is necessary in relation to liability. Although the outstanding request by VIP for full particularisation of each instance of cross-bottling upon which Schutz rely remains standing, it does not follow that the case for Schutz would fail simply for failure to provide such particularisation in circumstances where primarily for grounds of oppression, VIP has declined to provide that information. 21 Of course if the case on liability succeeds, it is a different question altogether in relation to whether the discovery could be resisted in the context of a dispute about the quantum flowing from pleaded breaches of, in this case, patent infringement. 22 There may be a difficulty if Schutz had access to only a handful of the relevant IBCs but the uncontested evidence is that it has access to in excess of 200 IBCs which, it contends, support the breach. It is improbable, in any event, for the purposes of a liability hearing that it would be necessary to examine detailed evidence pertaining to each one of those IBCs, let alone literally thousands more which would need to be identified by discovery and, in turn, particularised by way of further particulars from Schutz. It seems to me that provision of such material is a totally arid exercise in which the burden would greatly outweigh any potential benefit. 23 There is a real and reasonable sensitivity about provision of the identity of customers in my view but Schutz argue that the identity of the customers is directly relevant to the controversial issue of who falls within the class of relevant consumers for the purposes of the Schutz claims pursuant to the Trade Practices Act 1974 (Cth). In that regard, para 54 of the FFASOC provides: 54 The General Representations are and were at all material times made by VIP to the following classes of persons: 54.1 viewers of VIP's website located at the URL www.vippackaging.com.au; 54.2 [Schutz'] customers and potential customers; 54.3 VIP's customers and potential customers; 54.4 reconditioners of IBCs; 54.5 consignors; 54.6 packers; 54.7 loaders; 54.8 prime contractors and rail operators; 54.9 drivers; and 54.10 purchasers and users of goods stored and transported in Cross-Bottled IBCs, further or alternatively CB1 IBCs, further or alternatively CB2 IBCs. 24 Schutz makes clear that the customers disclosed in the VIP records may themselves possess evidence of their dealings with VIP directly relevant to the issues in dispute. Schutz argues that the manner in which VIP conducted its cross-bottling business and the representations VIP made to its customers and prospective customers will be pertinent to the claims by Schutz. Schutz contends that those customers should be identified to Schutz to enable them to issue subpoenas to collect relevant evidence if necessary. 25 I am not satisfied that this is a proper justification for identifying customers. This justification for access to the customer records is a fishing exercise. No cogent basis is made out on the materials as to the likelihood of such customers being misled as a consequence of conduct of VIP. In circumstances where the investigations by Schutz have been very thorough, there would need to be clearer evidence that it is likely that the identity of all customers was of importance to this or any other aspect of the Schutz claim. As against that, the potential damage to VIP's reputation and goodwill is a greater risk which I do not consider is justified on the basis of the evidence as it stands. 26 I accept as clarified by Schutz that category 1 in express terms has not previously been refused. The finding made in Schutz 14 related to a broader category than category 1 sought in the current application. Category 1 was reframed and now requires only documents recording the sale of cross-bottled IBCs, CB1 IBCs or CB2 IBCs instead of 'comprising, recording or evidencing the sale, supply and/or distribution in the course of trade of those IBCs'. While category 1 incorporates documents that would have fallen within the category previously rejected it is confined in its scope and makes provision for discovery of summary document rather than all the documents falling within category 1. 27 Schutz argues that if the further discovery enables it to establish that VIP cannot distinguish between conforming IBCs, that is, those conforming to WorkSafe approval on the one hand and non-conforming on the other, that would assist Schutz in establishing its case in para 39F of the FFASOC. Schutz argues that VIP should not be sensitive about revealing its customers because Schutz has disclosed all details of its customers confident in the effectiveness of the confidentiality regime limiting the information to solicitors, counsel and experts who have signed appropriate undertakings. 28 I am not persuaded that Schutz needs this information in order to establish its case nor am I persuaded that the fact that Schutz has chosen to reveal its customer base necessarily means that VIP should be required to do so. Schutz has been the protagonist in this proceeding. It is by no means apparent to me at this stage what the outcome of the proceeding will be. Unless it were clearer that the only way Schutz could prove that some VIP customers were actually misled was by access to all of them, I do not consider that degree of information or documentary disclosure by VIP would be necessary or desirable. 29 As outlined above, given that Schutz already has access to over 200 of the units (and I am told by counsel for VIP without contradiction by counsel from Schutz that Schutz would be enabled to identify most or many of the VIP customers from those 200 units), this appears to me to be ample for the purpose of Schutz presenting its case on liability. 30 I am not persuaded that the equivocal position taken by VIP concerning whether it presses for full particulars is determinative of the issue. Ultimately, r 34.42(3) FCR makes it clear that it is not necessary to provide more than at least one instance of each type of infringement alleged. 31 Further, it is not apparent to me that the further discovery sought, in any event, by way of a summary list would illustrate how a member of VIP staff was able or unable to identify conformance or non-conformance as the case may be, regulatory compliance or non-compliance. CONCLUSION 32 I have taken some time to consider these matters. It is clear that Schutz is very anxious to access these materials and I have not wished to hamper its ability to present its case but I am satisfied that the arguments advanced by VIP in opposition to the unusual request for further discovery (given previous orders and previous discovery) must be preferred to the arguments of Schutz on this occasion. 33 For those reasons I must dismiss the application with costs. The orders will be: 1. The applicants/cross-respondents' interlocutory application for further discovery filed 22 May 2012 be dismissed. 2. The applicants/cross-respondents do pay the respondents/cross-claimants' costs of the application to be taxed if not agreed. I certify that the preceding thirty-three (33) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice McKerracher. Associate: Dated: 24 July 2012 ANNEXURE A Schutz DSL (Australia) Pty Ltd and Others v VIP Plastic Packaging Pty Ltd and Anor WAD 136 of 2009 Procedural Chronology – Discovery Date Event 30 November 2009 Discovery orders made by consent for discovery of documents by categories 18 December 2009 Categories for discovery served by VIP 8 January 2010 Categories for discovery served by Schutz 3 June 2010 Schutz files 'Application' for non-party discovery 14 June 2010 Schutz files notice of motion for non-party discovery 15 June 2010 Date for agreement of further discovery categories, additional categories received from Schutz 17 June 2010 Orders made to program hearing on disputed categories for discovery for 6 August 2010 9 July 2010 Schutz files further notice of motion for non-party discovery 23 July 2010 VIP files submissions in opposition to Schutz' motions for non-party discovery 6 August 2010 Hearing of four motions. Orders made for discovery in agreed categories by 8 October 2010 13 October 2010 Four judgments of McKerracher J on notices of motion, including refusing non-party discovery: Schutz DSL (Australia) Pty Ltd v VIP Plastic Packaging Pty Ltd (No 8) [2010] FCA 1108 1 November 2010 Discovery provided by VIP 30 November 2010 Discovery provided by Schutz 9 December 2010 Discovery provided by Schutz 14 December 2010 Hearing to determine comprehensive confidentiality regime. Orders made for immediate discovery prior to mediation before a Registrar by 28 February 2011 15 December 2010 Discovery provided by Schutz 13 May 2011 Orders for further discovery, including exchange of categories by 18 May 2011 and exchange of verified further lists of documents by 16 June 2011 7 June 2011 VIP files categories of documents sought for further discovery 7 June 2011 Schutz files categories of documents sought for further discovery 8 June 2011 VIP files submissions in support of notice of motion (3 June 2011) seeking orders that Schutz re-serve electronic discovery and provide further discovery 9 June 2011 Schutz files submissions in support of proposed minute of order for further discovery 16 June 2011 Schutz files submissions in opposition to VIP's application for further discovery 17 June 2011 VIP files submissions in opposition to the Schutz application for further discovery 20 June 2011 Hearing of both parties' motions for further discovery 11 October 2011 Judgment of McKerracher J (Schutz 14): (a) ordering Schutz to re-serve electronic discovery; (b) amending 14 December 2010 orders regarding redaction; and (c) otherwise declining orders for further discovery 2 December 2011 Consent orders regarding confidentiality application, particulars, discovery and exchange of evidence 6 February 2012 Schutz DSL, serves supplementary discovery in accordance with 2 December 2011 orders (partial) 17 May 2012 The Court extends the deadline for Schutz to provide further discovery 22 May 2012 Schutz serves an interlocutory application that VIP give further discovery by verified list of documents pursuant to r 20.21 FCR 25 May 2012 Schutz serves unverified supplementary discovery in accordance with 2 December 2011 orders as varied (partial)