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. REASONS FOR JUDGMENT PERRAM J: 1 This proceeding is fixed for a three week trial commencing next year on Monday, 20 March 2017. A dispute has arisen between the parties about the provision of discovery by the Applicant to the Respondent. 2 The two patents in suit were referred to in the submissions of the parties as the 164 patent and the 413 patent. As part of its defence, the Respondent submits that both patents lack novelty when compared with the prior art base (cf. ss 7(1) and 18(1)(b)(i) of the Patents Act 1990 (Cth)). 3 There is a debate between the parties regarding the date from when the patents in suit are entitled to priority. The competing dates are 26 March 2012, on the one hand, and 20 September 2013 and 29 November 2013, on the other. 4 On the view that the correct date is 26 March 2012, the Respondent seeks discovery of specified categories set out in its proposed short minutes of order. On the view that it is the 2013 dates, it seeks standard discovery in relation to certain paragraphs of its cross-claim. The 26 March 2012 contentions 5 At the moment, the Respondent has identified a number of events prior to 26 March 2012 which it says resulted in information about the claimed invention being made publicly available. These are eight in number. On this basis, it says that its contention that its novelty argument might be made good is not frivolous. It therefore seeks discovery from the Applicant in relation to this issue. 6 Two things might be said against this submission. First, some of the identified events prior to 26 March 2012 may be said to be insubstantial. Secondly, it was said by the Applicant that in some cases it had already explained by means of sworn evidence that there were no documents to be discovered. 7 I do not accept either of these arguments. Some of the identified earlier events may indeed be insubstantial, but this is not so of the class considered as a whole. Hence I accept in principle the entitlement of the Respondent to discovery in relation to the period prior to 26 March 2012. I do not accept that the fact that the Applicant has already sworn that some of the categories will produce a nil return is a reason for not ordering discovery. Sometimes it is relevant to know that a category of document does not exist. The 2013 contentions 8 The Respondent contends that prior to 20 September 2013, the Applicant made information about the claimed invention publicly available in the relevant sense. The Applicant denies this on the basis that the recipients of the disclosed information were not free in law or equity to use or further disclose the information. 9 The Respondent seeks standard discovery in relation to that issue within the meaning of r 20.14 of the Federal Court Rules 2011 (Cth). The Applicant says that there are no such documents. For the reasons I have already given, I do not think this is a reason not to order discovery as sought. Conclusion 10 I make the orders sought in the Respondent's proposed orders. I certify that the preceding ten (10) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Perram. Associate: Dated: 13 December 2016