New South Wales Supreme Court CITATION : Probiotec Ltd v Afaras [2009] NSWSC 118 HEARING DATE(S) : 18 February 2009 JURISDICTION : Common Law JUDGMENT OF : Michael Grove J EX TEMPORE JUDGMENT DATE : 18 February 2009 DECISION : Motion dismissed CATCHWORDS : DISCOVERY - Issue whether solicitors knew potential costs would be substantial - Access sought to unrelated files of solicitors to impute knowledge - Doubtful relevance but extent of discovery sought oppressive CATEGORY : Procedural and other rulings PARTIES : Probiotec Limited - Plaintiff/Applicant Afaras representing Spruson & Ferguson - Defendant/Respondent FILE NUMBER(S) : SC 20153/07 COUNSEL : P Walsh - Plaintiff/Applicant M J Darke - Defendant/Respondent SOLICITORS : Church & Grace - Plaintiff/Applicant Ebsworths - Defendant/Respondent IN THE SUPREME COURT OF NEW SOUTH WALES COMMON LAW DIVISION MICHAEL GROVE J Wednesday 18 February 2009 20153/07 - PROBIOTEC LIMITED v AFARAS REPRESENTING SPRUSON & FERGUSON JUDGMENT 1 HIS HONOUR: There has been referred to me by the Registrar a notice of motion seeking an order for verified discovery of documents. The action which is on foot is between a former client of a firm of solicitors and a firm of solicitors. In the background of the matter, as evidenced by the amended statement of claim, was litigation conducted in the Federal Court concerning an infringement or invalidity of patent. 2 The claim by the moving party on the notice of motion is, in broad terms, a claim that his former solicitors did not heed instructions not to take an active part in the proceedings and, as one of the allegations of fact, it alleges at all material times those solicitors ought to have known, if the proceedings concluded against the interests of the present plaintiffs, there would be likely to be a substantial sum of costs payable and the evidence suggests that a sum of some substantial amount is likely to be claimed by the successful litigant in the Federal Court proceedings. 3 Focus has been placed upon par 9 of the amended statement of claim which, as I have indicated, asserts that at all material times the lawyers ought to have known any cost order would be for a substantial amount. 4 The statement of defence denies par 9 of the statement of claim in total. Consequently this motion seeks discovery by the defendant's solicitors of documents relating to other matters and for costs made in respect of proceedings for patent infringement or invalidity over a span of time up to the time of the conclusion of the Federal Court proceedings. 5 The basis of the application argued by Mr Walsh for the applicant/plaintiff is that, what better way - he asks rhetorically - of demonstrating the knowledge of the solicitors that they might be substantial than production of costs orders in relation to which they would be experienced and therefore have knowledge which would enable them to make estimates of costs and presumably advise their clients accordingly? 6 The documentation which is sought, of course, has nothing whatever to do with the retainer of the solicitors by the present plaintiffs. 7 Mr Darke for the defendant points out that all litigation is different. It extends over different periods of time, the complexities are different, and the costs which are likely to be involved would vary from case to case. In my view what is submitted by Mr Darke in that regard is self-evidently correct. 8 The first argument in opposition to the making of the order is that the production of the material could not be relevant to the fact in issue. The fact in issue, as I have indicated, is whether or not the defendants ought to have known the costs were likely to be substantial. The production of multiple files in relation to other matters would seem to me prima facie to be an extravagant way of seeking to obtain evidence on that issue. The first submission of the defendant is, by reason of the disconnection between this litigation and any other litigation on which the solicitors may have acted, that the material is not relevant to a fact in issue. 9 I think that is probably right but, on the assumption that I may be wrong in that view and that there might be some marginal relevance detectable in the production of a document, I turn to the alternative argument advanced, namely, that it would be oppressive to make this order. In that regard I have the affidavit of Christopher Gordon Smith sworn 16 February 2009. That affidavit indicates the extent of the likely files which would need to be produced and examined from off site in order to comply with the requirements for discovery sought by the plaintiff. 10 The plaintiff argues that it is not necessary to go to the extent of examining every page in the files, which are said to be upwards of 500, but, in the light of the breadth of the discovery which is sought, it would seem to me to be not beyond the bounds of possibility that the defendant would need to make a very substantial examination of the contents of the files. 11 Given the assumption which I have made, that there may be some marginal relevance in production of these documents, I am of the view that, on the evidence Mr Smith demonstrates, it would be unduly oppressive to make this order. 12 The motion is dismissed. Costs will follow the event and the plaintiffs will pay the defendant's costs of the motion. ********** DISCLAIMER - Every effort has been made to comply with suppression orders or statutory provisions prohibiting publication that may apply to this judgment or decision. The onus remains on any person using material in the judgment or decision to ensure that the intended use of that material does not breach any such order or provision. Further enquiries may be directed to the Registry of the Court or Tribunal in which it was generated.