FEDERAL COURT OF AUSTRALIA
DSM Nutritional Products, LLC v Suntory Holdings Limited [2013] FCA 474
Citation: DSM Nutritional Products, LLC v Suntory Holdings Limited [2013] FCA 474 Parties: DSM NUTRITIONAL PRODUCTS, LLC v SUNTORY HOLDINGS LIMITED File number: VID 1029 of 2012 Judge: NORTH J Date of judgment: 7 May 2013 Corrigendum: 23 May 2013 Date of hearing: 9 April 2013 and 7 May 2013 Place: Melbourne Division: GENERAL DIVISION Category: No catchwords Number of paragraphs: 2 Counsel for the Applicant: Ms C Cochrane Solicitor for the Applicant: Allens Counsel for the Respondent: Ms K Howard SC with Mr T Cordiner Counsel for the Respondent: Griffith Hack Lawyers FEDERAL COURT OF AUSTRALIA
DSM Nutritional Products, LLC v Suntory Holdings Limited [2013] FCA 474
CORRIGENDUM
1.The orders of the Court should read:
1.The application made by DSM Nutritional Products, LLC for discovery of Suntory Holding Limited’s research and development documents is refused.
2.Any affidavit to be relied upon by DSM Nutritional Products, LLC in the appeal be filed and served by 30 September 2013.
3.The directions hearing is adjourned to 10.15 am on 7 October 2013.
4.The application by DSM Nutritional Products, LLC for a stay is adjourned to 10.14 am on 7 October 2013.
5.DMS Nutritional Products, LLC to pay Suntory Holding Limited’s costs of the application for discovery.
I certify that the preceding one (1) numbered paragraphs are a true copy of the Corrigendum of the Reasons for Judgment herein of the Honourable Justice North. Associate:
Dated: 23 May 2013
IN THE FEDERAL COURT OF AUSTRALIA
VICTORIA DISTRICT REGISTRY
GENERAL DIVISION
VID 1029 of 2012
BETWEEN: DSM NUTRITIONAL PRODUCTS, LLC
Applicant
AND: SUNTORY HOLDINGS LIMITED
Respondent
JUDGE:
NORTH J
DATE OF ORDER:
7 MAY 2013
WHERE MADE:
MELBOURNE
THE COURT ORDERS THAT:
1.The application made by DSM Nutritional Products, LLC for discovery of Suntory Holding Limited’s research and development documents is refused.
2.DMS Nutritional Products, LLC pay Suntory Holding Limited’s costs of the application for discovery.
Note:Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.
IN THE FEDERAL COURT OF AUSTRALIA
VICTORIA DISTRICT REGISTRY
GENERAL DIVISION
VID 1029 of 2012
BETWEEN: DSM NUTRITIONAL PRODUCTS, LLC
Applicant
AND: SUNTORY HOLDINGS LIMITED
Respondent
JUDGE:
NORTH J
DATE:
7 MAY 2013
PLACE:
MELBOURNE
REASONS FOR JUDGMENT
The amended application filed on 8 April 2013 by the applicant, DSM Nutritional Products, LLC for discovery of the research and development documents of the respondent Suntory Holding Limited should be refused with costs.
The research and development documents of the respondent are at best of secondary relevance to the issues in the proceeding. The documents do not address the common general knowledge in Australia but at best address knowledge in Japan. They have not been sought previously in the detailed proceedings before the Commissioner of Patents. Further, it would be disproportionate to order such discovery in view of the evidence of the difficulties of procuring those documents, which evidence I accept.
I certify that the preceding two (2) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice North. Associate:
Dated: 21 May 2013
- AGLC
- DSM Nutritional Products, LLC v Suntory Holdings Limited [2013] FCA 474
- Case
- [2013] FCA 474
- Decision Date
CaseChat Overview and Summary
The primary legal issue before the court was whether the research and development documents sought by DSM were relevant to the patent dispute and whether such discovery was proportionate. The court needed to weigh the relevance of the documents against the potential burden and cost to the respondent in producing them. The court also had to consider whether the documents had been sought previously and if they were likely to provide information that was already known or could be reasonably obtained through other means.
North J held that the research and development documents were of secondary relevance to the issues in the patent dispute. The court found that the documents primarily addressed knowledge in Japan, which was not directly relevant to the common general knowledge in Australia. Furthermore, the court noted that these documents had not been sought previously in the detailed proceedings before the Commissioner of Patents, and it would be disproportionate to order their discovery given the difficulties in procuring them. The court accepted the evidence presented regarding the challenges in obtaining the documents. Consequently, the court ruled that the application for discovery should be refused.
The Federal Court ordered that the application for discovery be refused, and DSM Nutritional Products, LLC was required to pay Suntory Holdings Limited’s costs of the application for discovery. The directions hearing and the application for a stay were adjourned to a later date, as detailed in the corrigendum of the Reasons for Judgment.
Orders
Orders of the court
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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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