Speedy Gantry Hire Pty Ltd v Preston Erection Pty Ltd
[1997] FCA 517
•3 Jun 1997
NOT FOR GENERAL DISTRIBUTION
NO QUESTION OF GENERAL PRINCIPLE
IN THE FEDERAL COURT OF AUSTRALIA )
)
NEW SOUTH WALES DISTRICT REGISTRY ) No QG 182 of 1995
)
GENERAL DIVISION )
BETWEEN: SPEEDY GANTRY HIRE PTY
LIMITEDApplicant
AND:PRESTON ERECTION PTY LIMITED
First Respondent
JOHN CLEMENT PRESTON
Second Respondent
CORAM:LINDGREN J
PLACE:SYDNEY
DATE: 3 June 1997
REASONS FOR JUDGMENT
(ex tempore)
There is before the Court a motion brought by the respondents/cross-claimants by notice of motion filed on 22 May 1997 for an order for further discovery. The power of the Court which is sought to be invoked is that found in O 15, r 8, which reads as follows:
“8 Where, at any stage of the proceeding, it appears to the Court from evidence or from the nature or circumstances of the case or from any document filed in the proceeding that there are grounds for a belief that some document or class of document relating to any matter in question in the proceeding may be or may have been in the possession, custody or power of a party, the Court may order that party -
(a)to file any affidavit stating whether that document or any document of that class is or has been in his possession, custody or power and, if it has been but is not then in his possession, custody or power, when he parted with it and what has become of it; and
(b)to serve the affidavit on any other party.”
It will be noted that what must appear to the Court from evidence or from the nature or circumstances of the case or from any document filed in the proceeding, is that "there are grounds for a belief" that some document or class of document relating to any matter in question in the proceeding may be or may have been in the possession, custody or power of a party. Once that condition is satisfied the power given to the Court to make an order is available and the question arises whether the discretion to make an order should be exercised.
The proceeding was commenced by application filed on 24 November 1995 in the Queensland District Registry of the Court. The applicant seeks relief based on alleged infringement of its patent 578,176 ("the Patent"). The Patent is described as "Modular Gantry Assemblies Providing Temporary Pedestrian Thoroughfares". The Patent has a priority date of 20 February 1986. The first respondent, of which the second respondent is a director, manufactures, hires and sells gantry systems. The proceeding was transferred to the New South Wales District Registry on 6 March 1996.
Although a wider range of documents was sought to be discovered in the notice of motion, the dispute has resolved itself into one over six categories of documents, and it is possible for me to address only those. I should note that the applicant filed a supplementary list of documents on 8 May 1997.
The respondents’ motion is supported by an affidavit of Yves Raphael Hazan, sworn 20 May 1997. Mr Hazan is the solicitor for the respondents/cross-claimants. The evidence read in opposition to the motion is that of Anthony James Bennett, a member of the firm Bennett & Philp, the solicitors for the applicant, sworn 21 May 1997, an affidavit of Bernhard Helmer, sworn 20 May 1997, and an affidavit of Neil Mathairs Nielsen, sworn 20 May 1997.
Mr Helmer is the general manager of the applicant. Mr Nielsen is the managing director of the applicant. He was the actual inventor. By a declaration dated 23 February 1987 he declared that he assigned the invention to the present applicant, apparently in the second half of 1985. He was also a director of a company called variously “Denivel Constructions Pty Limited”, “Denivel Destructions Pty Limited” and “Denivel Demolitions Pty Ltd” (I will refer to it as "Denivel") which was registered on 27 June 1985. The applicant was registered on 16 August 1985.
Assignment
The first category of documents sought is the assignment from Mr Nielsen to the applicant. The respondents point out that Mr Bennett, in para 9 of his affidavit, and Mr Nielsen in sub-para 7 (1) of his affidavit, suggest the existence of an assignment document. While it is true that these paragraphs make such a suggestion, they also provide evidence that neither person has been able to find a document of assignment. I should perhaps note that there is no issue raised on the pleadings as to the assignment, although I do not think this is necessarily an answer, since it is perhaps conceivable that inspection of the assignment may open up a line of inquiry or a course of cross-examination. Mr Nielsen says in sub-para 7 (1) of his affidavit, that despite a thorough search he has not been able to find a copy of the assignment document. I do not think that an order should be made which would in substance have the effect only of eliciting that evidence again.
“Patent Attorney file”
The second category of document sought is the "Patent Attorney’s file". Again, Mr Bennett acknowledges the existence of such a file. In para 10 of his affidavit he goes into the question of the existence and present location of the file in some detail. For example, he gives an account of the succession of firms of patent attorneys which have been involved in patent applications on behalf of the applicant. He concludes:
“Although we have approached these firms, we have not been able to locate the file for the subject patent application.”
I would not order the applicant, in effect, to file a list which would, in substance, say the same thing again.
Employment Records Relating to Mr Nielsen
The third category of document is employment records regarding Mr Nielsen. It is submitted for the respondents that these documents are relevant to the question, "who truly owns this patent". One particular matter that has given rise to suspicion in this respect is that there is a letter in existence dated 19 November 1986 from the Queensland Division of Occupational Safety to Denivel. This has raised a question in the minds of the respondents and their advisers as to whether, perhaps, Denivel, rather than the applicant, is the owner of the Patent, and perhaps as to whether Denivel, rather than Mr Nielsen, was entitled to assign it.
However, Mr Nielsen, in sub-para 7 (8) of his affidavit, explains the position. He says that his company, Denivel was involved in the demolition business. He says that he does not know why the Division of Occupational Safety wrote to Denivel, which has never been involved in the gantry business. He suggests that a possible explanation is that inspectors within the Division would have been accustomed to dealing with Mr Nielsen through Denivel, because Denivel was well known at the time. I would not, in the circumstances, order that a list be filed in the light of the evidence which has been furnished.
Photographs
The next three categories can be quickly disposed of. The fourth category is photographs. There is evidence that the photographs sought do not exist. The respondents are not entitled to a list of documents the non-existence of which is established by evidence, as distinct from documents which exist but have gone out of the possession of the applicant.
“Telmah Enquiries”
The fifth category of document arises out of a document on the stationery of Telmah Leasing and Investments Pty Limited which is annexure “P” to Mr Hazan's affidavit. The document, which is undated, contains a reference to gantry hire, and, in particular, contains a reference to inquiries with existing users of gantries as having been "positive". This document is sought to be linked to a diary note which is annexure “Q” to Mr Hazan's affidavit. The diary note is dated 9 August 1985 and contains the entry, "Telmar [sic - Telmah]. No finance." It is difficult to know precisely what can be got out of these documents, whether one takes them separately or together. However, Mr Bennett, in para 15 of his affidavit, gives an explanation of their irrelevance. For example, in sub-para 15 (b), he says that he has been informed by Mr Nielsen that:
“The diary entry for 9 August 1985 appearing in Item Q to Mr Hazan's affidavit has nothing at all to do with the gantry business but referred to another business activity in which Mr Nielsen was involved.”
Similarly, in sub-para 15 (c) of his affidavit, Mr Bennett says that Mr Nielsen has instructed him as to the origin of the Telmah document, which is annexure “P” to Mr Hazan's affidavit, and further shows that it has no relevance to the issues in the present case. In these circumstances, I would not order discovery in the present respect.
“Identity of Finance Friend”
In relation to category 6, what is sought is documents which would identify the finance broker referred to in sub-paras 15 (b) and (c) of Mr Bennett's affidavit. While the process of discovery inevitably does involve some element of "fishing", I think that to order discovery of such documents would be to take the process far beyond its proper purpose. The respondents submit that they would like to know the identity of the finance broker "so that a subpoena may be issued to him to establish the correct date of the undated Telmah memorandum." It suffices to say that it would take the process of discovery further than its proper scope to suggest that every time there is a reference to any document whatever, which a party might wish to investigate further, there arises an obligation to give discovery.
There is a question raised as to the costs of the motion. It seems to me that the choice is between ordering the respondents to pay the costs of the motion simpliciter, or to order that they pay the costs of the motion since the filing of the affidavits on behalf of the applicant. It is true, as Mr Catterns QC says, that the only way in which to resolve that matter in a completely satisfactory way is to analyse thoroughly the course of correspondence down to the time of the filing of the notice of motion on 22 May. That course of correspondence is annexed to Mr Hazan's affidavit with some supplementation by the correspondence annexed to Mr Bennett's affidavit.
Many of the issues were explored in the correspondence. It may not be the case that everything which was revealed by the filing of the applicant's affidavits in Court on 22 May was known prior to the filing of the notice of motion in Court on that day. However I think substantially everything was known so that, in my view, the appropriate order is that the respondents pay the applicant's costs of the motion.
I will order that the matter be given an expedited hearing, with an estimated hearing time of two weeks. I grant leave to the parties to approach the Executive Assistant to the Chief Justice for the purpose of obtaining a hearing date.
I make orders 3 and 4 of short minutes of orders initialled by me, dated today, and placed with the papers, and I note that the matter will come back on 13 June.
I certify that this and the preceding 8 pages are a true copy of the Reasons for Judgment of the Honourable Justice Lindgren.
Associate:
Dated:11 June 1997
Heard: 29 May 1997
Place: Sydney
Decision: 3 June 1997
Appearances: Mr D K Catterns QC, instructed by Bennett & Philp, solicitors, appeared for the applicant/ cross-respondent (respondent to the motion)
Mr M R Ellicott of counsel, instructed by Hazan, solicitors, appeared for the respondents/cross-claimants (applicants on the motion)
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