CSR Limited v Rockwool International A/S - [2007] FCA 1258

FEDERAL COURT OF AUSTRALIA
CSR Limited v Rockwool International A/S [2007] FCA 1258
Patents Act 1990 (Cth)
Federal Court Rules 1979 (Cth), O 15 r 2(3)
Commonwealth v Northern Land Council (1991) 30 FCR 1 cited
Compagnie Financiere et Commerciale du Pacifique v Peruvian Guano Company (1882) 11 QBD 55 cited
Wellcome Foundation Limited v VR Laboratories (Aust) Property Limited (1981) 148 CLR 262 considered
Lubrizol Corporation Inc v Imperial Chemical Industries PLC (2000) 50 IPR 526 cited
F Hoffmann-La Roche AG v Chiron Corporation (2000) 171 ALR 295 discussed
Gambro Pty Ltd v Fresenius Medical Care Australia Pty Ltd [2001] FCA 235 discussed
Bristol-Myers Squibb Company v FH Faulding (2000) 97 FCR 524 considered
Merck & Co Inc v Arrow Pharmaceuticals Ltd (2006) 154 FCR 31 discussed
Commissioner of Patents v Microcell Limited (1959) 102 CLR 232 cited
NV Philips Gloeilampenfabrieken v Mirabella International Pty Limited (1995) 183 CLR 655 considered
Conor Medsystems Inc v University of British Columbia (No 3) (2006) 228 ALR 515 cited
Pfizer-Overseas Pharmaceuticals v Eli Lilly and Co (2005) 225 ALR 416 discussed
ICI Chemicals and Polymers Ltd v Lubrizol Corporation Inc (1999) 45 IPR 577 considered
Eli Lilly and Company v Pfizer Ireland Pharmaceuticals (2004) 137 FCR 573 cited
Mulley v Manifold (1959) 103 CLR 341 cited
Astra-National Productions Ltd v Neo-Art Productions Ltd [1928] WN 218 cited
CSR LIMITED v ROCKWOOL INTERNATIONAL A/S
SAD 188 OF 2004
MANSFIELD J
17 AUGUST 2007
ADELAIDE

IN THE FEDERAL COURT OF AUSTRALIA

SOUTH AUSTRALIA DISTRICT REGISTRY

SAD 188 OF 2004

BETWEEN:

CSR LIMITED
Applicant

AND:

ROCKWOOL INTERNATIONAL A/S
Respondent

JUDGE:

MANSFIELD J

DATE OF ORDER:

17 AUGUST 2007

WHERE MADE:

ADELAIDE

THE COURT ORDERS THAT:
1.The applicant’s notice of motion be stood over to a date to be fixed, with liberty to call it on on reasonable notice.

Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.

IN THE FEDERAL COURT OF AUSTRALIA

SOUTH AUSTRALIA DISTRICT REGISTRY

SAD 188 OF 2004

BETWEEN:

CSR LIMITED
Applicant

AND:

ROCKWOOL INTERNATIONAL A/S
Respondent

JUDGE:

MANSFIELD J

DATE:

17 AUGUST 2007

PLACE:

ADELAIDE

REASONS FOR JUDGMENT

This proceeding concerns an application for revocation of two patents of which the respondent, Rockwool International A/S (Rockwool) is the proprietor. The two patents relate to a product comprising man-made vitreous fibres (MMV fibres). The applicant, CSR Limited (CSR) is a public company listed in Australia and a manufacturer of MMV fibres.
Currently before the Court is a motion by CSR for further and better discovery “of all documents relevant to issues in dispute in the proceeding including particular discovery”. Ultimately, the several areas of dispute about discovery were quite discrete, and are addressed below.
BACKGROUND
The parties were initially ordered to provide discovery of documents by 11 November 2005. Rockwool filed an initial list of documents on 22 February 2006 and a supplementary list on 24 April 2006. Following the partial hearing of CSR’s motion for further and better discovery on 29 May 2006,…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [2007] FCA 1258
Decision Date: 17 August 2007

CaseChat Overview and Summary

In the Federal Court of Australia, CSR Limited sought further and better discovery from Rockwool International A/S concerning documents relevant to the issues in dispute in the proceeding. CSR was not satisfied with the documents provided by Rockwool and sought specific categories of documents, which Rockwool resisted, claiming they were not relevant to the substantive issues. The court was required to determine whether Rockwool should provide the additional documents described in the categories listed by CSR. The primary issue was the relevance of the documents to the substantive issues in dispute, particularly concerning the validity of Rockwool's patents related to MMV fibres.

The court assessed the relevance of the documents by examining the Rockwool patents and the grounds of invalidity presented by CSR. CSR argued that the documents in question were necessary to demonstrate the general state of knowledge in the art before the priority date and the extent of information-sharing by industry participants, which were relevant to the allegations of lack of inventive step and false suggestion. The court considered whether the documents in categories 1 through 4, 6, and 9, as specified by CSR, were necessary to determine the validity of the patents.

The court concluded that it was not satisfied that there were documents within Category 9 that had not been discovered and that it did not anticipate any difficulty in the parties clarifying the status of documents claimed to be privileged from production. The court found that Rockwool had discovered all documents relevant to the modified HT fibres but resisted any order for further discovery of documents relating to other types of fibres. Consequently, the court decided that no further order for discovery should be made on CSR's motion for further and better discovery. The notice of motion was stood over to a future date with liberty to apply on reasonable notice if further issues arose. The court also reserved the matter of costs to be heard at a later time.

Orders

Orders of the court

1. The applicant’s notice of motion be stood over to a date to be fixed, with liberty to call it on on reasonable notice.

Background

Background to the litigation

Currently before the Court is a motion by CSR for further and better discovery “of all documents relevant to issues in dispute in the proceeding including particular discovery”. Ultimately, the several areas of dispute about discovery were quite discrete, and are addressed below.BACKGROUND The parties were initially ordered to provide discovery of documents by 11 November 2005. Rockwool filed an initial list of documents on 22 February 2006 and a supplementary list on 24 April 2006. Following the partial hearing of CSR’s motion for further and better discovery on 29 May 2006, Rockwool provided two further lists of documents by letter to CSR’s solicitors on 3 July 2006 and 28 July 2006 (ultimately included in a further supplementary list filed by Rockwool on 23 August 2006). As CSR was not satisfied with the contents of the further lists, further argument on the motion was necessary. The further argument was confined to six “categories” of documents set out in a letter from CSR’s solicitors to Rockwool’s solicitors on 23 May 2006, which is exhibit GRT-40 to the affidavit of Gregory Ralph Tye sworn on 25 May 2006. Rockwool has also filed a notice of motion dated 23 May 2006 seeking further and better discovery from CSR and seeking to enforce a confidentiality regime in relation to the inspection of certain of Rockwool’s discovered documents. Argument on that motion has been deferred at the request of the parties pending determination of CSR’s discovery application. The issue which presently falls to be determined is whether Rockwool should be ordered to provide discovery of documents described in categories 1-4, 6 and 9 in the letter from CSR’s solicitors of 23 May 2006. Discovery of those documents is resisted by Rockwool, primarily on the ground that they are not relevant to the substantive issues in dispute. There is no issue abut the existence of documents in the possession, custody or power of Rockwool in each of those categories. It simply says that it has no obligation to discover them. In order to determine the relevance of those categories of documents to the issues arising on the pleadings, it is necessary to refer to the Rockwool patents and the grounds upon which they are said to be invalid.THE ROCKWOOL PATENTS AND ALLEGED GROUNDS OF INVALIDITY The two patents in suit are Rockwool Patent 704242 (Rockwool Patent #1), which has a priority date of 8 November 1994 and an application date in Australia of 8 November 1995; and Rockwool Patent 770902 (Rockwool Patent #2), which has a priority date of 8 November 1994 and an application date in Australia of 6 April 2001. Both patents are concerned with MMV fibres. MMV fibres are made from vitreous melt, which is formed by melting various minerals in a furnace. The MMV fibres the subject of the Rockwool patents are produced by spinning vitreous melt into wool at high temperatures. They are referred to in correspondence between the parties as “modified HT [high temperature] fibres”.

Evidence

Evidence Before The Court

Full text does not contain this section.

Decision

Reasons for decision

MANSFIELD J

At present, I am not satisfied that there are documents within Category 9 (as so confined) which have not been discovered or whether the discovered documents said by Rockwool to be encompassed within Category 6 include documents which fall also within Category 9. I do not anticipate any difficulty in the parties, through their legal representatives, clarifying that position privately. If then Rockwool has documents within Category 9 which it has discovered but claimed to be privileged from production, or makes such a claim, it can be addressed.CONCLUSION At present, I have come to the view for the reasons given that there should be no further order for discovery on CSR’s motion for further and better discovery. I will stand over the motion to a date to be fixed, with liberty to apply on reasonable notice, in the event that CSR, in the light of these reasons, wishes to pursue the two matters which I have left a little open-ended (concerning Categories 6 and 9 of the documents in respect of which further and better discovery was sought) or in the event that some additional issue arises concerning the adequacy of Rockwool’s discovery, although I do not expect any such additional issue to arise. I will also hear the parties as to the costs of the motion to date at a time to be fixed.

Ratio Decidendi

Legal Principle Established

Established by: MANSFIELD J

CSR’s submissions on the conduct and purpose of Project Sleipner were not the subject of evidence and were objected to by senior counsel for Rockwool. It was submitted for Rockwool that the modified HT fibres the subject of the patents in suit were only one type of fibre involved in Project Sleipner. The bulk of the project was said to relate to other types of fibres which are irrelevant to the issues arising in relation to the Rockwool patents. Rockwool’s position (which I did not understand to be contested by CSR) is that it has discovered all documents in the categories referred to below which are relevant to the modified HT fibres, but resists any order for further discovery of documents relating to any other fibres in relation to which it has conducted or participated in research projects.CONSIDERATIONDocuments sought in Category 1 The first category of documents sought by CSR are documents, including minutes of meeting, notes, memoranda and the like, evidencing or recording information provided at conferences or meetings of TIMA (Thermal Insulation Manufacturers Association), NAIMA or EURIMA attended by Rockwool. CSR claims that such documents would provide evidence of the general state of knowledge in the art before the priority date and the extent of information-sharing by industry participants. It claims that this evidence is relevant to the Particulars of Invalidity insofar as they allege a lack of inventive step, absence of a manner of new manufacture and false suggestion because the evidence would demonstrate what was “known” before the priority date. The discovery request particularly refers to two presentations made by an employee or employees of Rockwool and listed in the Particulars of Invalidity as examples of the common general knowledge in Australia before the priority date. The first, “In-Vitro Dissolution Rates of Compositions within the TIMA Nomenclature Definition of Slag Wool” is described as having been presented at a NAIMA Fibre Science Workshop in April 1994. The second was described as comprising an oral publication and written abstract on “Investigation of the Rate of Dissolution of Man Made Vitreous Fibres In-Vitro at different pHs”, published at a conference in Lyon, France in September 1992. The existence of these publications is relied upon by CSR to justify its assertion that Rockwool employees had attended conferences or meetings of the type referred to in the Category 1 request and must have created or obtained documentation pertaining to those events. In response to the request for Category 1 documents, Rockwool referred to three documents discovered in its second supplementary list of documents; namely two undated documents respectively entitled “List of overheads” and “Samples”, and the April 1994 presentation with handwritten annotations. It said in response to CSR’s request for the results of a NAIMA/EURIMA short term inhalation study referred to in (confidential) document 8, that no such results were available “at the date of that document” (7 December 1994) and that, in any event, the study is not relevant to the issues in dispute. Rockwool also referred to certain documents, referred to in its previous (confidential-outside counsel only) discovery, which have been lost: draft NAIMA paper on “measurements of in-vitro dissolution rate”, referred to in document 11 (20 July 1994); Rockwool’s rewritten version of the discussion part of the draft NAIMA paper on “measurements of in-vitro dissolution rate – part one: at neutral pH”, referred to in document 12 (31 October 1994) as having been discussed at a NAIMA meeting in the beginning of October; and first draft of the second part of the paper: “- at acidic pH”, also referred to in document 12.

IN THE FEDERAL COURT OF AUSTRALIA
SOUTH AUSTRALIA DISTRICT REGISTRY	SAD 188 OF 2004

BETWEEN:	CSR LIMITED Applicant
AND:	ROCKWOOL INTERNATIONAL A/S Respondent

JUDGE:	MANSFIELD J
DATE OF ORDER:	17 AUGUST 2007
WHERE MADE:	ADELAIDE

IN THE FEDERAL COURT OF AUSTRALIA
SOUTH AUSTRALIA DISTRICT REGISTRY	SAD 188 OF 2004

JUDGE:	MANSFIELD J
DATE:	17 AUGUST 2007
PLACE:	ADELAIDE