Ccom Pty Ltd v Jiejing Pty Ltd

[1992] FCA 524

C A T C H W O R D S

Practice and Procedure - discovery and inspection - computer patent - source code - relevancy to issues raised on the pleadings - general principles applicable to the discovery of documents - proof of the alleged infringements - whether the source code is relevant to the determination of questions arising in the pleadings - confidential information - discretion to refuse inspection.

C o o ~ r J.. Brisbane. 17 Julv. 1992

Gcom Ptv. Ltd. v. Jielina Ptv. Ltd.. Paravet w m e n t s Ptv,

Thomas. Garnham. Yates and Chaooell

G. 124 of 1991

,IN THE FEDERAL COU RT OF AUSTRALIA

WEENSLAND DISTRICT REGISTRY

GENERAL DIVISION	NO. 6124 of 1991
BETWEEN :

GCOM PTY. LTD.

JIEJING PTY. LTD.

piret Res~ondent

m:

PARAVET INSTRUMENTS PTY. LTD.

Second Respondent

RONALD HOWARD THOMAS AND ALLAN G A R N W

JEFFREY JOHN YATES

Fourth Respondent

ERIC RUSSELL CHAPPELL

~ i f t h Respondent

PINUTES OF ORDER

JUDGE W I N G ORDER:  Cooper J.

DATE I 17 July, 1992

WHERE W E :	Brisbane
THE COURT ORDERS THAT:

1. The application for discovery and inspection of the source code is refused.

2.         Reserve the costs of the application to the trial.

l?s?mt Settlement and entry of orders ia dealt with in Order 36 of the Federal Court Rules.

JN THE FEDERAL COURT OF AUSTRALIA
QUEENSLAND DISTRICT REGISTRY

GENERAL DIVISION	No. G124 of 1991
BETWEEN :

GCOM PTY. LTD.

ADD^ icant

JIEJING PTY. LTD.

First Res~ondent

m:

PARAVET INSTRUMENTS PTY. LTD.

second Resvondent

m:

RONALD HOWARD THOMAS AND ALLAN GARNHAM

Third Res~ondents

m:

JEFFREY JOHN YATES

Fourth Resvondent.

m:

ERIC RUSSELL CHAPPELL

Fifth Resvondent

m:	Cooper J.
Date:	17 July, 1992
Place:	Brisbane

BX TEWORE REASONS FOR JUDGMENT

petty patent is entitled Symbol Definition Apparatus and the	of an alleged infringement of petty patent number 616154. The The principal application is for relief arising out	claims are for a computer processing apparatus for assembling text in Chinese language characters.
The allegations alleged against the first, second, fourth and fifth respondents ("the respondents") are that they have supplied two products entitled Jiejing Document Processor and Jiejing Character Word Processor which, when used in
combination with computer hardware, provide a computer processing apparatus for assembling text in Chinese language characters. The "products" pleaded are computer programmes which, when loaded into a computer, allow it to be used to assemble text in Chinese language characters.
The respondents have discovered copies of the computer programmes sold in the market-place for use in conjunction with computer hardware. It is the supply of these products which it is alleged constitute the infringement (see paragraphs 8(a) and (b) of the Further Amended Statement of Claim) or the sale of these programmes together with computer hardware which is alleged to infringe (see paragraph 8(g) of the Further Amended Statement of Claim). There are further allegations that the supply of the programmes induces third parties to infringe the patent (see paragraph 8(d) of the Further Amended Statement of Claim).
The gravamen of each allegation is that the supply of the programmes, when used in conjunction with computer hardware, constitutes the hardware when operated with the programme a computer processing apparatus with the facility to
assemble text in Chinese language characters. Importantly, the essence of the applicant's patent is that it is in respect of an apparatus (computer hardware) which, when programmed with the applicant's programme, operates and can be operated to assemble text in Chinese language characters. It is not the applicant's programme itself which is alleged to have patent protection, and no patent claim is advanced in respect of that programme standing alone.
The applicant has sought discovery and inspection of the respondents' source code relevant to the two programmes pleaded.
It is common ground that the source code is the original programme written by the programmer which sets out a series of steps and instructions which, when expressed in a form capable of being read and implemented by standard computer hardware, will cause the computer to operate in a particular fashion and to perform particular functions.
The source code in the form in which it is originally written cannot be used in computer hardware. As a programme, it may be read and understood by qualified computer programmers, but not by the computer itself. For the programme to be understood by the computer hardware it must be
translated into a language and placed in a medium which can be introduced to and underetood by computer hardware. When
rendered into this form, it represents an object or executable code.
The supply of the programmes which it is alleged constitute infringement of the patent are the object or executed code8 which are capable of being used in conjunction with computer hardware so as to constitute the two in

4 .   ,

combination computer processing apparatus for assembling text in Chinese language characters (see paragraph 8 of the Further Amended Statement of Claim.)

The respondents, by Jeffrey John Yatee, have deposed that the source code is merely a means of dealing with data and that it contains no data relevant to any particular language, Chinese or otherwise. The provision of language data, in this case Chinese characters, is added to the programme at a point after completion of the source code.

The applicant submits that discovery and inspection of the source code will assist it to prove the alleged infringements, and that the source code is relevant to issues raised on the counterclaim. The respondents submit the source code is not relevant to any issue raised on the pleadings and are not discoverable in accordance with the general principles applicable to the discovery of documents.

Assuming for the purpose of this application that the patent is valid, the issue as to infringement on trial will be whether the respondents' programmes in the manner in which they cause computer hardware to operate, objectively viewed, creates the computer hardware in operation as programmed "computer processing apparatus for assembling text in Chinese language character." How the programme was

created to cauee the computer hardware to perform theae functions is irrelevant to the matters in issue in these

5 .   l

proceedings insofar as those issues relate to infringement of the patent. The question is what functions does the computer perform when programmed with the products pleaded in paragraph 8(a) of the Further Amended Statement of Claim, and whether those functions objectively constitute the computer hardware computer processing apparatus with the alleged facility.

The source code contains the ideas and learning of the programmer as to the nature and sequence of instructions designed to achieve a particular operational result with respect to information stored in a separate data bank independent of the source code. As such, it is confidential information. Disclosure of it is not necessary, in my view, to make any objective assessment of the operational effect of the computer when loaded with and using either of the two programmes particularised by the applicant as the products which infringe the petty patent.

The applicant's case is not assisted by ascertaining how the respondents' programmer achieved the operational

effect of the object or executable code when used in
conjunction with computer hardware and the material contained in a separate data base. In my opinion, the source code is

not discoverable in relation to the issue of infringement.

It was submitted by the applicant that the source

code is discoverable in relation to the croee-claim by the
fifth respondent for breach of copyright in relation to a

compilation of Chinese characters and a compilation of a set of rules for the definition of strokes which make up Chinese characters and the arrangement of them into categories. The applicant, in its defence to the claim by the fifth respondent, allege that it and the third respondent are or were entitled to a licence from the fifth respondent to use such compilations for the purpose of a data base and index files in a programme "Easy Word".

The compilations, the subject of the copyright claim, constitute a linguistic exercise reduced to a written form. In the form in which the copyright is claimed, no question of the two programmes, the subject of the infringement action, arises. The source code is completely irrelevant to the issues raised.

It is alleged by the applicant that the licences to
use the compilations were not revoked or, alternatively, were

improperly revoked by the fifth respondent. It is

alternatively pleaded that the conduct of the applicant in	selling the programme "Fastword", which includes the
compilations, was done during a period when the applicant had the benefit of the licences. The various formulations plead no infringement due to a right to exploit the compilations, a right to set-off damages on the basis that the wrongful revocation of the licences constituted a breach of contract by the fifth respondent or a right to resist discretionary injunctive relief on the same basis.

The issues raised do not touch or concern the source code to the respondents' own programmes, and discovery and inspection would not advance the applicant's case on this iesue.

An undertaking given by the fifth respondent in a letter dated 7 February, 1989 to Uni-X Pty. Ltd., referred to by the applicant on the application does not advance the matter. The undertaking is not relevant to any issue raised on the pleadings. There is no allegation of breach of it, and no relief is sought in respect of it. In any event, there is nothing to identify the material the subject of the undertaking as having any relationship to the source code as described by Dr. Yatee in his affidavit.

Finally, the applicant submits that the respondents' plea in paragraph 8 of the Amended Defence and Cross-claim pleading protection under section 119 of the patent8 Act 1990 and the applicant's plea in paragraph 2 of its Defence to the

discoverable. For the purpose of the pleading and section 119	cross-claim in response to the plea, make the source code	of the Patents Act, the relevant product is the supply to third parties of a product entitled Jiejing Documents Proceeeor and Jiejing Character Word Processor, being computer programmes in a form capable of immediate use in conjunction with computer hardware. These are the products particularised in paragraph 8 of the Further Amended Statement of Claim (see
paragraph 2(a) of the Defence to the Cross-claim).

8 .   I

By paragraph 2(b), the applicant denies that the respondents were before 22 July, 1992 making or using the Jiejing products as defined in particular (a) to paragraph 8 of the Further Amended Statement of Claim. That is a question of fact to be determined by reference to the products as defined.

By paragraph 2(c), it is alleged that if the product was made or used such of the respondents who did not make or use the product do not have a defence under section 119. That is a question of fact and law arising on the construction of the section.

By paragraph 2(d), it is alleged that section 119 does not afford a good defence for acts of infringement beyond making and using the Jiejing products and does not afford a defence to the acts of infringement alleged in paragraph 8 of the Further Amended Statement of Claim, that ie, supply. This raises a question of law arising on the construction of the

section.

Paragraphs 2(e) and (f) allege that the making of each product as defined in the Further Amended Statement of Claim does not afford a good defence in respect of the making and use of the other product. This is a question of fact and a question of law.

The issues raised on the pleadings raise for

consideration issues of law and fact relevant to the product pleaded in paragraph 8(a) of the Further Amended Statement of Claim. Those products are computer programmes supplied in a form such that the product can only be used in conjunction with computer hardware (see paragraph 8(b) of the Further Amended Statement of Claim). The issues raised by the pleadings in relation to the operation of section 119 of the pgtents Act on the products pleaded in paragraph 8 of the Further Amended Statement of Claim do not, in my view, make the source code relevant to the determination of any question of fact or law arising thereunder.

If, contrary to my view, the source code ia diecoverable, then, I would in the exercise of my discretion refuse inspection in any event. The applicant and the respondenta are competitors in the market place. The respondents' source code as deposed to by Geoffrey John Yates has an operation far wider than the claims of the petty patent in that the source code is merely a means of dealing with data

Chinese or otherwise, and operates by reference to information	and contains no data relevant to any particular language,
stored in a separate data bank. The means employed by the respondents as contained in the source code to deal generally with data is confidential to the respondents.
Such experts who have studied the produift of the respondents aa reflected in the object or executable programmes discovered by the respondents (being the products

10.   !

pleaded in paragraph 8 of the Further Amended Statement of Claim) by the use of a programme "Soft-Ice", have been able to express the opinion that the programme in the form in which the product is supplied by the respondents or some of them to third parties exhibits all the features claimed in the petty patent. The programmes in that form contain the Chinese character data which is absent from the source code and which is a material element of the infringement alleged.

In those circumstances, there is no demonstrable need for the applicant to have access to the source code to obtain expert evidence necessary to support its claim for infringement or to resist the cross-claim for breach of copyright. The risk of disclosure of the confidential information of the respondents in a form which may be capable of exploitation by the applicant in areas of commercial application other than assembling Chinese language characters through disclosure in the proceedings to the commercial detriment of the respondents in my view outweighs any proper

use or advantage which inspection may give to the applicant in	the prosecution or defence of these proceedings, particularly
when regard is had to the evidence presently available to it.
A proposal to limit inspection in the first instance to the applicant's experts does not, in my view, overcome the risk.

In all the circumstances, the application for

discovery and inspection of the source code is refused, and I
reserve the costs of the application to the trial.

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

counsel for the Agplic-I Mr. Fraser

ors for the Avvlfcant:  Paul Pattison, Solicitors

Solicitors for the Res-r Mr. Bennett of Bennett &
Philp