FEDERAL COURT OF AUSTRALIA
Sovereign Hydroseal Pty Ltd v Steynberg [2020] FCA 1084
File number:
WAD 85 of 2020
Judge:
MCKERRACHER J
Date of judgment:
30 July 2020
Catchwords:
PRACTICE AND PROCEDURE – application for preliminary discovery from prospective respondent – possible patent infringement – whether prospective applicant’s belief that it may have a right to obtain relief is reasonable – Pfizer Ireland Pharmaceuticals v Samsung Bioepis Au Pty Ltd [2017] FCAFC 193 applied
Legislation:
Federal Court Rules 2011 (Cth) rr 7.23, 7.23(1)(a), 7.29
Cases cited:
MMD Design and Consultancy Limited v Camco Engineering Pty Ltd [2019] FCA 1803
Pfizer Ireland Pharmaceuticals v Samsung Bioepis Au Pty Ltd [2017] FCAFC 193; (2017) 257 FCR 62
Quanta Software International Pty Ltd v Computer Management Services Pty Ltd [2000] FCA 969
Date of hearing:
26 June 2020
Registry:
Western Australia
Division:
General Division
National Practice Area:
Intellectual Property
Sub-area:
Patents and Associated Statutes
Category:
Catchwords
Number of paragraphs:
73
Counsel for the Prospective Applicants:
Mr A Fox
Solicitor for the Prospective Applicants:
Griffith Hack Lawyers
Counsel for the Prospective Respondent:
Mr V Kalyan
Solicitor for the Prospective Respondent:
Kalyans Lawyers
ORDERS
WAD 85 of 2020
BETWEEN:
SOVEREIGN HYDROSEAL PTY LTD ACN 123 696 926
First Prospective Applicant
RELBORGN PTY LTD ACN 114 303 847
Second Prospective Applicant
TRIOMVIRI PTY LTD ACN 114 303 650
Third Prospective Applicant
AND:
JOHANNES MACHIEL STEYNBERG
Prospective Respondent
JUDGE:
MCKERRACHER J
DATE OF ORDER:
30 july 2020
THE COURT ORDERS THAT:
1. Within 14 days of the date of these orders, the parties are to file either:
(a) An agreed minute of orders reflecting the outcome of these reasons, that the prospective applicants are entitled to the discovery orders they seek subject to the provision of security for the costs of compliance or a sufficient reduction in the scope of the orders; or
(b) Minutes of competing orders.
2. Within 14 days of the date of these orders, the parties are to file any submissions (not to exceed 3 pages) on the question of the costs of the application.
3. Unless the Court orders otherwise, the settling of the orders and the question of costs be determined on the papers.
REASONS FOR JUDGMENT
MCKERRACHER J:
A PRELIMINARY DISCOVERY APPLICATION
Pursuant to r 7.23 of the Federal Court Rules 2011 (Cth), the prospective applicants seek an order for preliminary discovery of documents to be produced by the prospective respondent (Mr Steynberg), who is a former employee of the first prospective applicant (Sovereign).
Mr Steynberg strenuously opposes the application for a number of reasons.
Sovereign is the exclusive licensee of Australian Standard Patent No. 2012216392 for the invention entitled ‘Method and Composition for Sealing Passages’ (392 Patent). Triomviri Pty Ltd and Relborgn Pty Ltd, (the second and third prospective applicants) are the joint patentees of the 392 Patent. The prospective applicants are referred to collectively as ‘Sovereign’.
Sovereign seeks documents…
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- Case
- [2020] FCA 1084
- Decision Date
CaseChat Overview and Summary
The central legal issue was whether the prospective applicant's belief about having a potential right to relief was reasonable, which is a threshold requirement for granting preliminary discovery orders. The court had to consider whether the prospective applicant's belief was based on sufficient evidence and whether it was reasonable for them to hold such a belief.
In determining that the prospective applicant's belief was reasonable, the court applied the principles from Pfizer Ireland Pharmaceuticals v Samsung Bioepis Au Pty Ltd [2017] FCAFC 193. The court found that the prospective applicant's belief was based on evidence suggesting a likelihood of patent infringement, and it was reasonable for the prospective applicant to hold this belief. Consequently, the court granted the discovery orders sought by the prospective applicant, subject to the provision of security for the costs of compliance or a sufficient reduction in the scope of the orders.
The orders required the parties to either agree on a minute of orders reflecting the outcome of the reasons provided or to file competing minutes within 14 days. Additionally, the parties were to submit any relevant submissions on the costs of the application, not to exceed three pages. Unless otherwise ordered by the court, the settling of the orders and the question of costs were to be determined on the papers.
Orders
Orders of the court
1. Within 14 days of the date of these orders, the parties are to file either:
(a) An agreed minute of orders reflecting the outcome of these reasons, that the prospective applicants are entitled to the discovery orders they seek subject to the provision of security for the costs of compliance or a sufficient reduction in the scope of the orders; or
(b) Minutes of competing orders.
2. Within 14 days of the date of these orders, the parties are to file any submissions (not to exceed 3 pages) on the question of the costs of the application.
3. Unless the Court orders otherwise, the settling of the orders and the question of costs be determined on the papers.
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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