CCOM Pty Ltd v Jiejing Pty Ltd

[1992] FCA 626

C A T C H W O R D S 1

Practice and procedure - Notice to produce under Order 33 Rule 12 Federal Court Rules - service of notice - non-production of source code - consequences of non-production - whether effect as a subpoena for production - whether compliance mandatory - discretion to excuse the production of material.

Order 33 Rule 12 Federal Court Rules.

1 SEP 1992

CCOM PTY. LTD. AND RONALD HOWARD THOMAS v. JIEJING PTY. LTD. ,

PARAVET INSTRUMENTS P m . LTD..	ALLAN GARNHAM.	JEFFWY JOHN
YATES. ERIC RUSSELL CHAPPELL
No. G124 of 1991

Cooper J.. Brisbane. 21 Auaust. 1992

RECEIVED

IN THE FEDERAL COURT OF AUSTRALIA

QUEENSLAND DISTRICT REGISTRY	\
GENERAL DIVISION	No. G124 of 1991
BETWEEN:

CCOM PTY. LTD. and RONALD HOWARD THOMAS

ADDlicants

AND:  JIEJING PTY. LTD.

First Respondent

W :  PARAVET INSTRUMJ3NTS PTY. LTD.

Second Res~ondent

m:  ALLAN GARNHAM

Third Respondent

m:  JEFFREY JOHN YATES

Fourth Respondent

AND:  ERIC RUSSELL CHAPPELL

Fifth Respondent

MINUTES OF ORDER

JUDGE MAKING ORDER:	Cooper J.
WHERE MADE:	Brisbane

m:	21 August, 1992
THE COURT ORDERS:

The respondents other than the third respondent are not required to produce to the court in compliance with the applicant's notice to produce so much of the source codes of the Jiejing computer programs as does not relate to instructions leading to the identification of the entry point of a stroke character category in the stroke

category data base and/or the Chinese ch racter data base and to the retrieval and display of a character or e

characters from within the said databases in the "character box" as defined in the statement of Jeffrey John Yates filed 24 July, 1992, in the visual display unit.

IN THE FEDERAL COURT OF AUSTRALIA
PUEENSLAND DISTRICT REGISTRY

GENERAL DIVISION

BETWEEN :

CCOM PTY. LTD. and RONALD HOWARD THOMAS

Applicants

JIEJING PTY. LTD.

First Respondent

PARAVET INSTRUMENTS PTY. LTD.

Second Respondent

ALLAN GARNHAM

Third Respondent

JEFFREY JOHN YATES

Fourth Respondent

AND :  ERIC RUSSELL CHAPPELL

Fifth Respondent

m:	Cooper J.
PLACE :	Brisbane
m:	21 August, 1992

REASONS FOR JUDGMENT

The applicant has served upon the respondents, other than the third respondent ("the respondents") a notice to	produce in accordance with Order 33 Rule 12 of the Federal
Court Rules. The notice requires production at the trial of the source codes of the Jiejing computer programs in issue in these proceedings. A call has been made for the source codes. The source codes were not produced in response to the call nor to the court.

It was submitted by Counsel for the respondents that

Order 33 Rule 12 on i t s proper construction does not require

production and that a fai lure t o produce the source codes only has the consequence t h a t the applicant may tender secondary evidence o f the codes and that the respondents may be exposed t o an order for costs. Beyond th i s it was submitted no

consequences flowed. Alternatively it was submitted that i f ,

as a matter o f construction o f Order 3 3 Rule 12 ( 1 ) production

was required, the respondents ought t o be excused from

production.

Counsel for the applicant submitted that Order 33
Rule 12 gave the notice t o produce the same e f f e c t as a

subpoena for production o f the source codes and that compliance was mandatory unless production was excused by the Court.

Order 33 Rule 12 provides :-

" ( l ) Where a party t o any proceedings

serves on another party notice requiring the party served t o produce a t any t r i a l or hearing i n the

proceedings, or before any Judge,
having authority t o take evidence i n	o f f i c e r , examiner or other person
the proceedings any document or thing for the purpose o f evidence and the document or thing i s i n the
possession, custody or power o f the p a r t y served, the party served shall ,
unless the Court otherwise orders, produce the document or thing i n accordance with the notice, without the need for any subpoena for production.

(2) W11ot-e the document or thing required	t o be produced i n accordance with
sub-rule ( 1 ) i s not produced, the party serving the notice may lead

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secondary evidence o f the con tents or

nature o f the document or thing.

( 3 )	Sub-rule ( 2 ) does not a f f e c t the power o f the Court t o order costs against a party who f a i l s t o comply
with a notice under sub-rule ( l ) " .

Counsel for the respondents submitted that the structure o f the rule was to provide in sub-rule (1) for the process whereby production was initiated and t o provide in sub-rules (2) and (3) for the consequences of non-production. In support of the submission Counsel referred to the text "Discovery and Interrogatories" 2nd Ed. Butterworths (1990) by Simpson, Bailey and Evans. At page 308 the general rule is stated as :-

"The notice to produce i s a procedure by which a party informs h i s adversary that he may require, for the purposes o f evidence, some document that r e s t s i n the adversary's possession or control. The traditional view i s that the notice requires the person so served t o bring the documents t o court, b u t does not require him t o produce them. Such production would be a consequence o f a subsequent ca l l . I t i s therefore not t ru l y a

production procedure a t a l l ; rather, i t

i s a means o f ensuring the document's

avai labi l i ty a t t r i a l (through i t s

presence i n court) , and provides the foundation for the adduction o f secondary evidence should production be refused".

The authors with reference to Victoria, South Australia, Queensland, the Federal Court, the High Court, Australian Capital Territory and Northern Territory make the following statement at 309 :-

" These ju r i sd i c t ions maintain a

traditional approach t o the notice

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procedure. A1 though the Rules provide for the procedure, they do not vary the above stated general position".

The authors cite no authority for this conclusion and simply make reference to the relevant rules of Court, citing Order 33 Rule 12 so far as this Court is concerned. In relation to New South Wales, they conclude that Pt.36 r.16 operates so that "a notice to produce has the effect of a subpoena". Pt.36 r.16 of the New South Wales Rules is in the same terms as Order 33 Rule 12(1).

Counsel have been unable to find any decision of the Court as to the construction and operation of Order 33 Rule 12(1). My own researches have found no relevant decisions either reported or in the data base of unreported decisions of the Court.

In my opinion Order 33 Rule 12(1) does have the

effect and operation contended for by Counsel for the

applicant. I come to that view for these reasons.

The words "without the need for any subpoena for production" serve no useful purpose unless it is intended that the notice to produce would have the same coercive effect as if a subpoena for production was obtained. As appears from the form of the subpoena for production (Form 41) the subpoena operates as an order of the Court which requires compliance with its terms. Non-compliance with the subpoena would expose

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the party to whom it was directed to punishment for contempt.

The words "unless the Court otherwise orders" serve

no useful purpose unless the words they qualify "shall

...p roduce the document or thing in accordance with the

notice" mean that production under the sub-rule is mandatory
and not optional at the election of the party served..

The form of the rule of Court in its traditional form does not include the words "without the need for any subpoena" and "unless the Court otherwise orders" (See for example the Queensland Rules of the Supreme Court Order 36 Rule 7). Order 33 Rule 12(2) merely states expressly the general rule as the right of a party who has given a notice to produce which has not been complied with to lead secondary evidence of the contents or nature of the document or thing the subject of the notice. However, the provision should not be construed to limit the right of a party who is not in a position to tender secondary evidence to procure production of

the document or thing to the Court to enable it to be tendered	into evidence which is the stated purpose on the notice (See
Form 45).
In my view the respondents are obliged to produce the source codes to the Court unless they can obtain an order from the Court that they are not required to comply with the
terms of the not ice ,

I

I turn to the respondents alternative application

for an order that they are not required to produce the source
codes as required by the notice to produce served upon them.

On 17 July, 1992 I refused to order that the respondents discovery and make available for inspection the source codes. For reasons which I published at that time I found that the source codes were not shown to be relevant to any issue raised on the pleadings and were not discoverable by the application of general principle as to discovery. I was also concerned that disclosure of the confidential nature of the material could substantially harm the commercial interests of the respondents because the source codes disclosed information as to the means employed to manipulate data which had an application beyond the mere retrieval of Chinese characters.

The respondents submit that for the reasons which

persuaded me to refuse discovery and inspection of the source

codes, I ought likewise to excuse production of them to the	Court. The applicant submits that there has arisen a clear
issue on the evidence as to the method by which the Jiejing programs retrieves and displays Chinese characters and that the source code which contains the programmer's original instructions are now demonstrably relevant.

One of t h e claimed in t ege r s which it ie alleged i s

infringed by the respondents is the searching of Chinese character and Chinese character stroke category data bases by entering search criteria by input keys.

Mr. T. J. Rogers, an expert computer programmer, has analysed the respondents computer programs by utilising a program called "Soft Ice". The effect of Mx. Rogers' evidence (at transcript 281-283, 302, 303) as I understand it is that the program in operation searches across the stroke information in relation to each Chinese character by reference to the information coded in the 10 bits which correspond with the 10 stroke categories and displays characters by searching within the selected range of characters for those with the highest weighting value.

It was submitted by Counsel for the respondents that there is no issue as to how the Jiejing programs work and what they do and that the argument is one of semantics as to the meaning of "search".

data base relating to the ten stroke categories chosen by	Jiejing programs search all ten sets of information in the I do not agree. The issue is whether or not the
reference to the stroke category selected by the input key and whether they search within the sub-set identified to retrieve and display certain characters.
Mr. Rogers says the programs search all stroke categories for each character. Dr. Yates in his statement

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filed on 24 July, 1992 says they do not do so, but go to a pre-determined entry point in the data base relating to a particular stroke category automatically when the relevant stroke category key is pressed. Thereafter, he says characters in that category are retrieved because the program jumps directly to the relevant character addresses in the storage data determined by the operation of an algoritlun based on input keyed into the computer as part of the program itself. The characters are then displayed according to their individual weighting which is dependent upon the weighting value given to the character address. The value has been previously ascribed to the character address on the basis of the frequency of use of the relevant character and forms part of the program.

If Dr. Yates is correct in his contention that there is no searching of the data base in the way contended by the applicant then the searching integer of the claim of the petty patent would not be infringed.

Because there is an issue as to whether or not the Jiejing program searches the data base of all stroke categories and Chinese characters and searches within particular sub-sets as sworn to by Mr. Rogers, so much of the source code as contains the programmer's instructions to get to the entry point of a stroke character category and the instructions as to the retrieval and display of characters from within that category are relevant. Evidence of the instructions is admissible if it is relevant to a fact in issue and it is relevant to a fact in issue if it tends to increase or diminish the probability that the fact exists (R, v. Fletcher (1953) SR (NSW) 70 at 76).

The word help feature of the Jiejing program has not been considered by Mr. Rogers in his analysis of the Jiejing programs, nor has Mr. Thomas nor Mr. Garnham in their evidence given consideration to it. This aspect of the programs is based on semantics and grammatical construction and works by the association of characters. No part 0.f the claims of the petty patent relates to such a process. The claims relate to the search of Chinese characters and Chinese stroke categories in a data base by search criteria being Chinese stroke character categories in the order in which strokes within a category are written.

From the statement of Dr. Yates it appears that the

results of the two aspects of the programs, that is retrieval

category are displayed on the right of the screen of the	of characters by stroke category and retrieval by word help, are displayed separately. The characters retrieved by stroke
visual display unit in the "characters box". The characters retrieved by the word help program are displayed in the centre of the screen in the "word help box". The stroke category symbols are displayed on the left of the screen. It is the operation of the program which leads to the display of the characters in the "characters box" on the right of the screen

10.   I

which is alleged to infringe the petty patent and it is this part of the program to which all the evidence of the applicant has been directed.

In my view the discretion to excuse the production of material is to be determined in accordance with what the interests of justice in the particular circumstances of the case require. Those interests do not require that the source code, so far as it relates to the word help facility of the program which leads to the display of characters in the centre of the screen, be produced to the Court. Nor in my view do those interests require that so much of the source code as does not relate to the instructions leading to identification of the entry point of a stroke character category in the stroke category database and/or the Chinese character database and to retrieval and display of a character or characters from within those databases in the "character box" on the screen, be produced.

Accordingly, I order that the respondents are not to Jiejing programs to the Court. Otherwise the interests of	that extent required to produce the source codes of the
justice require that so much of the codes not thereby excluded be produced to the Court. If the relevant part of the codes not required to be produced cannot be physically excluded, they may be covered up.

i

THE COURT ORDERS:

The respondents other than the third respondent are not required to produce to the court in compliance with the applicant's notice to produce so much of the source codes of the Jiejing computer programs as does not relate to instructions leading to the identification of the entry point of a stroke character category in the stroke category data base and/or the Chinese character data base and to the retrieval and display of a character or characters from within the said databases in the "character box" as defined in the statement of Jeffrey John Yates filed 24 July, 1992, in the visual display unit.

I certify- that this and the ten (10) preceding pages are a true copy of the reasons for judgment herein of the Honourable Mr. Justice Cooper.

Date:  2 1 August, 1992

.j,ta ((4 W . L d $ C h * ~ g .

Associate

Counsel for the applicant:  Mr. J. Garnsey QC and Mr.

D. Fraser

Solicitors for the applicant:	Stokes & Panettiere
Counsel for the respondents:	Mrs. D. A. Mullins
Solicitors for the respondents:	Bennett & Philp