Axent Holdings Pty Ltd v Compusign Australia Pty Ltd [2017] FCA 1077

FEDERAL COURT OF AUSTRALIA

Axent Holdings Pty Ltd v Compusign Australia Pty Ltd [2017] FCA 1077 File number: VID 1408 of 2016

Judge: KENNY J

Date of judgment: 11 September 2017

Catchwords: PRACTICE AND PROCEDURE – Application for discovery – Orders for discovery made.

Legislation: Patents Act 1990 (Cth)

Cases cited: Belegging-en Exploitatiemaatschappij Lavender BV v Witten Industrial Diamonds Ltd [1979] FSR 59 Mulley v Manifold (1959) 103 CLR 341

Date of hearing: 4 September 2017

Registry: Victoria

Division: General Division

National Practice Area: Intellectual Property

Sub-area: Patents and associated Statutes

Category: Catchwords

Number of paragraphs: 53

Counsel for the Applicant: S K Gatford

Solicitor for the Applicant: Comlaw Barristers and Solicitors

Counsel for the Respondents: C H Smith

Solicitor for the Respondents: Rankin & Co

ORDERS VID 1408 of 2016

BETWEEN: AXENT HOLDINGS PTY LTD (ACN 096 387 370) T/A AXENT GLOBAL Applicant

AND: COMPUSIGN AUSTRALIA PTY LTD First Respondent

HI-LUX TECHNICAL SERVICES PTY LTD Second Respondent

COMPUSIGN SYSTEMS PTY LTD Third Respondent

AND BETWEEN: COMPUSIGN AUSTRALIA PTY LTD (ACN 070 157 925) (and another named in the Schedule) First Cross-Claimant

AND: AXENT HOLDINGS PTY LTD Cross-Respondent

JUDGE: KENNY J DATE OF ORDER: 11 SEPTEMBER 2017

THE COURT ORDERS THAT:

1. By 4:00pm on 25 September 2017 each of the respondents give standard discovery in accordance with Rules 20.14, 20.16 and 20.17 of the Federal Court Rules of documents that evidence from 2 December 2010:- (a) the promotion, sale or supply by any one of them of any variable speed limit sign or lane use sign; (b) the maintenance or repair by any one of them of any variable speed limit sign or lane use sign; (c) any authorisations or instructions given by any one of them as to the use by others of any variable speed limit sign or lane use sign; and (d) all documents that any respondent asserts to be an authorisation in writing given to them by an authority of a State for the services of that State under section 163(2) of the Patents Act 1990 (Cth). 2. The Court excuses compliance with order 1(a) and (b) if it is the case that numerous contracts have been entered into in the same or substantially the same terms, in which case the relevant respondent must provide, in place of copies of each contract, a verified list setting out for each such contract the following information:- (a) one complete contract whose terms are representative of all contracts of that kind; (b) the date of all such similar contracts; (c) the identity of all parties to all such contracts; and (d) the number of items supplied, repaired or maintained under each such contract and the date or dates of each supply, repair or maintenance undertaken pursuant to that contract. 3. The Court excuses compliance with order 1(c) if it is the case that numerous authorisations or instructions have been given in the same or substantially the same terms, in which case the relevant respondent must provide, in place of copies of those authorisations or instructions, a verified list setting out for those authorisations or instructions the following information:- (a) one complete authorisation or instruction whose terms are representative of all authorisations or instructions of that kind; (b) the date of all such similar authorisations or instructions; (c) the identity of all persons to whom all such authorisations or instructions were given; and (d) the product to which each such authorisation or instruction related. 4. The Court excuses compliance with order 1(d) in the case of any respondent that has by now provided Axent with a copy of all documents that that respondent asserts to be an authorisation in writing given to it by an authority of a State for the services of that State under section 163(2) of the Patents Act 1990 (Cth) and, in that event, directs that that respondent confirm on oath that it has in fact provided Axent with copies of all such authorisations given to it by an authority of a State. 5. Unless a party notifies the Court in writing by 4:00 pm on 14 September 2017 that it opposes this order as to costs, the respondents pay the applicant's costs of and incidental to the obtaining of these orders. Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.