Application by the Attorney General of NSW [2021] NSWSC 857

Supreme Court New South Wales

Medium Neutral Citation: Application by the Attorney General of NSW [2021] NSWSC 857 Hearing dates: 15 July 2021 Date of orders: 15 July 2021 Decision date: 15 July 2021 Jurisdiction: Common Law Before: Hamill J Decision: Orders made in accordance with amended short minutes of order provided by the Plaintiff – see [6] Catchwords: CIVIL LAW - order for evidence to be taken on commission - request by foreign court - no question of principle Legislation Cited: Evidence on Commission Act 1995 (NSW), ss 32 and 33 Cases Cited: Application of Monier Inc (2009) 76 NSWLR 158; [2009] NSWSC 986 Attorney General in and for the State of NSW [2012] NSWSC 341 Category: Principal judgment Parties: Attorney General of NSW Representation: Counsel: K Ng (Plaintiff)

Solicitors: Crown Solicitor's Office (NSW) (Plaintiff) File Number(s): 2021/193397 Publication restriction: Nil

Judgment 1. By summons filed 6 July 2021, the Attorney General for NSW makes an ex parte application for orders under ss 32 and 33 of the Evidence on Commission Act 1995 (NSW) ('the Act') to assist a foreign court to order the production of certain documents from a NSW company, Civi Corp Pty Ltd (ACN 093 539 201)("Civi Corp"). The Attorney General reads the affidavit of Jimmy Taing affirmed 6 July 2021 in support of the application which annexes a letter of request from the United States District Court for the Northern District of Texas Dallas Division ("the Requesting Court") and a draft subpoena to produce addressed to Civi Corp. 2. Section 32 and 33 of the Act are in the following terms: 32 Application to the Supreme Court for assistance in obtaining evidence for proceedings in other court (1) The following provisions of this Part apply if an application is made to the Supreme Court for an order for evidence to be obtained in the State and the Court is satisfied: (a) that the application is made in pursuance of a request issued by or on behalf of a court or tribunal exercising jurisdiction in a place outside the State, and (b) that the evidence to which the application relates is to be obtained for the purposes of proceedings which either have been instituted before the requesting court or whose institution before that court is contemplated. (2) This Part does not apply in respect of proceedings relating to the commission of an offence or an alleged offence unless the requesting court is a court of a place in Australia or of New Zealand. 33 Power of the Supreme Court to give effect to application for assistance (1) The Supreme Court has power, if an application is made under section 32, by order to make such provision for obtaining evidence in the State as may appear to the Court to be appropriate for the purpose of giving effect to the request in pursuance of which the application is made. (2) An order under this section may require a specified person to take such steps as the Court may consider appropriate for that purpose. (3) Without limiting the generality of subsections (1) and (2), an order under this section may, in particular, make provision as follows: (a) for the examination of witnesses, either orally or in writing, (b) for the production of documents, (c) for the inspection, photographing, preservation, custody or detention of any property, (d) for the taking of samples of any property and the carrying out of any experiments on or with any property, (e) for the medical examination of any person, (f) without limiting paragraph (e), for the taking and testing of samples of blood from any person. (4) An order under this section is not to require any particular steps to be taken unless they are steps that can be required to be taken by way of obtaining evidence for the purposes of proceedings in the Supreme Court (whether or not proceedings of the same description as those to which the application for the order relates). (5) Subsection (4) does not preclude the making of an order requiring a person to give testimony (either orally or in writing) otherwise than on oath if this is asked for by the requesting court. (6) An order under this section must not require a person: (a) to state what documents relevant to the proceedings to which the application for the order relates are or have been in the person's possession, custody or power, or (b) to produce any documents other than particular documents specified in the order and appearing to the court making the order to be, or likely to be, in the person's possession, custody or power. (7) A person who, because of an order under this section, is required to attend at any place is entitled to similar conduct money and payment for expenses and loss of time on attendance as is a witness in proceedings before the Supreme Court. 1. The evidence of Mr Taing establishes the preconditions under s 32 of the Act. The application is made pursuant to a request of the Requesting Court in relation to proceedings commenced in Texas, USA by the plaintiff, Pixmarx IP LLC ("Pixmarx") against the defendant, Snap Inc ("Snap"). Pixmarx claims that Snap infringed upon its registered patents over technology used to embed content into digital photographs ("the Texas Proceedings"). Snap claims that the patents are invalid and that the technology has been used since before the invention of the (Pixmarx's) patented technology in 2014. Civi Corp is a company which Snap claims has been using that technology since before 2014 in the form of a 'phone application called Solocator. 2. The Requesting Court, on behalf of Snap, requests production of various documents, videos, files, correspondence and patents in relation to the Solocator application listed in Exhibit A of the letter annexed to Mr Taing's affidavit (Annexure A) and reproduced in the subpoena to produce (Annexure B). This Court has power to issue the subpoena to produce under s 33(3)(b) of the Act and the orders are not precluded under s 33(4). I am satisfied that the orders do not require Civi Corp to state what documents are relevant to the Texas Proceedings and that the requested documents are sufficiently particularised and likely to be in the possession of Civi Corp: s 33(6) of the Act. [1] 3. The matter was listed for hearing on 15 July 2021 before me as the Common Law Duty Judge. On 14 July 2021, Counsel for the Attorney General made a request that the application be dealt with in Chambers. By way of email from my associate, I asked the Attorney General to consider "adding an order to the short minutes that makes it clear that the right of the recipient of the proposed subpoena to make any objection to production, based on privilege or otherwise, is preserved". An amended short minutes of order was filed in response including such an order (order 6 below) and I acceded to the applicant's request for the matter to be dealt with in Chambers. 4. The statutory pre-requisites having been established and the rights of Civi Corp being preserved, I made the following orders in Chambers: 1. Pursuant to s 33 of the Evidence on Commission Act 1995 (NSW), leave is granted to the Plaintiff to issue and serve a Subpoena to Produce on The Proper Officer, Civi Corp Pty Limited (ACN 093 539 201) ("Civi Corp Pty Limited"), in the form of Annexure 'A' to the orders of this Court ("the Subpoena to Produce"). 2. At the time of service of the Subpoena to Produce, the Plaintiff, or his legal representative, is to arrange for Civi Corp Pty Limited to also be served with copies of: 1. the Summons filed on 6 July 2021, 2. the affidavit of Jimmy Taing affirmed 6 July 2021 (including annexures), and 3. these orders of the Court. 1. Any documents produced pursuant to the Subpoena to Produce are to be certified by a Registrar of this Court as documents produced by Civi Corp Pty Limited in these proceedings. 2. The Plaintiff is granted photocopy access to any documents produced by Civi Corp Pty Limited in these proceedings. 3. The Plaintiff is granted leave to provide a copy of the documents produced pursuant to the Subpoena to Produce to the United States District Court for the Northern District of Texas Dallas Division. 4. The Court notes that the right of Civi Corp Pty Limited to apply to the Court to make any objection, based on any privilege or otherwise, to production pursuant to the Subpoena to Produce, is preserved.