Application by [24]7.ai, Inc [2018] NSWSC 171

Supreme Court New South Wales

Medium Neutral Citation: Application by [24]7.ai, Inc [2018] NSWSC 171 Hearing dates: 21 February 2018 Date of orders: 21 February 2018 Decision date: 22 February 2018 Jurisdiction: Common Law Before: Schmidt J Decision: Orders sought made. Catchwords: EVIDENCE – Evidence on Commission Act 1995 – request from US Court – ex parte application – orders sought made Legislation Cited: Evidence on Commission Act 1995 (NSW), Cases Cited: Application by 24/7 Customer, Inc [2017] NSWSC 1609 Application by 24/7 Customer, Inc (No 2) [2017 NSWSC 1708 Category: Principal judgment Parties: [24]7.ai, Inc (First Plaintiff) LivePerson Inc (Second Plaintiff) Representation: Counsel: RCA Higgins SC (First Plaintiff) P Strickland (Second Plaintiff)

Solicitors: Corrs Chambers Westgarth (First Plaintiff) Herbert Smith Freehills (Second Plaintiff) File Number(s): 2018/57786 Publication restriction: Nil

Judgment 1. In Application by 24/7 Customer, Inc [2017] NSWSC 1609 I made ex-parte orders under the Evidence on Commission Act 1995 (NSW), to permit evidence on oath to be obtained in this State, pursuant to a request issued on 31 October 2017, by the Hon. Kandis A. Westmore, a US Magistrate Judge of the United States District Court for the Northern District of California, United States of America, in respect of proceedings brought in the US Court by Live Person Inc, a competitor. The orders were amended in Application by 24/7 Customer, Inc (No 2) [2017] NSWSC 1708. 2. In the first judgment I explained how it was that the applicable statutory requirements had been satisfied on the evidence: at [9]-[10]. The evidence led in this case also addressed those requirements. 3. [24]7.ai, Inc., formerly 24/7 Customer, Inc and LivePerson, the parties to the US proceedings now seek further orders under the Evidence on Commission Act, following upon a further request issued on 18 January 2018 by the Hon. Kandis A. Westmore, in respect of the same proceedings, on their joint application. 4. The parties' application was supported by an affidavit sworn on 20 February 2018 by Mr Pagent, [24]7.ai, Inc's solicitor and an affidavit sworn that day by Ms Bergin-Fisher, LivePerson's solicitor. Annexed were copies of the US Court's letter of request and its attachments; a summary of the complaint made in the US proceedings; and other relevant documents. 5. From that material it emerged that although the request was made on 18 January 2018, these proceedings were not commenced until, 21 February, in circumstances where the deadline for the collection of the evidence was identified by the requesting Court to be 28 February. It, however, also requested that the examination of the proposed witnesses proceed "on 21,22 and 23 February, or as soon as practicable thereafter". 6. It was common ground between the parties that the proposed examination of the witnesses the subject of the request on nominated dates in March, that being as soon as it is practicable for that examination to take place, would cause no issue in the US proceedings, notwithstanding that it could not occur prior to 28 February. 7. The US Court's request was made in respect of three other former employees of Singtel Optus Pty Ltd, a Mr Harris, Mr Le Patourel and Mr Kichannagari, who have been identified as each also having relevant evidence to give about the matters in issue between the parties in the US proceedings. 8. In the first judgement I explained at [3] that [24]7.ai, Inc is the defendant in the proceedings brought in the US Court by Live Person Inc, a competitor. There in issue are claims of misappropriation or infringement of intellectual property; breach of contract; unlawful conduct; and wrongful interference in contractual relations. These claims are directed to the circumstances in which Optus, a former customer of LivePerson, Inc, became a customer of the Company". 9. The proposed witnesses have been given notice of the application. Advice has been received that they are all available on 7 to 9 March, when it is proposed that they be examined before Mr Justin Gleeson SC, who is then available to preside over the examination. It is also understood that Optus will have a representative of its internal legal team attend to observe those examinations. 10. This application is also governed by ss 32 and 33 of the Evidence on Commission Act. Section 32 relevantly provides: "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) …" 1. As I have explained, the evidence established that the requesting US Court had made a second request for evidence to be obtained from three further witnesses for the purposes of the proceedings still on foot before it in the US, to which the plaintiffs are parties. That satisfied the requirements of s32. 2. Section 33 relevantly provides: "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) .. (c) … (d) .. (e) .., (f) … (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. On the evidence I have discussed, I was also satisfied that the requirements of s33 had been satisfied and that the orders which the parties agreed should be made, notwithstanding that the examination cannot take place until the identified dates in March. 2. On the cases advanced by the parties, I was satisfied that despite this apparent difficulty, the orders will not be a futility and will still have the result that the US Court should, in the circumstances, have the benefit of the assistance which it has sought from this Court. 3. It was for these reasons that I made orders in terms which the parties agreed.