Application of Irwin Seating Company under the Evidence on Commission Act 1995 (NSW) [2018] NSWSC 918

Supreme Court New South Wales

Medium Neutral Citation: Application of Irwin Seating Company under the Evidence on Commission Act 1995 (NSW) [2018] NSWSC 918 Hearing dates: 14 June 2018 Decision date: 14 June 2018 Jurisdiction: Common Law Before: N Adams J Decision: See paragraph [30] Catchwords: EVIDENCE ON COMMISSION – Ex parte application before Court seeking orders under s 33(1) of the Evidence of Commissioner Act 1995 (NSW) – Letter of request from United States District Court for the Western District of Michigan Legislation Cited: Evidence on Commission Act 1995 (NSW), ss 32, 33 The Hague Convention on the Taking of Evidence Abroad in Civil or Commercial matters 847 UNTS 231 Uniform Civil Procedure Rules 2005 (NSW), rr 24.9, 24.14, 52.1 Cases Cited: Application of Computer Sciences Corporation under the Evidence on Commission Act 1995 (NSW) [2017] NSWSC 810 British American Tobacco (Investments) Ltd v Eubanks (2004) 60 NSWLR 483; [2004] NSWCA 158 Gredd v Arpad Busson [2003] EWHC 3001 Category: Principal judgment Parties: Irwin Seating Company (Plaintiff) (Ex Parte) Representation: Counsel: J Hogan-Doran (Plaintiff)

Solicitors: Shelston IP Lawyers Pty Ltd (Plaintiff) File Number(s): 2018/172068 Publication restriction: Nil

Judgment (revised from ex tempore) 1. By summons filed on 1 June 2018 the plaintiff, Irwin Seating Company ("Irwin") brings ex parte proceedings under the Evidence on Commission Act 1995 (NSW) ("the Act") seeking orders under s 33 that three persons be examined and produce specified documents to the Court. Applications under the Act are usually made ex parte in the first instance. 2. Irwin relies upon an affidavit of Anthony Garza, sworn on 31 May 2018, and Exhibit AMG-1, which includes, inter alia, a letter of request for international judicial assistance pursuant to the Hague Convention to permit trial testimony issued by the United States District Court for the Western District of Michigan. 3. The application came before me today in my capacity as Duty Judge. Mr Hogan-Doran appeared for Irwin in the proceedings. Mr Hogan‑Doran provided written submissions to the Court and also relied upon an affidavit of Irwin's solicitor, Stuart Hughes, dated 13 June 2018. A lengthy exhibit to that affidavit was also tendered (SJH-1) but Irwin only relies on correspondence annexed thereto on 7 and 13 June 2018. 4. The background to this application is set out in the affidavit of Mr Garza and can be summarised as follows. Irwin is presently being sued in the United States of America by an Australian company, Camatic Pty Ltd, and a company in the United States of America, Camatic Seating Inc (collectively "Camatic"), for an alleged breach of a US patent. Camatic is the holder of a US patent in relation to what is known as the "Quantum Line" of seating. Mr Garza is an attorney admitted to practise law in the State of Texas in the United States of America and is a partner at the law firm retained by Irwin in relation to those US proceedings. Irwin is defending the proceedings in the US. He relies upon the fact that, under US patent law, a Court may decline to enforce Camatic's patent rights if Camatic failed to name all of the true and only co-inventors of the invention that is the subject of the patent. As Mr Garza explains in his affidavit, such co-inventors include all persons who contribute to the conception of the invention. Such contribution must not be insignificant in quality when measured against the dimension of the full invention, but it is not necessary that the contribution be to the conception of all of the claims made about the invention. 5. Camatic has identified two co-inventors of the patent, Mr David Fisher and Mr Adam Fisher. It is Irwin's contention that there were other relevant co‑inventors who reside in Australia, those being, Lu Papi and his company Lu Papi & Associates, Mr Peter Cooper and Mr Warwick Brown. Mr Garza has included in his affidavit the basis of Irwin's belief as to the contribution made by these three persons to the patent. 6. On 14 February 2018, the US District Court granted a motion filed by Irwin, and on 15 February 2018, issued a letter of request for international judicial assistance pursuant to the Hague Convention to permit trial testimony ("the letter of request"). The letter of request seeks assistance under the Act in relation to the examination of and/or production of documents by Mr Papi, Mr Cooper and Mr Brown, and the production of documents from Lu Papi & Associates. 7. Mr Garza explains that, in accordance with the procedural requirements of the US District Court, the parties are required well before the trial to obtain the testimony of any third party witnesses who the Court cannot compel to attend trial by a deposition. The US District Court allows such deposition testimony taken during the discovery period to be presented at the hearing as evidence in lieu of live oral testimony. 8. Although the summons seeks the examination of three witnesses, Mr Hogan-Doran indicated at the hearing of this application today that the plaintiff now only seeks examination of one of those three witnesses. The reason for this arises from a recent development in the US proceedings which has created a potential complication in what it seems to me would otherwise be a relatively straightforward application. 9. The time allowed for the taking of pre-trial testimony in the US proceedings expired at the end of May 2018. Irwin filed a motion for extension of time but the US District Court has very recently refused to extend time on the basis that, inter alia, the New South Wales Supreme Court had not as yet decided to grant the orders or set a date for the hearing of the witnesses. Mr Hogan-Doran submitted that he has been instructed that if I was to make the orders today and set a date for any examination in the immediate future, it would be open to Irwin to file a further motion in the US Court referred to as a "motion for reconsideration" to extend the time for pre-trial testimony. 10. Mr Hogan-Doran indicated that in light of this recent development, Irwin now only seeks orders in relation to Mr Cooper. He informed the Court that Mr Lu Papi is presently overseas and is not expected back until late August. Given the short timeframe, the application in relation to his evidence is not pressed. In addition, Mr Brown is willing to give evidence, and no Court order is sought in relation to him either. The remaining witness is Mr Cooper. I was provided with correspondence sent by Irwin's solicitor to Mr Cooper. It confirms that there has been no reply to that correspondence, and Irwin is unaware of any reason for Mr Cooper's unwillingness to participate. 11. The basis for seeking to examine Mr Cooper is set out in Mr Garza's affidavit. Put briefly, Mr Cooper is an industrial designer who, between 1997 and 2011, was the managing director of Konstrukt Design Pty Ltd based in Sydney. That company was deregistered in 2017. Mr Cooper was contacted by Camatic in about 1998 to design the Quantum Line. He received a design brief from Camatic and provided a design proposal for the "new generation stadium seat". 12. He generated certain concepts and his invoices throughout the period confirmed his contributions to the project. In 2003, Mr Cooper gave an interview to a magazine in which he discussed designing the relevant product, and was supported in doing so by Lu Papi. 13. Before turning to consider whether the statutory requirements for making the orders sought have been met, it is first necessary for me to determine whether it is appropriate to consider the application in light of the fact that the relevant discovery period in the US has expired, the question being whether the making of the orders be futile. I have had regard to Mr Garza's affidavit concerning events since the letter of request was first issued on 15 February 2018. 14. On or about 22 February 2018, Irwin's Australian lawyers forwarded a copy of the letter of request to the Commonwealth Attorney General's Department. On about 6 March 2018, Irwin's lawyers forwarded original certified copies of the letter of request to that department. It was not until 27 April 2018 that a representative of the Attorney General's Department advised Irwin's Australian lawyers that Irwin may wish to commence proceedings directly in the Supreme Court of New South Wales for orders under the Act. Mr Hogan-Doran stated from the Bar table that there was apparently communication between the Commonwealth Attorney General's Department and the New South Wales Department of Justice in relation to this matter during that time. 15. The reason why Irwin's lawyers might have referred the letter of request to the Attorney-General arises from the terms of Uniform Civil Procedure Rules 2005 (NSW) ("UCPR") r 52.1 which sets out the procedure to be adopted in applications made under the Act. It provides that proceedings for an order under s 33 of the Act in relation to a matter pending before a requesting Court may be commenced in the Supreme Court either by a person nominated for that purpose by the requesting Court, or if no person is so nominated, by the Attorney-General. 16. I have had regard to the terms of the letter of request. It states that the person to whom the executed request is to be returned is Katrina Crooks who is Irwin's Australian solicitor. At page 11 of the request under the heading "Special Methods or Procedures to be Followed", the letter of request respectfully requests that pursuant to UCPR r 52.1(1)(a), Katrina Crooks be granted leave to commence proceedings for an order under s 33 of the Act. The letter of request also states that certain persons be notified of the examination, including Ms Crooks. 17. I have previously considered the question of whether a letter of request specified a particular person in the decision of Application of Computer Sciences Corporation under the Evidence on Commission Act 1995 [2017] NSWSC 810 at [33]-[46] and I have had regard to the principles referred to therein. 18. Given the terms of the letter of request, I am satisfied that Irwin's solicitor has standing to bring this application. That is no doubt why the New South Wales Attorney-General declined to bring this application. It is regrettable that the Attorney General's Department took over two months to point this out to Irwin's solicitors. The material before me suggests that, since 28 April 2018 when the Attorney General's Department indicated that it would not be bringing this application, Irwin has sought to extend the discovery period before the US Court but was unsuccessful on the basis that this Court has not as yet complied with the request. 19. Mr Hogan-Doran stated that the letter of request was extant to the extent that, when the Court refused to extend the discovery period, it did not revoke the letter of request. There is a degree of circularity in the present position faced by Irwin. Any order by this Court would be futile unless the US Court extends the time for discovery, whereas the US Court would not extend the time for discovery unless such an order was made. It was not suggested by Mr Hogan-Doran that if this Court made the orders sought, then the US Court would necessarily extend the discovery period. Despite this, it is open to Irwin's lawyers to approach the US District Court to reconsider its position if such orders were made. 20. The relevant legislative scheme is set out in Pt 4 of the Act which governs requests to the Supreme Court for taking evidence for the purpose of foreign civil or commercial proceedings. Part 4 of the Act enacts the provisions of the Hague Convention on the "Taking of Evidence Abroad in Civil or Commercial Matters" as a law of New South Wales. 21. In British American Tobacco (Investments) Ltd v Eubanks (2004) 60 NSWLR 483; [2004] NSWCA 158 at [42], Spigelman CJ cited the observations made by Burnton J in Gredd v Arpad Busson [2003] EWHC 3001 at [27] and considered that his Honour's approach should be adopted in Australia. The observations of Burnton J were as follows: "Comity requires this Court to view a letter of request issued by a foreign Court for the purpose of civil proceedings before it benevolently. It is our pleasure and duty to assist those Courts and the parties to them in arriving at a fair and just determination of their civil litigation where we can properly do so." 1. Similar observations have been made in other decisions to the same effect. That is, letters of request should be given effect to the fullest extent possible. 2. I have had regard to these principles and considered the procedural history of this matter. It seems to me that, presuming I was otherwise satisfied that the orders should be made, it is appropriate that Irwin be permitted to approach the US District Court to reconsider that Court's position in relation to the extension of the discovery period. If the US District Court is disinclined to extend the period further, then Mr Hogan-Doran has indicated that Irwin would return to this Court and seek to have any orders by this Court revoked. I am satisfied that in these circumstances it is appropriate to consider this application. 3. I turn then to consider the statutory requirements of the Act. Section 33 provides that, if an application is made under s 32, this Court may make an order making such provision for the obtaining of evidence in New South Wales as appears appropriate for the purpose of giving effect to the request. The Court's powers under s 33 include making orders for the examination of witnesses and the production of documents. I am satisfied that the application is made in pursuance of a request issued by or on behalf of a Court exercising jurisdiction in a place outside New South Wales pursuant to s 32(1)(a) of the Act. I have been provided with a copy of the request from the US District Court for the Western District of Michigan. 4. I am also satisfied that the evidence to which the application relates is to be obtained for the purposes of proceedings which have been instituted before the requesting Court as required by s 32(1)(b) of the Act. The evidence sought is material which goes to central allegations at the trial. As Mr Garza has set out in his affidavit, the topics for examination of Mr Cooper are directed at matters directly in issue at the trial in the US proceedings. 5. I am further satisfied that the overseas proceedings do not relate to the commission of an offence. Section 32(2) of the Act provides that Pt 4 does not apply in relation to proceedings concerning the commission of an offence unless the requesting Court is a Court of a place in Australia or New Zealand. 6. There are two restrictions on the orders that can be made under the Act. First, under s 33(4), I am to be satisfied that the orders relate to steps that this Court would be able to require in respect of local proceedings. The letter of request contains a list of the areas of inquiry. I am so satisfied. Second, s 33(6)(b) of the Act provides that an order must not require a person 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. I have had regard to that proposed list and based on the material contained in Mr Garza's affidavit, there is no basis to believe that those documents are not likely to be in Mr Cooper's possession, custody or power. 7. Turning to the orders sought, I note that an order is sought that the examination be conducted before a Registrar of this Court, or alternatively, an Associate Judge or Judge of this Court. The Registrar has a delegation to take evidence under UCPR r 24.9, and certify the transcript and take the necessary steps under UCPR r 24.14. In those circumstances, I see no reason why the examination could not be conducted by a Registrar of this Court. 8. In addition to the orders proposed in the short minutes of orders provided to me, I do propose to add an order that any examination not take place unless and until the US Court extends time for the taking of the relevant evidence.