Dyno Nobel Inc v Orica Explosives Technology Pty Ltd
[2019] FCA 258
•19 February 2019
FEDERAL COURT OF AUSTRALIA
Dyno Nobel Inc v Orica Explosives Technology Pty Ltd [2019] FCA 258
File number: NSD 1500 of 2017 Judge: BURLEY J Date of judgment: 19 February 2019 Catchwords: PRACTICE AND PROCEDURE – discovery – where indirect infringement, authorisation and joint tortfeasorship alleged in relation to a process patent – where liability is denied on the basis that the nature of the alleged infringer’s involvement not sufficient to give rise to liability – where a process description is proffered by the alleged infringer in lieu of discovery but is contested – application granted Legislation: Federal Court Rules 2011 (Cth), r 20.14 Date of hearing: 19 February 2019 Registry: New South Wales Division: General Division National Practice Area: Intellectual Property Sub-area: Patents and Associated Statutes Category: Catchwords Number of paragraphs: 25 Counsel for the Applicant and Cross-Respondents: Ms C Cochrane with Mr D Harris Solicitor for the Applicant and Cross-Respondents: Shelston IP Lawyers Counsel for the Respondent and Cross-Claimants: Mr N Murray SC with Dr W Rothnie Solicitor for the Respondent and Cross-Claimants: Davies Collison Cave Law Pty Ltd ORDERS
NSD 1500 of 2017 BETWEEN: DYNO NOBEL INC
Applicant and First Cross-Respondent
DYNO NOBEL ASIA PACIFIC PTY LTD (ACN 003 269 010)
Second Cross-RespondentAND: ORICA EXPLOSIVES TECHNOLOGY PTY LTD
Respondent and First Cross-Claimant
ORICA INTERNATIONAL PTE LTD (Singapore Company Registration No. 20080258K)
Second Cross-Claimant
JUDGE:
BURLEY J
DATE OF ORDER:
20 FEBRUARY 2019
THE COURT ORDERS THAT:
1.The Applicant/Cross-respondents (Dyno) give standard discovery of:
(a)the documents underlying Dyno’s Further Process Description dated 28 September 2018 (FPD), by 8 March 2019;
(b)documents falling within category 3 listed in Annexure A to this Order, by 29 March 2019; and
(c)documents falling within the categories 1 and 2 listed in Annexure A to this Order, by 10 May 2019,
subject to the confidentiality regime agreed by the parties for this proceeding restricting access to those documents and their contents to external Australian legal practitioners (including legal graduates), Australian external barristers, Australian external patent attorneys and external independent experts, retained by the Respondent / Cross-claimants (Orica) in this proceeding, who have given signed undertakings in the agreed form.
2.By 29 March 2019, Dyno serve on Orica a summary document identifying each Mine, identified by pseudonym, at which blasts referred to at paragraph 10 (a) (i) – (iv) of Dyno's Amended Defence to Cross-claim dated 24 July 2018 (Paragraph 10 Blasts) took place and for each Mine and each Paragraph 10 Blast at the Mine:
(a)the date of the Paragraph 10 Blast;
(b)the Blast Type (as defined in the FPD); and
(c)whether Dyno's involvement in the Paragraph 10 Blast was Type A, B, C, D, E, F or G Blast Involvement (as referred to in the FPD).
Evidence on infringement
3.The date specified in paragraph 2 of the orders made on 9 August 2018 for Orica to file any evidence in support of their cross-claim for patent infringement, including any independent expert affidavits or reports, as extended by paragraph 1 of the orders made on 22 November 2018, be extended to 11 June 2019.
3A. By 11 June 2019, Orica provide Dyno with a marked-up version of the FPD
indicating:
(a)which parts of that document Orica accepts as accurately stating Dyno’s involvement in the Blasts (as referred to in the FPD); and
(b)any changes, deletions or additions to that document that Orica considers necessary to accurately state Dyno’s involvement in the Blasts (as referred to in the FPD).
4.The date specified in paragraph 3 of the orders made on 9 August 2018 for Dyno to file any affidavit evidence in answer on patent infringement, including any independent expert affidavits or reports, be extended to 8 July 2019.
5.The date specified in paragraph 4 of the orders made on 9 August 2018 for Orica to file any affidavits in reply on patent infringement, limited to factual matters, be extended to 5 August 2019.
Technical Primer
6.By 26 March 2019, Orica provide Dyno with a marked-up version of the technical primer and glossary served by Dyno's solicitors on 13 February 2019 indicating:
(a)which parts of that document Orica accepts as stating accurately matters forming part of the common general knowledge in the relevant art(s) at the priority date; and
(b)any changes, deletions or additions to that document that Orica considers necessary to accurately state matters forming part of the common general knowledge in the relevant art(s) at the priority date.
7.The orders in paragraph 2 of the orders made on 23 August 2018 and paragraph 2 of the orders made on 22 November 2018 be vacated.
8.By 26 June 2019, the parties confer with a view to reaching agreement on the final form of the:
(a)FPD; and
(b)technical primer and glossary, which is to be taken as an agreed statement of matters forming part of the common general knowledge in the relevant art(s) at the priority date (Technical Primer).
9.By 28 June 2019, Dyno is to file the FPD and the Technical Primer. If there are matters in the FPD on which the parties do not agree, the document should clearly indicate each party’s position in respect of those matters.
Joint Expert Reports
10.The parties, by their counsel, confer with a view to reaching agreement by no later than 2 August 2019 in relation to the following matters:
(a)which of the parties’ expert witnesses ought to be involved in the preparation of a joint expert report or joint expert reports; and
(b)the general topics that the expert witnesses (or each pair or group of expert witnesses) participating in the preparation of the joint expert report (or each joint expert report), are to discuss,
provided that, if agreement cannot be reached by 2 August 2018, the parties approach the Court to resolve any such disagreement.
11.By 16 August 2019, each pair or group of expert witnesses, as agreed by the parties or otherwise determined by the Court, confer (by such means as they consider appropriate) to:
(a)identify those matters which they regard as significant upon which they agree and those matters on which they differ; and
(b)prepare and provide to the parties’ respective instructing solicitors a joint report signed by each of them for the Court recording the matters on which they agree and disagree and, with respect to the latter, a brief explanation by each of them of the basis upon which their views differ.
12.By 19 August 2019, the parties file the joint expert report or joint expert reports.
Court Book
13.By 5 August 2019, Dyno is to provide to Orica a draft index to a Court Book.
14.By 12 August 2019, Orica is to notify Dyno of any comments or amendments they have on the draft index to the Court Book.
15.By 23 August 2019, Dyno is to:
(a)provide 2 x hard copies and 2 x electronic copies of the Court Book to Justice Burley’s Associate; and
(b)serve on Orica a hard copy and electronic copy of the Court Book,
in a form to be discussed at the case management hearing referred to in order 24 below.
Evidence
16.By 12 August 2019, the parties are to exchange, and provide to Burley J's Associate, lists of deponents who are required for cross-examination.
17.By 12 August 2019, the parties are to notify objections to affidavits and legal representatives are to confer with a view to resolving objections to affidavits.
18.By 27 August 2019, the parties are to exchange and provide to Burley J's Associate, a list of objections to affidavits and documents that are unable to be resolved by agreement, including in each case the basis for the objection, including reference to relevant sections of the Evidence Act 1995 (Cth).
Submissions and authorities
19.By 27 August 2019,
(a)Dyno is to file and serve its outline of opening submissions on validity, limited to 15 pages; and
(b)Orica is to file and serve an outline of its opening submissions on infringement, limited to 15 pages.
20.By 3 September 2019,
(a)Orica is to file and serve its outline of opening submissions in answer, limited to 15 pages; and
(b)Dyno is to file and serve its outline of opening submissions in answer, limited to 15 pages.
21.By 6 September 2019, the parties are to provide to Burley J's Associate an agreed bundle of authorities in electronic format.
Other
22.Paragraphs 12, 13 and 14 of the orders made on:
(a)18 July 2018; and
(b)16 March 2018,
be vacated.
23.Dyno pays Orica's costs of the Interlocutory Application filed on 3 December 2018.
24.The proceeding be listed for a case management hearing on 19 July 2019.
Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.
Annexure A – Discovery categories
In these Discovery categories:
(i)a reference to “Dyno” is a reference to each Cross-respondent and its related bodies corporate (as defined in the Corporations Act 2001)
(ii)"Paragraph 10 Blast" means each blast referred to in paragraphs 10 (a)(i) – (iv) of Dyno's Amended Defence to Cross-claim dated 24 July 2018.
1.Documents recording or evidencing the terms of any agreement, arrangement or understanding between Dyno and a Mine in respect of the conduct of a Paragraph 10 Blast.
2.Documents recording or evidencing instructions, directions, advice, recommendations or suggestions:
(a)provided by or on behalf of Dyno to a Mine; or
(b)provided by or on behalf of a Mine to Dyno,
in respect of the technical objectives, features or conduct of a Paragraph 10 Blast including any proposals, templates, guidelines, presentations, marketing materials or reports.
3.Marketing materials, presentations, reports or other promotional materials made available to the public by or on behalf of Dyno in relation to Paragraph 10 Blasts.
REASONS FOR JUDGMENT
Revised from TranscriptBURLEY J:
These proceedings were commenced by Dyno Nobel Inc against Orica Explosives Technology Pty Ltd for the revocation of Australian Patent No 2004293486 which is entitled “Method of blasting multiple layers or levels of rock” (486 patent). A cross-claim was then filed by the respondent and Orica International Pte Ltd (collectively, Orica) against the applicant and Dyno Nobel Asia Pacific Pty Ltd (DNAP) (collectively, Dyno) for the alleged infringement of a number of the claims of the 486 patent, each of which, as the title of the patent suggests, is for a method of blasting rock.
For present purposes, it is sufficient to set out the terms of claim 1 of the 486 patent:
In open cut mining for recoverable mineral, a method of blasting plural layers of material in a blast field including a first body of material comprising at least a first layer of material and a second body of material comprising at least a second layer of material over the first body of material, the blast field having at least one free face at the level of the second body of material, the method comprising drilling blastholes in the blast field through the second body of material and, for at least some of the blastholes, at least into the first body of material, loading the blastholes with explosives and then firing the explosives in the blastholes in a single cycle of drilling, loading and blasting at least the first and second bodies of material, wherein the first body of material is subjected to a stand-up blast in said single cycle and said second body of material is subjected to a throw blast in said single cycle whereby at least 10% of the second body of material is thrown clear of the blast field beyond the position of said at least one free face, said throw blast in the second body of material being initiated before initiation of the stand-up blast in the first body of material, wherein for blastholes having at least a respective deck of explosives in the first and second bodies of material the explosives in the second body of material are initiated at least 500 ms before initiation of the explosives in the first body of material, and wherein the first body of material is buffered in the direction of throw defined by the throw blast of the second body of material.
Orica alleges that, from a date unknown after 6 June 2005, Dyno conducted blasts in open cut coal mines in Australia. In its particulars of infringement, it identifies 4 instances of infringement being; (1) one or more blasts carried out at the Bulga Open Cut Coal mine in New South Wales; (2) one or more blasts carried out at the Mt Thorley Warkworth Open Cut Coal mine in New South Wales; (3) a blast that is the subject of a case study published by or on behalf of Dyno entitled “Through Seam Blasting” and identified as Dyno’s 2012 Blast; and (4) a further case study published in a media release by or on behalf of Dyno and identified as “Dyno’s 2015 Blast”. Although direct infringement is pleaded, as Dyno is not a mine operator, considerable focus is placed by Orica on an alternative case, namely that Dyno did not solely implement the claimed method, but by its conduct in providing blast design services and consulting services and/or supplying detonators and explosives (Blast Products) to mine operators, it breached s 117 of the Patents Act 1990 (Cth); authorised the mine operators to infringe in breach of s 13(1) of the Patents Act; and/or procured or induced the mine operators to infringe and/or joined in a common design with the mine operators.
In paragraph 10 of its amended defence to the cross-claim, Dyno responds to the particulars of infringement by making a number of admissions as to its conduct and providing cross-references to a “Process Description” that it has provided, dated 24 July 2018. In the Process Description, Dyno describes 8 different blast types, identified by numbers 1.1, 1.2, 2.1, 2.2, 2.3, 3.1, 3.2, 3.3. For these 8 blast types, the Process Description then describes in outline form the type of involvement that Dyno had in the execution of the blasts. There are 7 different “types” of “blast involvement”, which are identified in the Process Description as being Type A to Type G.
For example, for Type A the listing given is:
Type A Blast Involvement
Blasts in which the following steps in the General Blasting Process, subject to the variations described below, were undertaken by employees of, or independent contractors engaged by, the mine site operator (Mine) or by Dyno as follows:
a. Modelling – Mine.
b. Design of Drilling Pattern – Mine.
c. Design of Loading – Mine.
d. Design of Initiation Timing – Mine.
e. Review of Blast Design – Mine.
f. Drilling – Mine.
g. Supply of Detonators – Dyno.
h. Supply of Bulk Explosives – Dyno. Supply-Only.
i. Loading of Detonators and Boosters – Mine.
j. Loading of Bulk Explosives – Mine.
k. Testing of Detonators – Mine.
l. Tying-In – Mine.
m. Setting of Detonator Times – Mine.
n. Installation Testing – Mine.
o. Firing – Mine.
p. Post Blast Clearance – Mine.
q. Blast Measurements – Mine.
Type A Blast Involvement occurred in Blast Type 1.2.
Many of the terms in this list are the subject of definition provided earlier in the Process Description.
The Process Description was prepared by Dyno in order to meet the requirements of Federal Court Practice Note IP-1 at [6.14] – [6.16] and, at least in part, to head off the present application for discovery. It was verified by Robert Rounsley, Chief Technology Officer of Incitec Pivot Ltd, the parent company of Dyno.
On 2 August 2018, Orica filed an interlocutory application seeking discovery of documents going to the arrangements between Dyno and its customers, being the mine operators, for each of the individual types of blast identified in its particulars of infringement (First IA). Orica justified the breadth of this request on the basis that, in order to prove infringement, it will need to show that Dyno has acted in concert with the mine operators as a part of some form of common design or otherwise establishing indirect infringement.
The First IA was heard in August 2018. Dyno relied, inter alia, on an affidavit sworn on 6 August 2018 by Mr Duncan Longstaff, a solicitor representing Dyno who is employed by Shelston IP Lawyers. In it, he set out, on information and belief, the basis upon which Dyno contended that compliance with the discovery orders sought would be oppressive. At the hearing, counsel representing Dyno submitted that the application was premature and that had Orica indicated the deficiencies with the Process Description prior to filing the First IA, Dyno would have provided a further document to address them. Counsel for Orica initially opposed a course that would involve the provision of a further process description, but ultimately accepted (whilst expressing scepticism as to the likely outcome) that Dyno should have a further chance to provide such a document at the same time reserving its position as to the need for production of documents.
On 28 September 2018, Dyno filed a Further Process Description. The parties then engaged in lengthy correspondence about its adequacy. Ultimately, Orica was not satisfied and, on 2 December 2018, filed its current interlocutory application seeking discovery (Second IA). On 14 February 2019, shortly before the interlocutory hearing, the Second IA was refined to seek the following documents:
In these Discovery categories:
(i)a reference to “Dyno” is a reference to each Cross-respondent and its related bodies corporate (as defined in the Corporations Act 2001)
(ii)“Paragraph 10 Blast” means each blast referred to in paragraphs 10 (a)(i) — (iv) of Dyno's Amended Defence to Cross-claim dated 24 July 2018.
1. Documents recording or evidencing the terms of any agreement, arrangement or understanding between Dyno and a Mine in respect of the conduct of a Paragraph 10 Blast.
2. Documents recording or evidencing instructions, directions, advice, recommendations or suggestions:
(a) provided by or on behalf of Dyno to a Mine; or
(b) provided by or on behalf of a Mine to Dyno, in respect of the technical objectives, features or conduct of a Paragraph 10 Blast including any proposals, templates, guidelines, presentations, marketing materials or reports.
3.Marketing materials, presentations,
orreports or other promotional materials made available to the public by or on behalf of Dyno in relation to Paragraph 10 Blasts.:In addition, Orica seeks an order:
That by 29 March 2019, Dyno serve on the Respondent / Cross-claimants (Orica) a summary document identifying each Mine at which blasts referred to at paragraph 10 (a) (i) — (iv) of Dyno's Amended Defence to Cross-claim dated 24 July 2018 (Paragraph 10 Blasts) took place and for each Mine and each Paragraph 10 Blast at the Mine:
(a) the date of the Paragraph 10 Blast;
(b) the Blast Type (as defined in Dyno's Further Process Description dated 28 September 2018 (FPD)); and
(c) whether Dyno's involvement in the Paragraph 10 Blast was Type A, B, C, D, E, F or G Blast Involvement (as referred to in the FPD).
Orica’s position in relation to the application is summarised in an affidavit sworn on 4 December 2018, by its solicitor, Mr Ian Pascarl, a principal of the incorporated firm Davies Collison Cave Law Pty Ltd. The affidavit accurately points out that Dyno has admitted that DNAP has supplied the Blast Products; and, in a number of unspecified instances, collaborated in the design of or otherwise provided blast design, consulting and other services for blasts which had all of the features of the asserted claims. These blasts are identified in the Further Process Description as blast types 1.2, 2.2, 2.3, 3.2 and 3.3. However, Dyno has denied that any of these admitted activities infringed the 486 patent on the basis that the nature of its involvement does not give rise to liability for either direct or indirect infringement (I note parenthetically that Dyno also asserts that it does not infringe because all of the claims are invalid). Furthermore, Orica submits that while Dyno admits that its conduct was engaged in without the licence of Orica, Dyno states that it does not know and therefore cannot admit whether the conduct alleged to have been engaged in by the Blast Customers was without Orica’s licence or authority.
In circumstances where the indirect infringement issues concern the role that Dyno had in collaborating with the Blast Customers, Orica contends that it should have an opportunity to test that conduct by reference to such documents as Dyno is able to produce. In this regard, Orica provides confidential evidence that the revenue and profit from Orica’s commercial embodiment of the claimed methods is likely to be many hundreds of thousands of dollars. Orica submits that it is accordingly a proportionate measure to require discovery within the categories sought.
Dyno submits; that the proposed discovery is burdensome and oppressive; that it involves providing highly confidential documents to Orica, which is in effect its only competitor in the market; that it will likely jeopardise the trial, which is listed for hearing over 3 weeks from 9 September 2019; and that it will be a remedy that is disproportionate to any forensic benefit that may be obtained. This, it submits, is particularly so given the present state of Orica’s evidence in support of its infringement claim and the costs that Dyno has devoted to preparing the Further Process Description. In relation to Orica’s evidence, Dyno submits that the evidence of Orica’s independent expert, Mr Jeff Hanlon, is that Dyno’s level of Blast Involvement for Types B- G was “substantial” or “very substantial”, and it is unclear how the discovery process could materially add to Orica’s case in this respect.
In my view there are a number of reasons why some form of discovery should be ordered:
(1)When the matter was before the Court in August 2018, Dyno contended that the application was premature, and that a Further Process Description would be able to deal with the difficulties identified by Orica’s expert. Dyno expressed confidence that this would avoid the confidentiality concerns that it had about providing the requested documents and address technical issues that Orica had raised. It was made clear at that point that Dyno adopted the risk of failing to do so, in which case discovery was a likely outcome. The Further Process Description has not succeeded in its aim.
(2)It is unnecessary to go into great detail as to the content of the Process Description or the Further Process Description. Taking the Type B Blast Involvement as an example in the Process Description, for item “(d) Design of Initiating Timing”, Dyno admitted a degree of collaboration with the mine. The entry provided:
d.Design of Initiating Timing – Mine and Dyno collaborated in producing design, and Dyno entered the agreed design into Blast design software.
Orica complained that this statement, and other similar entries, were insufficient for it to be able to test, in a contested hearing, the extent of collaboration in circumstances where Dyno disputed that it would be indirectly liable for patent infringement.
In the Further Process Description, the entry for “d” was augmented. In addition to the passage quoted above, Dyno said:
Exemplification of step d. in a Blast representative Type B Blast involvement that falls within each of Blast Types 1.1, 2.2 and 3.2 (Exemplar Blast B.1)
(A)The Mine, by its drill and blast engineer, informed a Dyno technical consultant of the Mine’s Blasting objectives, the Mines Design of Drilling Pattern, the Mine’s Design of Loading and details of the Bench to be Blasted, in-person at the Mine’s site, orally and by showing the Dyno technical consultant documents on the drill and blast engineer’s laptop computer screen.
[three further paragraphs of similar detail follow]
The difficulty with this aspect of the document is that Orica contends that the description provided is tendentious. It sets out the collaboration from the perspective of Dyno, but leaves Orica in no position to test the accuracy of the description. Furthermore, to the extent that Dyno contends that the steps listed for the Type Blast B involve an “exemplar blast B.1” that characterisation is also criticised by Orica as tendentious. Whilst that criticism may not be justified, Orica is entitled to test the proposition. It may be that, for the purpose of the conduct of the hearing, the involvement of Dyno in certain blasts will be agreed to have representative characteristics, but that can only sensibly occur after Orica has considered whether it is indeed representative by reference to such documents as are available. In my view, it would not be just in all of the circumstances for the matter to proceed to trial on the basis that the only evidence upon which Orica may rely on going to its indirect infringement case is the Further Process Description authored by Dyno. Whilst the description may be entirely accurate, Orica is entitled to be in a position to test whether or not that is so.
(3)In order to produce the Further Process Description, Dyno must have had access to contemporaneous documents relevant to the blast types to which it refers. In correspondence between the parties, the solicitors for Dyno confirmed as much. If it did not do so, then for blasts going back years – apparently as early as 2005 – the content of the Further Process Description could contain little more than supposition on the part of its author(s). Insofar as it relies on documents to which Dyno had access, then those documents have been procured for the preparation of the Further Process Description and no doubt can be relatively easily produced.
(4)Despite the submission made as to the oppression arising from the requirement to produce the documents sought, the confidential evidence adduced by Mr Pascarl of the likely high cost and profit arising from each blast suggests that the costs of providing discovery are not disproportionate to the value of the case. It is to be noted that r 20.14(1) of the Federal Court Rules 2011 (Cth) (FCR) only requires the party to give discovery of documents which, after a reasonable search, the party is aware. Rule 20.14(3) of the FCR provides guidance as to what is a reasonable search. Unreasonable searches are not required.
(5)Furthermore, I am not persuaded by Dyno’s submission that the fact that Orica has filed evidence from Mr Hanlon going to the ultimate issue of liability diminishes the force of Orica’s entitlement to discovery. He has based his evidence on Dyno’s own characterisation of its conduct. Dyno disputes his conclusions. Orica is entitled to test the characterisation given by Dyno of its own conduct by reference to relevant documents, which may suggest a different characterisation.
(6)The concerns that Dyno has expressed as to the confidentiality of its documents are legitimate, and must be taken into account. However, where Orica has independent experts and external legal counsel, I have no doubt that suitable confidentiality orders can be made to preserve the position.
Questions about the scope of discovery
I now turn to the appropriateness of the particular orders sought. In this regard, I note that Dyno has not proposed alternative categories of documents for discovery, but has resisted any production at all.
For the reasons that follow, I also consider that the orders sought by Orica should be made.
The Second IA at paragraph 2 seeks the provision of a summary document identifying (by an alias to preserve confidentiality) each mine at which the relevant blasts are said to have taken place, the date of each blast, the blast type, and which of Types A – G represented Dyno’s Blast Involvement.
As I have noted, Orica has provided particulars of infringement in respect of 4 representative blast types. Dyno responds by expanding the representative types to 8. That is further complicated by Dyno’s contention that for the 8 types of blast, Dyno’s involvement has varied in style in 7 different ways, from Type A to Type G. It is apparent from the evidence that there will be factual disputes going, in particular, to the factual underpinnings for each of Type A to Type G. I have received evidence in support of the Second IA which indicates that it may be the case that each different blast is unique. In due course, the parties will have to grapple with that and endeavour to develop a clear and succinct way by which their disagreements can be identified and resolved. In my view, the Further Process Description provides a useful platform for doing so. It is unlikely that the effort going into its preparation will be wasted. However, it cannot be in a final form and be capable of providing a template for the conduct of the proceedings, unless both parties are able to agree its content.
In order to create the Further Process Description, the information going to what involvement Dyno had in respect of each blast the subject of the particulars of infringement must have been available to Dyno. Otherwise, it would not have been possible for Dyno sensibly to have determined what amounted to representative blasts of the various types identified. Contrary to Dyno’s submission, this information is not only relevant to the question of quantum (which has been separated out). It is relevant to Orica’s case in establishing that no licence has been granted in respect of the allegedly infringing conduct. It also has relevance in ascertaining the point of time at which one blast took place relative to another. That could well be relevant, as Orica submits, in determining the degree of involvement of Dyno in the conduct of the blasts. Subject to the provision of suitable confidentiality terms, in my view it is appropriate for such a summary in the form sought in paragraph 2 of the Second IA to be provided.
In Annexure A of the Second IA, paragraph 1 seeks documents recording or evidencing the terms of any agreement, arrangement or understanding between Dyno and a mine in respect of the conduct of a Paragraph 10 Blast. In his affidavit of 19 December 2018, Mr Longstaff (on information and belief) disputes the suggestion that there would exist separate contracts relating to each blast conducted by a mine in collaboration with Dyno. He states that Dyno did not enter into such contracts but rather provides the Blast Products and consultancy services pursuant to umbrella contracts. If that is so, then the task of giving discovery in respect of this paragraph would appear to be relatively straightforward. In any event, it is apparent that such documents are relevant to the issues in dispute and directly concern the nature of Dyno’s involvement in the activities of the mines. Accordingly, production in accordance with this category is appropriate.
In paragraph 2, Orica seeks documents concerning the conduct of Paragraph 10 Blasts. The evidence adduced in support of the application from independent experts Dr Dare-Bryan and Mr Hanlon indicates that each individual blast that falls within those identified in the particulars of infringement is likely to have unique characteristics. They are blasts typically used for special or unusual conditions. Whilst that evidence is disputed by Dyno, it is apparent that, at least based on the understanding of Orica, the grouping of blasts performed using the Dyno Blast Products into categories is not straightforward. Generalisations offered by Dyno of classes of blasts may not be agreed. Orica should have an opportunity, based on information, as to whether it accepts those classes.
It seems to me that in order for Orica to advance its case, it must have access to documents within Dyno’s possession addressing the subject matter of this category. This is of course subject to the constraint identified in r 20.14(3) of the FCR. I do not accept the submission advanced by Dyno to the effect that, by permitting the Process Description and Further Process Description documents to be prepared, Orica somehow abandoned its claim to such documents.
Dyno at the hearing indicated that it does not oppose production in accordance with paragraph 3 of Annexure A to the Second IA.
During the course of argument, it was accepted that the documents underlying the preparation of the Further Process Description could be produced at relatively short notice. It is appropriate that this take place.
I certify that the preceding twenty-five (25) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Burley. Associate:
Dated: 28 February 2019
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