Encompass Corporation Pty Ltd v InfoTrack Pty Ltd (No 1) [2016] FCA 1509

FEDERAL COURT OF AUSTRALIA

Encompass Corporation Pty Ltd v InfoTrack Pty Ltd (No 1) [2016] FCA 1509 File number: NSD 1689 of 2015

Judge: PERRAM J

Date of judgment: 13 December 2016

Catchwords: DISCOVERY – Non-standard and more extensive discovery – Standard discovery

Legislation: Patents Act 1990 (Cth) ss 7(1) and 18(1)(b)(i) Federal Court Rules 2011 (Cth) r 20.14

Date of hearing: 9 December 2016

Registry: New South Wales

Division: General Division

National Practice Area: Intellectual Property

Sub-area: Patents and associated Statutes

Category: Catchwords

Number of paragraphs: 10

Counsel for the Applicant: Mr A Lang

Solicitor for the Applicant: Gilbert + Tobin

Counsel for the Respondent: Ms C Cochrane with Mr B Mee

Solicitor for the Respondent: Shelston IP Lawyers Pty Ltd

ORDERS NSD 1689 of 2015

BETWEEN: ENCOMPASS CORPORATION PTY LTD Applicant

AND: INFOTRACK PTY LTD Respondent

JUDGE: PERRAM J DATE OF ORDER: 13 DECEMBER 2016

THE COURT ORDERS THAT:

1. On or before 27 January 2017, the Applicants/Cross-Respondents each give discovery in accordance with the following categories, by serving on the Respondent/Cross-Claimant a list of documents in accordance with Federal Court Rules 2011 (Cth) (FCR) r 20.17 (the First Applicant's List of Documents and the Second Applicant's List of Documents), verified by affidavit in accordance with FCR r 20.22: a. versions of the Encompass Workbook (as that term is defined in the Further Amended Statement of Cross-Claim) that are prior to Version 3.2; b. documents constituting or describing the provision or disclosure of any version of the Encompass Workbook, or any other document describing the features of the Encompass Platform or Encompass Visualisation Process (as those terms are defined in the Further Amended Statement of Cross-Claim) to any party other than either of the Applicants/Cross-Respondents prior to 26 March 2012; c. documents recording or evidencing the features of each version of the Encompass Platform or Encompass Visualisation Process that existed prior to 26 March 2012, including any version of the Encompass Platform or Encompass Visualisation Process demonstrated by or on behalf of Encompass to Peter Mullins or any other person from SAI Global in 2011 or otherwise prior to 26 March 2012; d. documents recording or evidencing any agreement between Encompass and SAI dated prior to 26 March 2012; e. documents recording or evidencing any agreement with any third party relating to the supply of data to Encompass or relating to access to any version of the Encompass Platform or Encompass Visualisation Process prior to 26 March 2012; f. invoices sent at any time to clients of Encompass and/or SAI for access to or use of any version of the Encompass Platform or Encompass Visualisation Process or for access to any report or provision of data by use of any version of the Encompass Platform or Encompass Visualisation Process prior to 26 March 2012; and g. standard discovery, within the meaning of FCR r 20.14, limited to the issues raised by the following paragraphs of the Further Amended Statement of Cross-Claim and Amended Defence to Further Amended Cross-Claim: i. paragraphs 24B, 24G, 88B and 88F, being the issue of whether, and the extent to which, recipients of the Encompass Workbooks prior to 29 November 2013 were free in law and equity to use or further disclose the information contained within them; and ii. paragraphs 26, 29, 90 and 92, being the issue of whether, and the extent to which, persons to whom the Encompass Platform (as that term is defined in the Further Amended Statement of Cross-Claim) was made available for use prior to 29 November 2013 were free in law and equity to use or disclose the information about the Encompass Platform they obtained by using it. 2. On or before 1 February 2017, the Respondent/Cross-Claimant give notice to the Applicants of the documents in the First Applicant's List Of Documents or the Second Applicant's List of Documents in respect of which the Respondent/Cross-Claimant requires copies. 3. On or before 3 February 2017, the Applicants provide to the Respondent/Cross-Claimant an unredacted copy of any document in respect of which the Respondent/Cross-Claimant has given notice pursuant to paragraph 2 of these orders. 4. The Applicants/Cross-Respondents pay the Respondent's costs of and incidental to this application. Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.