Nanotech Industrial Solutions Inc v Nanoteko Pty Ltd [2020] NSWSC 1285

Supreme Court New South Wales

Medium Neutral Citation: Nanotech Industrial Solutions Inc v Nanoteko Pty Ltd [2020] NSWSC 1285 Hearing dates: On the papers Date of orders: 3 September 2020 Decision date: 22 September 2020 Jurisdiction: Common Law Before: Rothman J Decision: (1) Leave be granted to the plaintiff to issue Subpoenas to Give Evidence and Produce addressed to Jim Ellison and Max Rudman (the "witnesses") in the form annexed to the Summons (Subpoena to Attend to Give Evidence and Produce). (2) A sealed copy of these orders be served on the witnesses concurrently with service of the Subpoena to Attend to Give Evidence and Produce no later than 30 September 2020. (3) James Emmett of the New South Wales Bar (the "examiner") be appointed as examiner pursuant to r 24.3 of the Uniform Civil Procedure Rules 2005 (NSW) (the "UCPR"). (4) The plaintiff comply with r 24.7 of the UCPR. (5) The examiner conduct the examination at the offices of Garland Hawthorn Brahe Solicitors on a date to be allocated in 2021. (6) At the examination, oral examination (including cross-examination and re-examination, either in person or by video conference) of the witnesses be permitted to be conducted by the US counsel for the parties in Civil Action Number 2:18-CV-05214-SRC-CLW Nanoteko Pty Ltd – Plaintiff v. Nanotech Industrial Solutions Inc, Defendant pending before the District Court for the District of New Jersey in the United States of America (the "US Proceedings") on the following subject matter: (a) Max Rudman: (i) The agency agreement between Turbo Best (Asia) Ltd and Nantotech; (ii) Communications with employees or agents of Techonomics regarding the plaintiff's products; (iii) Initial contact with Mr Beville and Mr Hurwitz and the information provided about the plaintiff and its products; (iv) Reasons why Mr Rudman wished to enter into the agreement with the plaintiff; (v) Representations made by the plaintiff regarding reduction of emissions and fuel consumption; (vi) Mr Rudman's duties as a director of the defendant, including but not limited to his duties and responsibilities, involvement in product development, sales and marketing of NanoLub products; and (vii) Mr Rudman's knowledge of and experience with the lubricant industry including oils, greases and additives. (b) Jim Ellison: (i) Mr Ellison's duties and responsibilities whilst employed by the defendant and Techonomics; (ii) Mr Ellison's knowledge and involvement in product development, sales and marketing of NanoLub products; (iii) Mr Ellison's knowledge and involvement in product testing (including testing by Test Safe Australia, the Singleton Council and any other testing or proposed testing on NanoLub products); and (iv) Mr Ellison's knowledge of and experience with the lubricant industry including oils, greases and additives. (7) In respect of any document produced pursuant to the Subpoena to Attend to Give Evidence and Produce which access is granted (the "documents"), Brenden Miller of Garland Hawthorn Brahe Solicitors be at liberty to access, inspect and take copies of the documents produced to the Court for forwarding to the US counsel for Nanotech in the US proceedings. (8) All documents annexed or exhibited to affidavits and any other document as may be produced or filed by the plaintiff during the course of these proceedings and are claimed as confidential be prominently marked "CONFIDENTIAL". (9) The plaintiff not disclose or allow to be disclosed any such document marked "CONFIDENTIAL" or its contents or substance or any copies or extracts thereof to any other person other than: (a) The examiner (b) The plaintiff and its legal representatives; and (c) The witnesses and their legal representatives. (10) Matter be re-listed on 8 March 2021 for allocation of a date or dates for the examination. Catchwords: EVIDENCE – evidence on commission – letters of request issued from New Jersey court in USA – evidence for use in USA proceedings – foreign proceedings are civil – examiner appointed – documents to be produced and deposition evidence obtained by subpoena Legislation Cited: Evidence on Commission Act 1995 (NSW), ss 32, 33 Uniform Civil Procedure Rules 2005 (NSW), rr 24.3, 24.7 Cases Cited: Application by the Attorney-General for the State of New South Wales under the Evidence on Commission Act 1995 [2016] NSWSC 862 Jonathan Paul Eyewear, Inc [2015] NSWSC 134 Category: Procedural and other rulings Parties: Nanotech Industrial Solution Inc (Plaintiff) Nanoteko Pty Ltd (Defendant) Representation: Garland Hawthorne Brahe Solicitors (Plaintiff) Ex parte (Defendant) File Number(s): 2020/00234708