Minnesota Mining and Manufacturing Co v C. Jeffries Pty Ltd trade as Seibulite of Australia Ltd

[1990] FCA 843

JUDGMENT No. ..& 22 ....., I .&.g.

NOT SUITABLE FOR DISTRIBUTION

IN THE FEDERAL COURT OF AUSTRALIA	)
)
NEW SOUTH WALES DISTRICT REGISTRY )	No. NG 638 of 1989

)

GENERAL DIVISION )

BETWEEN: MINNESOTA MINING &

MANUFACTURING CO.

Applicant

AND:  C. JEFFRIES PTY LIMITED trading as SEIBULITE OF AUSTRALIA LIMITED

First Respondent

AND:  SEIBULITE INTERNATIONAL
INC.

Second Respondent

AND: SEIBU POLYMER CHEMICAL

INDUSTRY CO. LIMITED

Third Respondent

CORAM: Burchett J.
PLACE: Sydney

DATE : 26 March 1990

EX TEMPORE REASONS FOR JUDGMENT

BURCHETT J.

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By notice of motion, the applicant seeks a variation of interlocutory orders made with a view to the inspection by an expert of a manufacturing process in what I will call the respondentst factory in Japan, the taking of samples, and the performance of experiments with reference to those samples. The original order provided for confidentiality. What is sought by way of variation is that the expert who takes the samples should be permitted to hand over some of the samples,

LIBRARY

FEDERAL COURT
OF AUSTRALIA

2       JAN ^ "̂':

relevant information as to their precise provenance, to a certain Dr DeVries, an expert who has already been retained by the applicant.

Dr DeVries is resident in the United States of America, and he was an expert witness in proceedings between the applicant and parties representing the same Japanese manufacturer, which were fought in an administrative tribunal, in that country, the United States International Trade Commission. He is bound by an obligation as to confidentiality in respect of information

'v obtained by him in those proceedings. It has been suggested that, in making disclosures in an affidavit in the present case, Dr DeVries put himself in breach of his confidentiality obligation towards the United States tribunal. On the ground of that allegation, the respondents objected, in an earlier interlocutory proceeding which came before Gummow J., to Dr DeVries being nominated as an expert to take part in the inspection of the factory in Japan and in the taking of samples there. On 22 February 1990, Gummow J. delivered an ex tempore judgment in which he deleted the name of Dr DeVries from an earlier order in respect of that matter. During the hearing before me, both parties referred to his Honour's reasons which,	unfortunately, were not available at the time of the argument,	but which I have now had an opportunity to read. His Honour
makes reference to the objection of the respondents that they lack the confidence which they should have in Dr DeVries "if [they are] to be subjected to what is in effect an intrusion upon the possession and occupation of [their] premises and the conduct of [their] business operations there." He discusses the alleged breach of confidentiality, and makes the comment:

"On the material that is before me, it certainly would appear at this stage to be the case that any infringement of the order on the expert's part was not of a contumacious character. But I say no more about it at this stage. Nevertheless, the respondents submit that the order ... is one from which they should be released, in so far as it obliges them to permit Dr DeVries to enter their premises for the purposes specified in that order.

They say that the information that would be involved is highly confidential; that they have been brought here as defendants; that the expert is not immediately amenable to the jurisdiction of this Court and that where there is any reasonable doubt in their mind as to the acceptability of this gentleman, they would not be obliged to accept him. It is put that this would be so, even if there were no contumacious or intentional misconduct by the expert in the events complained of in the United States proceedings."

Gummow J. dealt only with the question whether the respondents should be compelled to accept an intrusion into their premises of an expert against whom they had taken a particular objection. Although he thought any infringement which may have occurred (and the matter was dealt with on the basis of an allegation, not on the basis that an infringement had actually

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occurred) "was not of a contumacious character", he accepted a

submission that, even so, the respondents were entitled in the
circumstances to object to being required to admit him to their

factory. I think it is an entirely different question to suggest that the applicants should be denied any opportunity to make use of their expert. That would equally be an intrusion into matters which are peculiarly concerned with their own rights. There has been no suggestion that Dr DeVries has communicated confidential information so as to make it commercially available to the applicant itself or to any other competitor of the respondents. Assuming there was a breach of confidentiality, it may well be that had it been appreciated, before the breach occurred, that what was about to be done would constitute a breach, and had an application been made to the United States tribunal for a variation of the obligation of confidentiality, no difficulty would have arisen. If the proceedings do not concern identical issues, at any rate they concern closely related issues, and I think there would be an unfairness to the applicant if the respondents were permitted to frustrate the use by the applicant of an expert with some continuity of knowledge (I refer to knowledge he is entitled use) while, of course, their own experts would enjoy both continuity of knowledge and a thorough familiarity with all the processes they utilize and have utilized.

If I may respectfully say so, I am in complete agreement with what Gummow J. has written. However, I do not think it governs the present application, which I am prepared to grant.

The other issue raised before me is whether the applicant should be required to furnish more precise details of	the experiments it wishes to carry out. It has furnished
details, and claims that it should not be required to reduce them to any greater measure of precision before it has even seen the processes or obtained the samples upon which it wishes to perform experiments. In my opinion, this question should be solved by a two-tiered approach. I have examined the particulars already
supplied of what is proposed to be done in Japan. I do not think the applicant should be required to provide further details of those matters at this stage. If it decides to perform any further or other experiment, beyond what has already been the subject of notice, it should of course supply similar details of that. But what is presently intended is that, after samples have been subjected to certain tests immediately, and before the applicant's experts have left Japan, further experimentation will be undertaken in Australia. Before that further experimentation is so undertaken, the applicant's experts will, of course, have

W had an ample opportunity to consider the samples and decide with precision both the nature of any tests to which they should be subjected and also precisely what they expect to be able to ascertain from those tests. I think that at that stage the applicant should give the respondents adequate notice, not only of the time and place of any experiments and of their nature, but also of the particular matters to which each experiment will be addressed. If there is any difficulty about the adequacy of the notice, that will be the occasion for any debate about it before the court. I shall dispose of the respondentsr notice of motion

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I direct that the applicant bring in short minutes of appropriate orders on a date to be fixed to reflect my reasons in respect of each notice of motion. At that time I shall hear the parties as to costs.

I certify that this and the preceding four (4) pages are

a true copy of the Reasons for Judgment herein of his

Honour Mr Justice Burchett.

Dated: 26 March 1990 Associate