FEDERAL COURT OF AUSTRALIA ObjectiVision Pty Ltd v Visionsearch Pty Ltd (No 2) [2014] FCA 1146 Citation: ObjectiVision Pty Ltd v Visionsearch Pty Ltd (No 2) [2014] FCA 1146 Parties: OBJECTIVISION PTY LIMITED ACN 090 253 697 v VISIONSEARCH PTY LIMITED ACN 150 067 271 and UNIVERSITY OF SYDNEY ABN 15 211 513 464 File number: NSD 2433 of 2013 Judge: PERRY J Date of judgment: 28 October 2014 Catchwords: PRACTICE AND PROCEDURE – Application for preliminary discovery – No substantive question of law raised Legislation: Federal Court Rules 2001 (Cth), r 7.23 Cases cited: ObjectiVision Pty Ltd v Visionsearch Pty Ltd [2014] FCA 1087 Date of hearing: 27 October 2014 Place: Sydney Division: GENERAL DIVISION Category: Catchwords Number of paragraphs: 6 Counsel for the Prospective Applicant: Mr R Lancaster SC Counsel for the Prospective First Respondent: Mr C Stomo Counsel for the Prospective Second Respondent: Mr P Flynn IN THE FEDERAL COURT OF AUSTRALIA NEW SOUTH WALES DISTRICT REGISTRY GENERAL DIVISION NSD 2433 of 2013 BETWEEN: OBJECTIVISION PTY LIMITED ACN 090 253 697 Prospective Applicant AND: VISIONSEARCH PTY LIMITED ACN 150 067 271 Prospective First Respondent UNIVERSITY OF SYDNEY ABN 15 211 513 464 Prospective Second Respondent JUDGE: PERRY J DATE OF ORDER: 27 OCTOBER 2014 WHERE MADE: SYDNEY THE COURT ORDERS THAT: 1. On or before 24 November 2014, each of the Prospective Respondents give discovery of the documents set out in the Schedule to this order, save for the documents in categories 11, 12, 13, 15 and 16, in conformity with the requirements of rules 7.25 and 20.17 of the Federal Court Rules 2011 (Cth). 2. Subject to order 5, on or before 1 December 2014 the Prospective Respondents make available for inspection the documents identified in Categories 1 and 8 in the Schedule by each of them: (a) imaging and storing a complete copy of all documents falling within Categories 1 and 8 on an electronic storage device, including imaging and storing a complete copy of any source code repository, as referred to in those categories; (b) providing the electronic storage device to the Prospective Applicant's solicitors, together with any passwords protecting the data stored on the device. 3. Subject to order 5, on or before 1 December 2014 the Prospective Respondents produce to the solicitors for the Prospective Applicant for inspection the documents identified in Categories 2 and 9 in the Schedule by each of them providing a complete copy of such documents on an electronic storage device to the Prospective Applicant's solicitors, together with any passwords protecting the data stored on the drive. 4. Subject to order 5, on or before 1 December 2014 the Prospective Respondents produce to the solicitors for the Prospective Applicant for inspection all documents falling within Categories 3 to 7 inclusive, 10 and 14 in the Schedule. 5. Access to: (a) Documents discovered in Categories 1, 2, 8 and 9 in the Schedule, together with any electronic storage devices upon which copies of such Documents are stored pursuant to Orders 2 and 3; and (b) Documents discovered in any other Categories in the Schedule in respect of which a claim for confidentiality is made, be limited, until further order, to the solicitors and Counsel acting for the Prospective Applicant and any independent experts retained by the Prospective Applicant, each of whom must have signed first and provided to the relevant Prospective Respondent, and in respect of the expert to the Court, a confidentiality undertaking in a form to be agreed by the parties. 6. The orders made on 13 October 2014 are vacated nunc pro tunc. 7. The parties have liberty to apply on three days' notice. THE COURT NOTES THAT: 1. The parties will agree draft orders setting a timetable as to the filing of written submissions on costs, to be provided to the Judge's Associate and to be made by her Honour in chambers if possible. Date that entry is stamped: Deputy District Registrar SCHEDULE AMENDED CATEGORIES FOR PRELIMINARY DISCOVERY: VISIONSEARCH PTY LIMITED In these categories of documents for preliminary discovery: Accumap device means the Accumap 1 or Accumap 2 devices developed by Objectivision Pty Ltd. Biogen Idec Inc means that company and any subsidiary or related entity of that company. Document means any record of information which is a document within the definition of that term contained in the dictionary of the Evidence Act 1995 (Cth) and includes: (a) anything on which there is writing; or (b) anything on which there are marks, figures, symbols or perforations having a meaning for persons qualified to interpret them; or (c) anything from which sounds, images or writings can be reproduced with or without the aid of anything else; or (d) a map, plan, drawing or photograph. mfVEP device means a device for conducting multifocal visually evoked potential analysis. TERRA software means the software used by the Visionsearch Device and includes any software embodied in firmware Patents mean "Electrophysiological Visual Field Measurement PCT/AU99/00340" and international Patent Application PCT/AU01/00423 entitled "Method and Apparatus for Objective Electrophysiological Assessment of Visual Function" Visionsearch Device means the device currently named Visionsearch 1 (including the hardware, software and all peripherals comprising the device), but includes any other version of this device developed by or on behalf of Visionsearch Pty Ltd. Categories for Preliminary Discovery from Visionsearch Pty Ltd 1. The source code of the TERRA Software, including each historical version of the source code of the TERRA software as contained in the source code revision repository for TERRA software. 2. To the extent that the source code revision repository referred to in 1. above does not contain the source code as at any of the dates specified at (a) to (e) below, all Documents which comprise or record the TERRA source code for development versions as existed at these dates: (a) as at 1 July 2008; (b) as at 1 July 2009; (c) as at 1 July 2010; (d) immediately prior to 19 January 2011; (e) as at 11 July 2011 (each a "Development Version") 3. Documents that comprise or record the source code of the version of the TERRA software as it was embodied in the Visionsearch Device delivered to Biogen Idec Inc in October 2011. 4. Copies of the following Documents in relation to the TERRA software, or where not so entitled with a name the same or substantially the same as the "Typical Document Name", which comply with the "Description" set out below: Typical Document Name Description Software Requirements Specification A document or documents which define the function, requirements and composition of the software which is required to implement system functions defined in the system or device requirements specification. System Requirements Specification or Device Requirements Specification A document or documents which define all functional, performance, standards compliance, environmental and other requirements of the product, for use as the basis for system development and regulatory compliance. Software Design Manual or Software Implementation Description or Work Brief or Statement of Work A document or documents describing the chosen design approach and design intent for overall software architecture and for each software module or element, to be used to guide the software development process. Hardware Design Description A document or documents describing the hardware design and elements Software Design Description A document or documents describing the as-implemented software design. 5. All Documents which comprise or record each version of the user manual of the Visionsearch Device. 6. All Documents which comprise or record each version of the training manual of the Visionsearch Device. 7. All Documents which comprise or record: (a) the FDA 510K application; (b) the application for listing with the Therapeutic Goods Administration; (c) the application for CE Mark lodged with the European Medicines Agency; (d) Health Canada approval, in respect of the Visionsearch Device. Categories for Preliminary Discovery from University of Sydney 8. The source code of the TERRA Software, including each historical version of the source code of the TERRA software as contained in the source code revision repository for TERRA software. 9. To the extent that the source code revision repository referred to in 1. above does not contain the source code as at any of the dates specified at (a) to (e) below, all Documents which comprise or record the TERRA source code for the development version as existed at these dates: (a) as at 1 July 2008; (b) as at 1 July 2009; (c) as at 1 July 2010; (d) immediately prior to 19 January 2011; (e) as at 11 July 2011 (each a "Development Version") 10. Copies of the following Documents in relation to the TERRA software, or where not so entitled with a name the same or substantially the same as the "Typical Document Name", which comply with the "Description" set out below: Typical Document Name Description Software Requirements Specification A document or documents which define the function, requirements and composition of the software which is required to implement system functions defined in the system or device requirements specification. System Requirements Specification or Device Requirements Specification A document or documents which define all functional, performance, standards compliance, environmental and other requirements of the product, for use as the basis for system development and regulatory compliance. Software Design Manual or Software Implementation Description or Work Brief or Statement of Work A document or documents describing the chosen design approach and design intent for overall software architecture and for each software module or element, to be used to guide the software development process. Hardware Design Description A document or documents describing the hardware design and elements Software Design Description A document or documents describing the as-implemented software design. 11. All Documents dated between 1 July 2009 and 1 July 2011 prepared or received by University of Sydney for the purpose or in anticipation of seeking: (a) FDA approval; (b) listing with the Therapeutic Goods Administration; (c) a CE Mark with the European Medicines Agency; (d) Health Canada approval, in respect of any mfVEP device intended to be supplied to Biogen Idec Inc or any other party. Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011. IN THE FEDERAL COURT OF AUSTRALIA NEW SOUTH WALES DISTRICT REGISTRY GENERAL DIVISION NSD 2433 of 2013 BETWEEN: OBJECTIVISION PTY LIMITED ACN 090 253 697 Prospective Applicant AND: VISIONSEARCH PTY LIMITED ACN 150 067 271 Prospective First Respondent UNIVERSITY OF SYDNEY ABN 15 211 513 464 Prospective Second Respondent JUDGE: PERRY J DATE: 28 OCTOBER 2014 PLACE: SYDNEY REASONS FOR JUDGMENT 1 On 9 October 2014, I published my reasons for allowing in part the application for preliminary discovery by the prospective applicant, ObjectiVision Pty Ltd ("ObjectiVision"), under rule 7.23 of Federal Court Rules 2001 (Cth) against the prospective defendants, Visionsearch Pty Ltd ("Visionsearch") and the University of Sydney ("University"): ObjectiVision Pty Ltd v Visionsearch Pty Ltd [2014] FCA 1087 (ObjectiVision (No. 1)). Specifically I found that orders should be made for preliminary discovery with respect to documents relevant to the question of whether ObjectiVision should decide to commence proceedings against Visionsearch and the University for relief for copyright infringement and misuse of confidential information. I did not, however, consider that ObjectiVision had satisfied the prerequisites in r 7.23(1) for preliminary discovery with respect to the potential claim for an alleged breach of the Licensing Agreement between the University and ObjectiVision and therefore held that the discretion to make orders for preliminary discovery with respect to that potential claim for relief was not enlivened: see ObjectiVision (No. 1) at [98]-[99]. 2 I did not make orders giving effect to my reasons in ObjectiVision (No. 1) at the time of publishing my reasons, but made orders relevantly requiring the parties to file and serve agreed minutes of orders to give effect to my reasons within 21 days or, in the absence of agreement, written submissions as to their respective positions together with draft proposed minutes of order. 3 No orders giving effect to my reasons have yet been made. The University and ObjectiVision have been unable to agree minutes of order with respect to certain categories of documents, namely, categories 14(c) and (e), 15, 16, 18 and 19 of the amended application for preliminary discovery (renumbered as categories 11(a) and (b), 12, 13, 15 and 16 respectively in the schedule to ObjectiVision's proposed minutes of order) (the disputed categories). 4 Accordingly, the matter was relisted for a further short hearing on 27 October 2014. At the conclusion of that hearing I made orders for preliminary discovery against the University and ObjectiVision giving effect to my reasons in ObjectiVision (No. 1). Those orders, for the reasons set out below, do not require that preliminary discovery be given of the disputed categories. 5 In ObjectiVision (No 1) at [130] and [132], I found that preliminary discovery should be given of the disputed categories subject to certain amendments proposed by the University and marked up in a document provided by the University. I did so on the basis stated at [128] of my reasons that "Otherwise, [i.e. apart from the matters dealt with at [125]-[127] of my reasons] the University did not object to the width of preliminary discovery in the amended categories sought subject to the following matters." 6 However, the matter having been raised with the Court, it is apparent that the statement at [128] of my reasons misapprehended the University's position. The University's amendments to the disputed categories were proposed only in the event that the Court was against the University on ObjectiVision's entitlement to preliminary discovery with respect to the alleged breach of the Licencing Agreement. That being so, the disputed categories should not be included in the final orders for the following reasons. First, for the reasons given in ObjectiVision (No. 1) at [98]-[99], preliminary discovery is not justified with respect to the potential claim against the University for breach of the Licencing Agreement. Secondly, the disputed categories are not directly relevant to the other potential claims for breach of copyright or misuse of confidential information for the reasons given by me at [124] with respect to the equivalent categories of documents sought against Visionsearch. In this regard, Senior Counsel for ObjectiVision very properly accepted that no distinction could be drawn between the disputed categories and those considered in ObjectiVision (No. 1) at [124]. I certify that the preceding six (6) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Perry. Associate: Dated: 28 October 2014