Domino's Pizza Enterprises Limited v Precision Tracking Pty Ltd
[2016] APO 13
•15 March 2016
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Domino’s Pizza Enterprises Limited v Precision Tracking Pty Ltd [2016] APO 13
Patent Application: 2014253558
Title:Vehicular light box and computerised system for monitoring one or more vehicles
Patent Applicant: Precision Tracking Pty Ltd
Requestor: Domino’s Pizza Enterprises Limited
Hearing Officer: P M Spann, Deputy Commissioner of Patents
Decision Date: 15 March 2016
Hearing Date: 13 November 2015, 4 February 2016
Catchwords: PATENTS – section 36 – request for declaration of entitlement – section 210 – request for production of documents – request for summons of witness – whether the documents, or the evidence of the witness, is likely to be of substantial relevance to the matter – orders for production or summons not made – requests refused in part – further information to support remaining requests may be filed within 14 days.
Representation: Requestor: Mr T Cordiner of counsel instructed by Cullens Patent and Trade Mark Attorneys
Patent applicant: Davies Collinson Cave
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2014253558
Title:Vehicular light box and computerised system for monitoring one or more vehicles
Patent Applicant: Precision Tracking Pty Ltd
Requestor: Domino’s Pizza Enterprises Limited
Date of Decision: 15 March 2016
DECISION
I am not currently satisfied that orders under section 210 for the production of documents and the summons of witnesses should be issued.
I refuse the requests for the Commissioner to order production of documents identified as Requests 1 – 4 in my reasons below.
I allow the section 36 requestor 14 days from the date of this decision to file further information in relation to Request 5 and the request for the Commissioner to summons witnesses consistent with my reasons below. If not these requests will also be refused.
REASONS FOR DECISION
This matter concerns requests by Domino’s Pizza Enterprises Limited (Domino’s) for orders under section 210 for the production of documents and the summons of witnesses for the purpose of the determination of its application for a declaration of entitlement under section 36.
BACKGROUND
Patent application 2014253558 was filed in the name of Precision Tracking Pty Ltd (Precision) on 24 October 2014. The application has been the subject of several examination reports and statements of proposed amendments. A 4th examination report issued on 23 April 2015 indicating that the remaining ground of objection was the uncertainty as to the entitlement of the applicant associated with the concurrent section 36 proceedings.
Directions for the conduct of the section 36 proceedings were issued and the evidentiary stages completed. In the process of setting a substantive hearing date the Commissioner was informed that Domino’s requested the summonsing of Dr Alexander Green (a director and declarant for Precision) for the substantive hearing and the production of documents from Precision relating to Dr Green’s evidence.
Domino’s requests were refused by a delegate of the Commissioner indicating inter alia that he did not consider that the information or the evidence of the witness would be determinative of the matter. Consequently Domino’s requested to be heard and filed a detailed summary of submissions including additional information on the purpose for which the orders are sought.
Precision chose not to attend the hearing or file written submissions. It indicated merely that it considered the delegate’s conclusion on the requests to be correct.
Subsequent to the oral hearing, Precision on 9 December 2015 filed further evidence being a third declaration by Dr Green and declarations by Mr Parrott and Mr Lasky. Domino’s was provided the opportunity to reconsider its request in the light of this evidence and on 19 January 2016 it reaffirmed its original request and made a further request for production of documents and also for summonsing of Mr Parrott and Mr Lasky.
Both parties were invited to provide written submissions in relation to the further requests. Precision again stated merely that it relied on the reasons for refusal previously given by the delegate. Domino’s did not respond but presumably relies on the reasons filed with the request and the submissions previously made at the oral hearing.
On 22 January Domino’s filed a request to file further evidence together with additional declarations. This request was allowed by the delegate on 14 February 2016.
The normal final date for acceptance of the patent application passed on 30 January 2016. However regulation 13.4(1)(g) provides for a later date for acceptance where the Commissioner gives an applicant an opportunity to be heard in relation to an examination report and subsequently makes a decision. Consequently, to invoke this provision the delegate on 29 January 2016 advised that the applicant would be heard for the purpose of regulation 13.4(1)(g) at the same time as the hearing of the section 36 request. As a consequence the final date for acceptance will then fall on the date three months after the Commissioner makes her decision.
THE SECTION 36 DISPUTE
The specification relates to a vehicular light box and computerised system for monitoring vehicles. Problems are identified in the product delivery industry such as the tracking of delivery drivers by employers (including the monitoring of safe driving practices), the monitoring of deliveries by customers and the branding of employees private vehicles.
A number of aspects of the alleged invention are described including a vehicular light box carrying advertising, lights, a location receiver (eg GPS) and communications module for transmitting location and other data to a server. In other aspects server and client processing systems are configured to receive tracking data from vehicles and present a tracking interface indicating the location of the vehicles.
The detailed embodiments include a self-contained light box (car topper) that can be temporarily attached to a delivery vehicle and connected to an existing electrical outlet. One advantage of this is that the light box can be connected to a driver’s private vehicle only for the period of their delivery shift and then removed.
Many options for configuring the tracking interface are provided including presenting data about a range of factors associated with the vehicle or the driver. These are presented in the context of both a system for an employer to monitor drivers and deliveries and also for customer to track orders and deliveries. This includes the location of the delivery vehicle and the estimated time of arrival.
It is not apparently disputed that Domino’s engaged Precision to develop a vehicle tracking system for stores to track delivery drivers. What in particular appears to be disputed is who originated the ideas for incorporating GPS trackers in “car toppers” and the use of the system as a customer interface including the location of the driver and time of arrival.
According to the evidence of Mr Knight for Domino’s, the idea for the car toppers came from him at a meeting with Precision in November 2012. Furthermore he suggests that the idea for customer tracking originated within Domino’s in 2011.
On the other hand Dr Green for Precision says the customer interface idea was developed independently in May 2012. He exhibits an email dated 5 May 2012 from Mr Lasky to him and Mr Parrott which states:
“I reckon that Pizza companies that offer home delivery, especially Dominos, might have a use for our technology.
Amongst all the standard uses for vehicle tracking, there is something extra that came to mind. Dominos has a real-time Pizza tracker that shows you at what stage your order is at:
com.au/corporate/insidelpizzatracker.aspx
But what if customers could also see exactly where the driver is with their pizza delivery? I reckon that would really impress people, and we could create a Dominos-branded interface for showing the driver's position on google maps.”
In relation to car toppers, Dr Green indicates in his second declaration that in early September 2012 Precision considered a number of options to support driver owned cars following its experience with mobile tracking units. One of these included a car topper connected to the cigarette lighter socket. Dr Green further states that he put forward his thoughts on future developments at the November 2012 meeting including tracking the car topper.
Dr Green’s third declaration states that in May 2012 Precision had provided “Park and Fly” (an airport parking/valet service) with portable tracking devices for contractors with private vehicles that plugged into the vehicles cigarette lighter socket. Mr Parrott and Mr Lasky’s declarations address matters stated by Dr Green including consideration within Precision of the tracking of owner drivers for Domino’s. Mr Parrot says that he approached a Domino’s franchisee, Mr Zappacosta, with the idea of allowing customers to track their pizza. Mr Zappacosta is said to have been positive but raised problems relating to the management of their delivery fleet and particularly their scooters. This led to a trial of Precision’s vehicle tracking system in Redfern around July 2012.
DOMINO’S REQUEST
Domino’s amended requests under section 210 (as presented in its summary of submissions of 13 November 2015 and the further request of 19 January 2016) are for a Notice to Produce (listed with a summary of reasons):
Request 1 - a copy of the full chain of emails to the email dated 5 May 2012 referred to in paragraph 7 of the declaration of Dr Green dated 18 May 2015
(a)This request concerns the inventive concept of the ability of a customer of the delivery service being able to track the delivery service.
(b)Green asserts that Precision Tracking arrived at this concept in or before May 2012 and points to an email dated 5 May 2012, which discusses the ability of a customer to “see exactly where the driver is with their pizza delivery” as stated in the email from Mr Lasky of Precision Tracking to Dr Green dated 5 May 2012.
(c)Only one email in the chain has been exhibited, namely the one dated 5 May 2012. The remainder of the email chain is likely to be substantially relevant to a matter before the Commissioner, namely the conception of this inventive concept.
Request 2 - any records between 5 May 2012 and 20 November 2012 of Precision Tracking's alleged 'inventive concept' referred to in paragraph 8 of the declaration of Dr Green dated 18 May 2015
(a)Dr Green states that he, Mr Lasky and Mr Parrot of Precision Tracking discussed the “inventive concept” of the customer interface and brainstormed further details of it.
(b)Therefore, Precision Tracking is by this evidence asserting that it is entirely responsible for the “inventive concept” of the customer interface.
(c)Precision Tracking should have created documents in the process of this brainstorming if it occurred as declared and such documents are likely to be substantially relevant to what the inventive concept was that was being brainstormed (as declared) and if that brainstorming in fact occurred.
(d)If no documents exist, then the Commissioner could infer (as Domino’s Pizza would ask her to do) that the asserted brainstorming did not occur and that would plainly likely to be substantially relevant to a matter before the Commissioner.
Request 3 - any records between September 2012 and November 2012 of Precision Tracking's alleged “solutions” referred to in paragraph 2 of the declaration of Dr Green dated 18 June 2015.
(a)In paragraph 2 of his second declaration, Dr Green states that Precision Tracking “understood that in order to meet Domino’s commercial needs, a solution would need to be provided to support drivers who used their own vehicles” and that in “September 2012, I discussed with Nathan Parrott and Vlad Lasky a number of solutions to support driver-owned cars … [t]he solutions that we considered were portable units connected to the cigarette lighter socket, a car topper connected to the cigarette lighter socket …”
(b)Dr Green does not exhibit any documents in support of the asserted work on these “solutions” in September 2012 or following. Such documents should exist if his evidence is correct, in circumstances where Dr Green is a professional engineer and would, on the balance of probabilities, be expected to have kept notes of his work, as would other members of the alleged design team at Precision Tracking.
(c)If no documents exist, then the Commissioner could infer (as Domino’s Pizza would ask her to do) that the asserted work on these solutions, in particular the car topper, did not occur and that would plainly likely to be substantially relevant to a matter before the Commissioner.
Request 4 - the Applicant's records relating to the provision by the Applicant of two portable units to Park and Fly in May 2012, as referred to in paragraph 2 of the third declaration of Alexander Green dated 9 December 2015 and paragraph 12 of the declaration of Nathan Parrott. In particular, records, including but not limited to:
1.1 drawings or photographs of the two units allegedly provided to Park and Fly in May 2012;
1.2 designs, notes or drawings of the further research and development of the portable units carried out during May 2012; and
1.3 designs, notes, drawings or photographs, of the "portable option" added to the Applicant's existing units, which included a waterproof case and cigarette lighter adaptor.
(a)Precision’s reference to its previous experience with "portable units" with Park and Fly is an assertion that the car topper with GPS tracker installed was conceived by the Applicant in May 2012. This 'car topper' as an inventive concept, the date of conception and the person who conceived the concept are all issues in dispute in the section 36 application. Accordingly, Domino’s is entitled to know whether the alleged "portable units" described by the Applicant are in anyway similar, aesthetically or functionally, to the inventive concept of the car topper, which forms part of the patent application.
(b)Precision has not produced any documents (which, it may reasonably be inferred, must exist if it did provide the "portable units" described to Park and Fly) to support the fact that "portable units" were provided to Park and Fly, or to support whether those "portable units" bear any resemblance in any way to the inventive concept the subject of the patent application.
(c)Prior to this recent evidence, Precision has not previously provided any evidence in relation to its alleged prior experience with the tracking of vehicles for Park and Fly using a car topper concept (or "portable unit").
Request 5 - the electronic version of the email dated 5 May 2012 (exhibited to Dr Green’s first declaration referred to in relation to Request 1)
(a)Requests for Domino’s to supply an electronic copy of the email have been refused.
Domino’s also seek a summons for Dr Green, Mr Parrott and Mr Lasky to appear as witnesses at the substantive hearing. The reasons given for the summonsing of Dr Green for cross examination are:
(a)The First and Second Green Declarations make a number of assertions that are not supported by documentary evidence;
(b)There are a number of inconsistencies within the First and Second Green Declarations, which are the same as those described in relation to the request for a Notice to Produce;
(c)If Domino's request for a Notice to Produce is further refused, then the cross-examination of Dr Green is likely to become paramount in determining the substantive dispute in order to resolve the numerous factual disputes between Knight and Green’s evidence;
(d)If Dr Green is not summonsed as a witness, the Commissioner would not be privy to all of the relevant information that is likely to be of substantial relevance to a matter before her; and
(e)It would be in the interests of procedural fairness and natural justice to allow Domino's the opportunity to cross-examine Dr Green.
The reasons given for the summonsing of Mr Parrott and Mr Lasky for cross examination are:
(a)Both the declaration of Mr Parrott and the declaration of Mr Lasky make a number of assertions that are not supported by documentary evidence;
(b)Much of the evidence of Messrs Green, Lasky and Parrott is given as hearsay in support of one another's respective accounts. Domino’s ought to be allowed the opportunity to test that hearsay evidence under cross examination;
(c)It would be in the interests of procedural fairness and natural justice to allow Domino’s the opportunity to cross-examine Mr Parrott and Mr Lasky
THE LAW
Section 210 of the Act provides:
“Commissioner’s powers
(1)The Commissioner may, for the purposes of this Act:
(a)summon witnesses; and
(b)receive written or oral evidence on oath or affirmation; and
(c)require the production of documents or articles; and
(d)award costs against a party to proceedings before the Commissioner.
Exercise of power to summon witnesses
(2)The Commissioner must not summon a witness under paragraph (1)(a) unless:
(a)the Commissioner is satisfied, on the balance of probabilities, of the following matters:
(i)the witness has a substantial interest in the proceedings before the Commissioner;
(ii)the witness is likely to provide oral evidence of substantial relevance to a matter before the Commissioner;
(iii)receiving oral evidence from the witness is necessary or desirable in all the circumstances; and
(b)the Commissioner notifies the witness of the actions the Commissioner may take under section 210A if the witness fails or refuses to comply with the summons.
(3)The Commissioner may summon a witness under paragraph (1)(a) whether the witness is in or out of the patent area.
Exercise of power to require production of document or article
(4)The Commissioner must not require a person to produce a document or article under paragraph (1)(c) unless:
(a)the Commissioner is satisfied, on the balance of probabilities, of the following matters:
(i)the person has a substantial interest in the proceedings before the Commissioner;
(ii)the document or article is likely to be of substantial relevance to a matter before the Commissioner; and
(b)the Commissioner notifies the person of the actions the Commissioner may take under section 210A if the person fails or refuses to comply with the requirement.
(5)The Commissioner may require a person to produce a document or article under paragraph (1)(c) whether the person is in or out of the patent area.
Exercise of powers in relation to bodies corporate
(6)The Commissioner’s powers in subsection (1) to make a requirement of a person extend, if the person is a body corporate, to making that requirement of any person who is an officer, agent or employee of the body corporate.”
Relevantly Section 210A of the Act provides the consequences for failing to comply with a summons or requirement under section 210:
210ASanctions for non‑compliance with Commissioner’s requirements
(1)The Commissioner may take one or more of the actions listed in subsection (2) in relation to a person if:
(a)the Commissioner summons the person to appear as a witness under paragraph 210(1)(a) or requires the person to produce a document or article under paragraph 210(1)(c); and
(b)the person refuses or fails to comply with the summons or requirement; and
(c)the Commissioner is satisfied, on the balance of probabilities, that it is appropriate in the circumstances to take the action.
(2)The actions the Commissioner may take are:
(a)if the person is an applicant for a patent—a refusal to grant the patent (see subsection 61(1); and
(b)the drawing of an inference unfavourable to the person’s interest in proceedings before the Commissioner; and
(c)actions of a kind that are prescribed by the regulations.
(3)In deciding whether it is appropriate to take the action, the Commissioner must consider the following:
(a)whether the person has a reasonable excuse for refusing or failing to comply with the summons or requirement;
(b)whether the person has been offered payment of reasonable expenses associated with complying with the summons or requirement;
(c)any other matter the Commissioner considers to be relevant.
These provisions apply to the exercise of the Commissioner’s powers on or after the commencement of Schedule 3 of the Intellectual Property Laws Amendment (Raising the Bar) Act 2012, that is, 15 April 2013. Substantially the changes brought about at that time were the insertion of subsections (2) to (6) and section 210A.
Previously section 210 (now s210(1)) was understood to incorporate a requirement for “adjectival” rather than “substantive” relevance. Justice Beaumont in this regard stated in G S Technology Pty Ltd v the Commissioner of Patents [1997] FCA 1460, (1997) 39 IPR 583:
“… I have come to the conclusion that the Commissioner's letter of 4 September 1997 does not adequately distinguish between "substantive relevance" on the one hand, and "adjectival relevance" on the other. That is to say, as Cantor J observed in Barton, whilst it would be appropriate to reject a request for the issue of a summons on the ground that the request is fanciful or purely speculative, it is true nonetheless that an applicant for the issue of a summons need not show that the documents requested are actually relevant to the matter at hand. It is sufficient, in accordance with the conventional test in this area, that the material sought by the summons is, on reasonable grounds, arguably relevant to the issues in the litigation.”
Relevant to the amending of the legislation to require a determination of substantial relevance before the Commissioner summons a person or requires production (s210(2)(a)(ii) and s210(4)(a)(ii)), the Explanatory Memorandum at pages 78-79 states
“Item 14: Oppositions – Commissioner’s powers
[s 210]
The Commissioner currently has the power to summon witnesses, receive evidence or require the production of documents or articles – section 210. These powers are usually exercised during opposition proceedings at the request of one of the parties – for example, to require a party to produce a document that the other party may wish to use in the proceedings. Currently, there are criminal sanctions for non-compliance with the Commissioner’s request.
The objective of this provision is to ensure that the Commissioner has access to the information and evidence necessary for her to come to the correct decision in an opposition proceeding.
There are problems with the current provision. Under the current provision, it is difficult for the Commissioner to refuse a request to summon a witness or require production of documents or articles, regardless of whether the oral evidence or material is likely to be of relevance or benefit to the proceedings. This introduces delays, as parties respond to, or challenge, the Commissioner’s order to produce, that are not necessarily counterbalanced by the likelihood of the material contributing to a more correct outcome from the proceedings.
The item addresses this problem by amending the Patents Act to introduce a new higher threshold test that must be satisfied before the Commissioner can exercise her power to summon witnesses, or require the production of documents or articles.
Currently, the test that must be satisfied before the Commissioner can require production is quite low – the material sought need only be ‘on reasonable grounds, arguably relevant to the issues in the litigation’.104 This results in many requests for the exercise of the power by the Commissioner, even where there is little likelihood that the material will actually assist the Commissioner to resolve the issues in dispute.
The amendment raises the threshold test to require that the Commissioner be satisfied that the document or article or oral evidence will likely be of substantial relevance before exercising her power. This is intended to permit the Commissioner to reject requests where she believes that the material is of limited relevance to the proceedings. With respect to summoning of witnesses, the provision also requires that the summoning of a witness is necessary. However, where evidence can be provided in written form, for example as a statutory declaration, then the Commissioner will request evidence be provided in this way, rather than by summoning a witness and hearing oral evidence.
The benefits of this amendment are reduced costs for the party that is the subject of the request, fewer delays in the resolution of opposition proceedings and a better focus on the material that actually is relevant to the opposition proceedings. ”
104 G S Technologies v Commissioner of Patents (1997) 39 IPR 583.
CONSIDERATION
Even before the changes brought about by the Raising the Bar Act, orders for production under section 210 were relatively rare and the summonsing of witnesses exceptional. This is perhaps not surprising given the administrative nature of proceedings before the Commissioner and the objective of a prompt and inexpensive resolution. It is also the case that, on grant of a patent, jurisdiction also lies directly with the Federal Court to adjudicate issues of validity or entitlement and cases with complex evidentiary requirements will very often be better suited to that forum.
It has further been my observation that while requests for production and summonsing of witnesses always prolong and complicate proceedings (as in this case), documents produced and the cross examination of witnesses before the Commissioner vary rarely appear to contribute to a more correct or just outcome. Nevertheless the Act provides that in suitable cases the Commissioner has the discretion to order production or the summonsing of witnesses. As amended the Act provides that this can only be done where the Commissioner is satisfied on the balance of probabilities that the evidence sought “is likely to be of substantial relevance to a matter before the Commissioner”.
Mr Cordiner at hearing suggested that these words were ambiguous and sought support for a generous interpretation of “substantial relevance” from cases well beyond the present context, for example, Dura-Post (Aust) Pty Ltd v Delnorth Pty Ltd [2009] FCAFC 81 which dealt with the meaning of a “substantial” contribution to the working of an invention.
The legislation however must be interpreted in its own context and this is abundantly clear from the provision itself and the Explanatory Memorandum which references the case in G S Technologies. Not only must “likely to be of substantial relevance” mean more than adjectival relevance, that is, arguably or apparently or potentially relevant, it must also go beyond being merely “substantive” or “actual” or “real”. A requirement, for example, that the evidence be “likely to be of actual relevance” would not go significantly beyond adjectival relevance and therefore would be inconsistent with the clear intent of the legislation. This from the EM includes that the evidence be likely to contribute to a more correct outcome in the proceedings or actually assist the Commissioner in resolving the issues in dispute.
Therefore in my view “substantial relevance” means more than just “substantive relevance” or “not of limited relevance” as suggested by Mr Cordiner. It must be something that is likely to be, if not determinative, highly significant in the determination of a relevant issue in dispute in the proceedings.
It follows that section 210 as amended is unlike the scheme for discovery and production in other jurisdictions. It is not to be invoked by one party as a general means of exploring the other party’s case and particularly is not to be used in a fishing expedition or a hunt for a ‘smoking gun’. Usually it will be necessary to identify a real and specific factual issue in dispute, not merely speculation that production or summons might reveal such a matter and a plausible basis for concluding that the order will in some way be likely to provide substantial assistance in resolving the matter. Otherwise the Commissioner cannot be satisfied on the balance of probabilities that what is sought is “likely to be of substantial relevance”.
This goes only to the minimum that is required before the Commissioner may make an order under section 210 (aside from other specific preconditions, eg a potential witness having a substantial interest). The power exercised by the Commissioner is discretionary and must only be exercised after considering the respective interests involved and the purpose of the legislation. Some relevant factors will include fairness to the respective parties, whether any order made would be onerous, delay in the resolution of the proceedings and in the granting of the patent, the correctness of the determination of the proceedings and the efficiency of IP Australia in administering the process.
The reasons given by Domino’s to support a number of its requests for production are somewhat unusual. Rather than request the production of documents to address particular questions of fact, Domino’s appears to be challenging Precision to produce documentary evidence supporting statements made by its declarants else face a negative inference that the statements are incorrect. For example, it seeks unspecified documents recording the brainstorming of the inventive concept by Precision before the meeting in November 2012 which it says should exist if Precision’s claims are valid. Domino’s therefore appears to be making the request on the assumption that the documents do not exist.
Request 2 and 3 are of this nature and should in my view be refused. Section 210 does not permit the Commissioner to order discovery. Neither is it intended to assist a party to assert that documents do not exist. Rather it is intended to allow existing documents to be produced in limited circumstances where they would provide significant assistance in a determination by the Commissioner. Consequently the Commissioner’s discretion should not be exercised in the way sought by Domino’s. Ultimately, the weight of Precision’s evidence will be determined by the Commissioner in the final determination of the matter and both parties will have ample opportunity to make submissions on the significance of the evidence that has or has not been filed in support of their respective claims.
Requests 1 and 5 relate to the email exhibited to the first Green declaration. Request 1 seeks earlier emails in the email chain because they “likely to be substantially relevant to a matter before the Commissioner, namely the conception of this inventive concept”. This appears to be mere speculation. While the email chain can be expected to concern Domino’s as a ‘Prospective client” there is nothing said in the email or by Dr Green that suggests that emails relate to the idea of customer tracking of pizza delivery. Rather the contrary seems to be the case. Consequently I have no reasonable basis to find that those emails are likely to be of substantial relevance to the matter. Rather it appears likely they concern matters that are not contested by Domino’s. Consequently I refuse Request 1.
Request 5 seeks “the electronic copy of the email” with little other information about what is sought. The email is clearly significant to the matter and I assume that this information is sought for Domino’s to test whether the copy of the email in evidence is genuine. I do consider this request to be prima facie consistent with section 210, however it is not expressed with sufficient particularity for me to be satisfied that what might be produced would meet the apparent purpose. The subject email is a “Gmail”. It would appear to me that information to test its authenticity would extend beyond “the electronic copy” and involve technical requirements that would need to be fully explained. Otherwise the requirement to produce would be futile. Consequently I am not yet satisfied that production should be required in relation to Request 5. I am however prepared to reconsider the request if a fuller explanation is provided about the information required and how that is to be used forensically to test the authenticity of the email.
Request 4 goes to statements made by Dr Green in relation to services provided to “Park and Fly”. Dr Green refers to this to support the assertion that Precision had been investigating portable tracking devices for vehicles which utilised a cigarette lighter electricity supply before working with Domino’s. While more specific than Requests 2 and 3, this request appears to have the same purpose. Domino’s do not indicate that they dispute that the work was done as indicated by Dr Green or provide any basis for doubting his evidence that would be resolved by requiring production. They do not, for example, suggest that something different was produced for “Park and Fly” other than stated by Dr Green. In the circumstances I cannot be satisfied the documents sought are likely to be of substantial relevance to the matter and therefore also refuse Request 4.
In cases involving entitlement the Commissioner has tended, under the former legislation, to be more sympathetic to requests for summons than otherwise on the basis that relevant matters of fact tend to be within the knowledge of key individuals and therefore difficult to challenge otherwise. Nevertheless the legislation provides the same requirement for witnesses as for the production of documents, that is, that they are likely to provide oral evidence of substantial relevance to a matter before the Commissioner.
Even if this could be said to apply generally to a key individual such a Dr Green ( or on Domino’s side Mr Knight) I do not consider it is intended to allow a general right to cross-examination nor would I exercise the discretion to do so on that basis. Rather I expect that an appropriate request would set out the key questions of fact in the evidence-in-chief on which the witness is to be cross-examined. I would then be in a position to determine whether the evidence on that point is likely to be of substantial relevance and that, if the cross-examination is constrained to those questions, the additional complexity and delay in the conduct of the proceedings could be limited to matters that actually assist in the resolution of the matter.
I find that the request to summons Dr Green, Mr Parrott and Mr Lasky falls well short of this but presume that this could be remedied without very significant effort. Consequently I am also prepared to reconsider the request for summons if supplemented by the specific issues of fact within the evidence in chief on which the witness would be examined.
CONCLUSION
I am not currently satisfied that notices to produce or summonses under section 210 should be issued. I have however indicated that I will reconsider Request 5 and the requests for summons if further information is provided.
While the present matter has also been delayed due to the filing of further evidence by both parties, any further unnecessary delay caused by further or amended requests for production or summons is highly undesirable. Consequently I allow Domino’s 14 days from the date of this decision to file further information consistent with my reasons in relation to the matters above. If not these requests will also be refused.
COSTS
Precision did not appear at the oral hearing or provide substantive submissions. In that light while Domino’s have been unsuccessful I make no award of costs.
P M Spann
Deputy Commissioner of Patents
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