FEDERAL COURT OF AUSTRALIA
Austin Engineering Pty Ltd v Podulova [2023] FCA 419
File number: WAD 83 of 2023 Judgment of: JACKSON J Date of judgment: 1 May 2023 Date of publication of reasons: 4 May 2023 Catchwords: PRACTICE AND PROCEDURE - intellectual property - alleged misuse of confidential and copyright information - orders sought for respondents to file and serve affidavits attesting to details of devices and networks which may contain applicant's confidential information - consideration of principles governing Norwich Pharmcal orders - orders sought made Cases cited: Anton Piller KG v Manufacturing Processes Ltd [1976] Ch 55
Authors Workshop v Bileru Pty Ltd (1989) 88 ALR 211
Computershare Ltd v Perpetual Registrars Ltd [2000] VSC 139; (2000) 1 VR 626
Hinchcliff v Jehad Abu-Dabat (1998) 41 IPR 400
Nexgen Sydney Pty Ltd v Barakat [2020] NSWSC 1169
Norwich Pharmacal Co v Commissioners of Customs & Excise [1974] AC 133
Orb ARL v Fiddler [2016] EWHC 361 (Comm)
Rugby Football Union v Consolidated Information Services Ltd (in liq) [2012] UKSC 55; [2012] 1 WLR 3333
Sega Enterprises Ltd v Alca Electronics [1982] FSR 516
Division: General Division Registry: Western Australia National Practice Area: Intellectual Property Sub-area: Copyright and Industrial Designs Number of paragraphs: 42 Date of hearing: 1 May 2023 Counsel for the Applicant: Mr JS Cooke SC with Mr S Hallahan Solicitor for the Applicant: HWL Ebsworth Lawyers Counsel for the First Respondent: Mr BJ Tomasi Solicitor for the First Respondent: Equitas Lawyers Counsel for the Second, Third, Fourth, Fifth, Sixth and Seventh Respondents: Mr TC Russell Solicitor for the Second, Third, Fourth, Fifth, Sixth and Seventh Respondents: Gilbert + Tobin ORDERS
WAD 83 of 2023 BETWEEN: AUSTIN ENGINEERING PTY LTD (ACN 078 480 136)
Applicant
AND: ANASTASIA PODULOVA
First Respondent
SCHLAM ENGINEERING PTY LTD (ACN 145 218 944)
Second Respondent
SCHLAM GROUP PTY LTD (ACN 616 770 122)
Third Respondent
(and others named in the Schedule)
ORDER MADE BY:
JACKSON J
DATE OF ORDER:
1 MAY 2023
BY CONSENT THE COURT ORDERS THAT:
1.By no later than 5.00 pm AWST on 15 May 2023, the first respondent must file and serve an affidavit that attests, to the best of the first respondent's knowledge, to:
(a)the storage devices as produced to the Court pursuant to paragraph 12 of the orders made on 20 April 2023 (20 April Orders);
(b)in respect of the Western Digital Elements SE branded electronic storage device referred to in paragraph 10(a) of the 20 April Orders:
(i)the reason(s) why the storage device has not been produced to the Court in accordance with paragraph 12 of the 20 April Orders;
(ii)the location of the storage device;
(iii)the date on which the storage device was last in the first respondent's control;
(iv)the contents of the storage device from 13 January 2023 by way of a description of:
A.the folders (i.e. folder names, description of contents of folders) copied from the applicant's computer network…
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- AGLC
- Austin Engineering Pty Ltd v Podulova [2023] FCA 419
- Case
- [2023] FCA 419
- Decision Date
CaseChat Overview and Summary
The court considered the principles established in previous cases, such as Norwich Pharmcal Pty Ltd v Commissioner for Patents, which allows for the disclosure of information to aid in the investigation of alleged patent infringements. The court noted that the principles could be extended to cases involving copyright and confidential information. The applicant argued that the information sought was necessary to investigate the alleged misuse of its intellectual property. The court accepted that the information was relevant and necessary for the applicant to pursue its claims.
The court made several orders, including requiring the respondents to file and serve affidavits detailing their IT systems. The orders specified the particulars that the affidavits must include, such as the details of computers, networks, storage devices, and accounts. The court also granted leave for the applicant to correct its name in the application and prohibited the publication of certain confidential annexures. The court stood over a particular paragraph of the application to a later date and reserved costs. The orders reflect the court's consideration of the principles governing Norwich Pharmcal orders and the necessity of the information sought for the applicant to investigate the alleged misuse of its intellectual property.
Orders
Orders of the court
2. By no later than 5.00 pm AWST on 15 May 2023, a director of each of the second to seventh respondents must file and serve an affidavit that attests, to the best of their knowledge or belief, to:
(a) the details of all computers and other electronic devices provided to the first respondent by or on behalf of one or more of the second to seventh respondents, including the make and model of any such computer or device;
(b) the identification of the owner and administrator of each computer network which the first respondent has had access to in performing services for or on behalf of one or more of the second to seventh respondents;
(c) the details of the username(s), profile(s) and/or account(s) assigned to the first respondent for the purposes of accessing any computers and electronic devices (referred to in sub-paragraph (a) above) and computer networks (referred to in sub-paragraph (b) above);
(d) the details of all external storage devices connected by the first respondent to any computer or other electronic devices (referred to in sub-paragraph (a) above) and the computer network (referred to in sub-paragraph (b) above) including the name and serial number identifying the external storage device, and the date(s) and time(s) of any such connection;
(e) the names of each of the email accounts provided to the first respondent by or on behalf of one or more of the second to seventh respondents and the identification of the owner and administrator of each of those email accounts;
(f) the names of the cloud storage accounts that the first respondent has had access to in performing services for or on behalf of one or more of the second to seventh respondents and the identification of the owner and administrator of each of those cloud storage accounts;
(g) the details of the 'comprehensive review' of IT systems referred to in the letter from Kennedy Vinciullo to HWL Ebsworth Lawyers dated 24 February 2023, including a description of the review and its methodology (including an identification of what was reviewed, how it was reviewed including any fields and keywords used for the searching), who undertook the review, the times and date(s) of the review and findings of the review; and
(h) the identity of the respondent(s) that employ the first respondent.
3. Pursuant to rule 8.21(1)(c) of the Federal Court Rules 2011 (Cth), the applicant has leave to file and serve an amended originating application correcting the name of the applicant from 'Austin Engineering Pty Ltd (ACN 078 480 136)' to 'Austin Engineering Ltd (ACN 078 480 136)'.
4. Paragraph 8 of the 20 April Orders is vacated.
5. Subject to paragraph 9 of the 20 April Orders and until further order, publication or other disclosure of Confidential Annexures KC-20, KC-28, KC-32, KC-33, KC-44, KC-45, KC-46, JO-3 and Confidential Exhibit AO-1 is prohibited pursuant to s 37AI of the Federal Court of Australia Act 1976 (Cth) on the ground set out in s 37AG(1)(a).
6. Until further order, the applicant has leave not to tender, file or otherwise provide to the Court confidential exhibit RM-2 of the affidavit of Rodney McKemmish sworn 17 April 2023.
7. Paragraph 15 of the originating application is stood over to 10.15 am AWST on 26 May 2023.
8. Costs reserved.
Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.
Background
Background to the litigation
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Evidence
Evidence Before The Court
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Decision
Reasons for decision
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Ratio Decidendi
Legal Principle Established
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