Federal Court of Australia Vehicle Monitoring Systems Pty Limited v SARB Management Group Pty Ltd trading as Database Consultants Australia (No 7) [2021] FCA 142 File number: NSD 200 of 2019 Judgment of: BESANKO J Date of judgment: 25 February 2021 Catchwords: PRACTICE AND PROCEDURE — application for leave to issue a subpoena to produce documents — where witness gave evidence in advance of trial and later discovered additional materials that may be relevant — potential for documents to lead to applications with respect to further evidence and amendments to pleadings — documents not irrelevant by reason of case management issues including issues raised by proximity of trial — leave to issue subpoena granted Legislation: Federal Court Rules 2011 (Cth) rr 1.32, 1.34, 1.35, 24.01, 24.15 Cases cited: AON Risk Services Australia Ltd v Australian National University [2009] HCA 27; (2009) 239 CLR 175 Vehicle Monitoring Systems Pty Limited v SARB Management Group Pty Ltd trading as Database Consultants Australia (No 6) [2020] FCA 1866 Division: General Division Registry: New South Wales National Practice Area: Intellectual Property Sub-area: Patents and associated Statutes Number of paragraphs: 13 Date of last submissions: 22 February 2021 Date of hearing: Determined on the papers Counsel for the Applicant/Cross-Respondent: Mr R Cobden SC Solicitor for the Applicant/ Cross-Respondent: Johnson Winter & Slattery Counsel for the First Respondent/Cross-Claimant: Ms C Cunliffe Solicitor for the First Respondent/Cross-Claimant: Norton Rose Fulbright Australia Counsel for the Second Respondent: The Second Respondent did not appear ORDERS NSD 200 of 2019 BETWEEN: VEHICLE MONITORING SYSTEMS PTY LIMITED ACN 107 396 136 Applicant AND: SARB MANAGEMENT GROUP PTY LTD (T/A DATABASE CONSULTANTS AUSTRALIA) ACN 106 549 722 First Respondent CITY OF MELBOURNE Second Respondent AND BETWEEN: SARB MANAGEMENT GROUP PTY LTD (T/A DATABASE CONSULTANTS AUSTRALIA) ACN 106 549 722 Cross-Claimant AND: VEHICLE MONITORING SYSTEMS PTY LIMITED ACN 107 396 136 Cross-Respondent order made by: BESANKO J DATE OF ORDER: 25 February 2021 THE COURT ORDERS THAT: 1. The first respondent be granted leave to issue a subpoena to produce documents directed to Mr Peter Crowhurst. Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011. REASONS FOR JUDGMENT BESANKO J: 1 This is an application by the first respondent for leave to issue a subpoena under r 24.01 of the Federal Court Rules 2011 (Cth) (the Rules). The proposed subpoena is a subpoena to produce documents and is directed to Mr Peter Crowhurst. The applicant opposes the grant of leave under r 24.01. 2 The procedure adopted in this case is unusual and is the result of the somewhat unusual circumstances in which the application for leave is made and the fact that the trial in this proceeding is listed to commence on Monday, 22 March 2021. In the ordinary case, subject to exceptions not presently relevant, leave to issue the subpoena would be granted and the applicant would raise its objection to the subpoena by way of an application under r 24.15 to set aside the subpoena. The applicant's objection to the subpoena is that it is an abuse of process in the circumstances. Although the procedure adopted is unusual, I consider it justified in light of the proximity of the trial date (see rr 1.32, 1.34 and 1.35 of the Rules). 3 The context in which the present application is made is set out in my reasons in Vehicle Monitoring Systems Pty Limited v SARB Management Group Pty Ltd trading as Database Consultants Australia (No 6) [2020] FCA 1866 (Vehicle Monitoring v SARB Management (No 6)), in particular at [14] and [40]–[48]. 4 On 22 December 2020, I made the following orders, relevantly: 4. Leave be granted to file and serve a Second Further Amended Statement of Cross-Claim in the form advanced by the Cross-Claimant. 5. The matter be listed for the publication of reasons for interlocutory judgment on Monday, 11 January 2021. 6. The Cross-Claimant be granted leave to file and serve a Second Further Amended Statement of Cross-Claim by 23 December 2020, in the form signed by me and dated today's date. 7. The First Respondent be granted leave to file and serve a Further Amended Defence by 23 December 2020, in the form signed by me and dated today's date. 8. The First Respondent/cross-Claimant pay any of the Applicant's/Cross-Respondent's costs thrown away by reason of the amendments in the Second Further Amended Statement of Cross-Claim and/or Further Amended Defence. 9. The Cross-Respondent be granted leave to file and serve any lay or expert evidence in answer to the Second Further Amended Statement of Cross-Claim by 19 February 2021. 5 A solicitor in the firm acting for the first respondent (Mr Harrison Ottaway) has deposed to the fact that on 13 January 2021, he received an email from Mr Crowhurst in which Mr Crowhurst stated: (1) he had discovered additional archived materials over the Christmas break that he considered to be of material value to his evidence; (2) the additional materials included digital files supporting his written notes and a physical artefact; and (3) he was prepared to make these materials available for inspection. 6 On 14 January 2021, Mr Ottaway received a phone call from Mr Crowhurst during which Mr Crowhurst repeated the matters set out in his email of 13 January 2021. Mr Ottaway states that neither his firm nor his client were aware of the additional materials when Mr Crowhurst was examined on 25 November 2020 or at the time the first respondent filed its Second Further Amended Statement of Cross-Claim on 22 December 2020 or before January 2021. 7 The applicant opposes a grant of leave to issue the subpoena and it relies on the fact that the trial is to take place shortly and that the first respondent was granted leave to amend to raise the issue of entitlement on the basis that it had advised the applicant that it would not rely on any additional material other than the evidence of Mr Crowhurst identified in the correspondence from its solicitors dated 30 November 2020 and 9 December 2020 respectively (see Vehicle Monitoring v SARB Management (No 6) at [4]). 8 Each party advanced short written submissions in support of their contentions. 9 The applicant submits that Mr Crowhurst is firmly in the first respondent's camp. It is true that it seems he is cooperative with the first respondent and he has a belief about his role in the creation of the invention, but I am not prepared to draw the inference that he is in the first respondent's camp from the matters which the applicant identified in its written submissions. 10 The applicant submits that Mr Ottaway has not provided an explanation from Mr Crowhurst as to why he had not discovered the additional materials earlier. That is true, but even if the oversight was careless, it is not conduct to be attributed to the first respondent. 11 The applicant submits that Mr Crowhurst's description of the documents in an email to Mr Ottaway dated 14 January 2021 suggests that they may be substantial and may possibly lead to a new novelty argument. These are matters for obvious concern with the trial only weeks away and I examined the first respondent's written submissions with care to see what it said about how it might deploy any documents produced pursuant to the subpoena. It said the following: 7 VMS also complains that SARB had previously indicated that it would not seek to file further evidence (VMSS [4]). It may be accepted that SARB gave this indication, in circumstances where it was not aware of the existence of any further documents (and had no reason to believe any further relevant documents existed). But SARB may be able to deploy the 'materially relevant' documents without filing further evidence – for example, by putting them to Mr Fraser Welch, the purported inventor, in cross-examination. 8 Essentially, VMS' submission is that the Court should shut out SARB from having access to documents which are potentially highly material to matters in issue because VMS says SARB should have sought them earlier, despite the evidence that SARB was not aware of their existence earlier and the fact that there is no reason to think that they would have been produced earlier had they been sought. That submission should not be accepted. 9 SARB says that, in light of the undisputed evidence that the documents are likely to be materially relevant to pleaded issues, and that their existence was only recently discovered, the subpoena should be granted. The timetable for compliance with the subpoena should be expedited in view of the looming trial date. SARB will treat any documents received from Mr Crowhurst in response to the subpoena as confidential to VMS in accordance with the confidentiality regime set out in the orders of his Honour Justice Besanko dated 10 December 2020. (Footnote omitted.) 12 The applicant referred to the principles of case management set out in AON Risk Services Australia Ltd v Australian National University [2009] HCA 27; (2009) 239 CLR 175 and submits that they are relevant, not only to applications for leave to amend pleadings, but also to other applications which have the potential to disrupt, for example, an orderly trial. I agree that the principles are generally relevant. I also agree that the history of the proceeding is relevant and I have had regard to the history of the proceeding as summarised in paragraphs 3 and 4 of the applicant's written submissions. It seems to me that the nub of the applicant's concern about the subpoena is that further documents will lead to further evidence and possibly applications to amend the pleadings. That is an understandable apprehension on the applicant's part, but it seems to me that the following facts support a grant of leave to issue the subpoena: (1) Mr Crowhurst has overlooked producing documents which may be relevant; (2) that has not involved fault on the part of the first respondent; (3) the documents do not become irrelevant by reason of case management issues, including those issues raised by the proximity of the trial; (4) case management issues may be relevant, even highly relevant, on any application as to the use of any of the documents produced pursuant to the subpoena; and (5) the fact that absent the subpoena, the position will be that Mr Crowhurst has produced some, but not all the documents that it seems ought to have been produced at his examination on 25 November 2020. 13 In all the circumstances, it is appropriate to grant leave to issue the subpoena directed to Mr Crowhurst. I certify that the preceding thirteen (13) numbered paragraphs are a true copy of the Reasons for Judgment of the Honourable Justice Besanko. Associate: Dated: 25 February 2021