Zuru Ltd v Brand Developers Aust Pty Ltd (No 2)

[2017] FCA 1023

FEDERAL COURT OF AUSTRALIA

Zuru Ltd v Brand Developers Aust Pty Ltd (No 2) [2017] FCA 1023

File number:	NSD 1702 of 2015
Judge:	ROBERTSON  J
Date of judgment:	25 August 2017
Catchwords:	PATENTS – infringement application in relation to Australian patent No 2015101248 – cross-claim for invalidity – interlocutory application for discovery
Legislation:	Patents Act 1990 (Cth)
Date of hearing:	23 August 2017
Registry:	New South Wales
Division:	General Division
National Practice Area:	Intellectual Property
Sub-area:	Patents and associated Statutes
Category:	Catchwords
Number of paragraphs:	5
Counsel for the Applicants/Cross Respondents:	Mr CA Moore SC
Solicitor for the Applicants/Cross Respondents:	AJ Park IP Pty Limited
Counsel for the Respondent/Cross-Claimant:	Mr N Murray with Ms F John
Solicitor for the Respondent/Cross-Claimant:	Griffith Hack Lawyers

ORDERS

NSD 1702 of 2015

BETWEEN:

ZURU LTD

First Applicant

TINNUS ENTERPRISES, LLC

Second Applicant

AND:

BRAND DEVELOPERS AUST PTY LTD (ACN 115 139 565)

Respondent

AND BETWEEN:

BRAND DEVELOPERS AUST PTY LTD (ACN 115 139 565)

Cross-Claimant

AND:

ZURU LTD (and another named in the Schedule)

First Cross-Respondent

JUDGE:	ROBERTSON  J
DATE OF ORDER:	25 AUGUST 2017

THE COURT ORDERS THAT:

1.Subject to the question of legal professional privilege, the applicants/cross-respondents give discovery and inspection, within 14 days, of the body of any email sent on or about 23 April 2015 to Anna Mowbray which attached the documents attached to the email from Josh Malone to Anna Mowbray at 6:30 PM, 23 April 2015.

2.The applicants/cross-respondents give discovery and inspection, within 14 days, of the Motion for Summary Judgment of No Inequitable Conduct and No Unclean Hands in US Case No 6:16-CV-33 and of the documents that were directly relied on in support of it.

3.Subject to the question of legal professional privilege, the applicants/cross-respondents give discovery and inspection, within 14 days, of any contemporaneous documents informing the decision to file a subsequent petition to revive the non-provisional referred to at paragraph 47 of the affidavit of Mark Richard Kresloff dated 10 August 2017 and filed in the Administrative Appeals Tribunal, as reproduced on page 54 of the affidavit of Katie Pearl Kavanaugh affirmed 15 August 2017.

4.Costs reserved.

Note:    Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.

REASONS FOR JUDGMENT

ROBERTSON J:

1. These reasons deal with paragraphs 1(e), (g) and (h) of the respondent/cross-claimant’s interlocutory application for further discovery. The other paragraphs have either been deleted or deferred. Also the entire question of claims for legal professional privilege has been deferred. The paragraphs presently in issue are as follows:

   (e)any precursor to the email from Mr Malone to Anna Mowbray dated 23 April 2015 attaching documents and stating “here they are again”.

   (g)in relation to Tinnus’s and Zuru’s “Motion for Summary Judgment of No Inequitable Conduct and No Unclean Hands” in US Case No 6:16-CV-33, the Motion, and the documents that were relied on in support of it;

   (h)documents relating to the “Request Not to Publish” the Non-Provisional made in the Application Data Sheet and the subsequent petition to revive the Non-Provisional.

2. First, subject to the question of legal professional privilege and, I note, not on the basis that category (e) falls within the orders for discovery I made on 29 June 2017, I direct that the applicants/cross-respondents give discovery and inspection, within 14 days, of the body of any email sent on or about 23 April 2015 to Anna Mowbray which attached the documents attached to the email from Josh Malone to Anna Mowbray at 6:30 PM, 23 April 2015.

3. Turning next to category (g), again not on the basis that category (g) falls within the orders for discovery I made on 29 June 2017, I direct that the applicants/cross-respondents give discovery and inspection, within 14 days, of the Motion for Summary Judgment of No Inequitable Conduct and No Unclean Hands in US Case No 6:16-CV-33 and of the documents that were directly relied on in support of it.

4. Turning lastly to category (h), again subject to the question of legal professional privilege and not on the basis that category (h) falls within the orders for discovery I made on 29 June 2017, I direct that the applicants/cross-respondents give discovery and inspection, within 14 days, of any contemporaneous documents informing the decision to file a subsequent petition to revive the non-provisional referred to at paragraph 47 of the affidavit of Mark Richard Kresloff dated 10 August 2017 and filed in the Administrative Appeals Tribunal, as reproduced on page 54 of the affidavit of Katie Pearl Kavanaugh affirmed 15 August 2017.

5. I reserve costs.

I certify that the preceding five (5) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Robertson.

Associate:

Dated:        25 August 2017

SCHEDULE OF PARTIES

NSD 1702 of 2015
Cross-Respondents
Second Cross-Respondent	TINNUS ENTERPRISES, LLC