Alcoa of Australia Ltd v Apache Energy Ltd [No 4]

Supreme Court of WA|2020-11-17|Before: Archer J

For the reasons I have given, I consider that the documents in categories 1, 2, 3 and 5 should be released from the Regime.
I will hear from the parties as to the form of the final orders, including as to whether the orders should be stayed to permit the defendants to appeal this decision if they wish to do so.
I will also hear from the parties as to costs. In view of the outcome, my preliminary view is that the defendants should pay the plaintiffs' costs.

I certify that the preceding paragraph(s) comprise the reasons for decision of the Supreme Court of Western Australia.

CITATION : UON PTY LTD -v- HOASCAR

Special costs orders - Costs of written conferral - Turns on its own facts

Application for costs order in relation to written conferral allowed

Atwell v Roberts [2013] WASCA 37 (S)

Blatchford v Laine [2018] WASC 207 (S)

Duro Felguera Australia Pty Ltd v Samsung C&T Corporation [2017] WASC 348 (S)

Eclipse Resources Pty Ltd v The State of Western Australia [No 2] [2015] WASC 137

Electricity Generation and Retail Corporation trading as Synergy v Woodside Energy Ltd [2014] WASC 469 (S)

Frigger v Mervyn Jonathon Kitay in his capacity as liquidator of Computer Accounting & Tax Pty Ltd (in liq) [No 3] [2014] WASC 24

Heartlink Ltd v Jones as Liquidator of HL Diagnostics Pty Ltd (in liq) [2007] WASC 254 (S)

Insurance Commission of Western Australia v Antony Leslie John Woodings as Liquidator of the Bell Group Ltd (in liq) [No 3] [2018] WASC 44 (S)

Mentha as Receiver and Manager of Westgem Investments Pty Ltd (in liq) v Hughes as Liquidator of Westgem Investments Pty Ltd (in liq) [2014] WASC 478 (S)

Mirvac (WA) Pty Ltd v Binningup Nominees Pty Ltd [2020] WASC 28 (S)

Nairn v Metro-Central Joint Development Assessment Panel [2018] WASCA 18 (S)

Pilbara Iron Company (Services) Pty Ltd v Chevron (TAPL) Pty Ltd [2020] WASC 296 (S)

Sino Iron Pty Ltd v Mineralogy Pty Ltd [No 2] [2017] WASCA 76 (S)

The Hancock Family Memorial Foundation Ltd v Fieldhouse [No 5] [2013] WASC 121 (S)

Uon Pty Ltd v Hoascar [2020] WASC 271

The plaintiffs commenced proceedings against the defendants alleging that their confidential information was misused by the defendants. The background to the litigation is set out in Uon Pty Ltd v Hoascar.[140]
The plaintiffs seek special costs orders in relation to their application to vary a confidentiality regime (Release Application). The plaintiffs also seek an order in relation to the costs of exchanging written schedules. The defendants oppose the orders being made.
At the parties' request, I had made orders in relation to certain documents discovered by the defendants (Regime). Under the Regime, inspection of documents alleged to be confidential was limited to the parties' lawyers, counsel and experts (who were required to first sign an undertaking), and the court. In the Release Application, the plaintiffs had sought to be permitted to inspect some of those documents personally.
The defendants opposed the Release Application, submitting that the plaintiffs should not have access to the documents, at least not at that stage of the proceedings. The defendants asserted that the parties were trade rivals.
The parties' submissions were framed by grouping the documents sought to be personally inspected into five categories. The plaintiffs provided me with a file containing examples of documents in each category. Having not been provided with all of the documents in dispute, I ruled on the application on a category‑by‑category basis.[141]
On 24 July 2020, I delivered my judgment. I found that the documents in categories one, two, three and five should be released from the Regime.
The parties were provided with a copy of the judgment before it was delivered. At the hearing for the judgment delivery, the defendants proposed that the costs of the Release Application be in the cause.[142] The plaintiffs proposed that the defendants pay the plaintiffs' costs of the Release Application, including any costs of conferral, and that the matter be programmed for a special costs application.[143]
At a further hearing on 20 August 2020, upon hearing from the parties as to whether costs should follow the event or be in the cause, I ordered that the defendants were to pay the plaintiffs' costs of the Release Application, including the costs of conferral, to be taxed if not agreed. I then programmed the matter for a special costs application.
On 11 September 2020, the plaintiffs filed a minute of proposed orders[144] (Minute) under which the following orders are sought:
1. Pursuant to section 280(2) of the Legal Profession Act 2008 (WA) the taxing officer, in assessing the plaintiffs' bill of costs in respect of the application to vary the confidentiality regime heard on 22 June 2020, is directed to:

1.1.1 maximum allowable hourly and daily rates in Table A to clause 12 of the 2018 Determination and Table A to clause 11 of the 2020 Determination; and

1.1.2 limits imposed by items 10(a), 10(b) and 10(c) of Table B of the 2018 and 2020 Determinations; and

1.2.1 preparation and attendance by two counsel at the hearings on 22 June 2020 and 20 August 2020;

1.2.2 conferral and preparation for conferral including by the exchange of written schedules of proposed particulars and lists of documents pursuant to orders made on 27 November 2019.

In support of the application for these orders, the plaintiffs filed submissions[145] and an affidavit.[146] The affidavit was sworn on 11 September 2020 by Jessica Louise Border, a legal practitioner at Bennett + Co, and who, with supervision, assisted with the conduct of the matter on behalf of the plaintiffs (Border Affidavit).
The defendants filed submissions in opposition to the plaintiffs' application on 25 September 2020.[147]
The plaintiffs filed reply submissions in support of their application on 8 October 2020.[148] In the reply submissions, the plaintiffs clarified that the only uplift in hourly rates sought was in relation to Mr Bennett's rate.[149]

The special costs orders are sought pursuant to s 280(2) of the Legal Profession Act 2008 (WA). That section provides that a court may make such orders if it is of the opinion that the amount of costs allowable in respect of a matter under a costs determination is inadequate because of the unusual difficulty, complexity or importance of the matter.
Special costs orders are as their name suggests - special. Generally, costs are to be taxed according to the applicable costs determination(s). It is only if specified conditions are met that a special costs order can be made.

The essential requirements of special costs orders were set out in Sino Iron Pty Ltd v Mineralogy Pty Ltd [No 2][151] (citations omitted):

Before such a power will be exercised, the court must form an opinion that has two components. First, the court must form the view that the maximum amount allowable under the relevant scale item is inadequate in the sense that there is a fairly arguable case that the bill to be presented to the taxing officer may properly tax at an amount which is greater than the limit which would be imposed by the relevant cost determination. Secondly, the court must also form the opinion that the inadequacy of the costs allowable under a costs determination arises because of the 'unusual difficulty, complexity or importance of the matter'. Issues of the kind which arise are addressed as matters of impression, rather than as matters of detailed evaluation, precision or science.

For the purposes of exercising the powers conferred by s 280(2) of the Act, it will not ordinarily be necessary for the court to determine what amount should be allowed on taxation, but only whether there is a fairly arguable case that a greater amount should be allowed than that which is allowable under the relevant determination ...

A fairly arguable case to that effect will not be established merely because a party incurred greater costs than those allowable under the relevant determination. However, depending on the particular case and all the circumstances, the fact that a party has applied significantly greater legal resources to each step in the litigation than those for which allowance is made under items of the relevant determinations, when viewed in the context of the difficulty, complexity or importance of the matter, may sustain the conclusion that there is a fairly arguable case that each of the items identified is inadequate (and thereby the amount of costs allowable in respect of the matter is inadequate) because of the unusual difficulty, complexity or importance of the matter.

In relation to the word 'unusual', the court in Sino Iron [No 2][152] said (citations omitted):

The word 'unusual' in s 280(2) of the Act qualifies only the 'difficulty' of the matter, and not its 'complexity' or 'importance'. The word 'unusual' in this context means unusual having regard to what one might describe as the usual run of civil cases determined in the court. That essentially involves the making of a value judgment by the court, having regard to the court's experience of the particular case when compared with the usual run of cases ...

The court in Sino Iron [No 2][153] said (citations omitted):

... the question of unusual difficulty, complexity or importance arises in respect of the proceedings as a whole and not in respect of each individual item in the relevant costs determination.

The 'proceedings as a whole' means the matter in respect of which the legal services were provided and which come within the scope of a costs determination.[154] That is, if the legal services were provided in relation to an interlocutory application, the 'matter' is the interlocutory application, not the proceedings in which the interlocutory application is brought.[155]
In this case, the 'matter' is the Release Application.

Cases in which importance has been found includes cases which involve the risk of significant professional damage, test cases, or cases which involve enormous sums of money.
Heartlink Ltd v Jones as Liquidator of HL Diagnostics Pty Ltd (in liq)[156] was a case in the first category, involving serious allegations against liquidators. In Heartlink,[157] Martin CJ said that:

[B]y reference to 'importance' in this context, the legislature is allowing the court to have regard to the question of whether the work done was appropriate to the significance of the issue that arose in the litigation. Significance can arise either because of the significance of the issues to the parties or because of the significance of the issues to other prospective parties or to the public or to the community generally. In this case, the issues raised were of considerable significance to the liquidators in the practice of their profession, and in respect of whom serious allegations were made.

This passage was endorsed by the Court of Appeal in Sino Iron [No 2].[158]
In Blatchford v Laine,[159] Vaughan J[160] commented on the passage as follows:

His Honour's formulation involves a qualitative evaluation as to the significance of the matter. It requires an assessment of the weight, seriousness and gravity of the issues and controversy before the court. Often the question of importance will be answered as a matter of impression informed by experience. Outside of those relatively rare cases involving matters of public importance - where 'importance' may well be obvious - the importance of the matter may be evident in the amount of the claim or the nature of the allegations that are being litigated.

Vaughan J concluded that the matter before him lacked importance in the sense used in s 280(2) of the Act.[161] His Honour said:[162]

The issues and controversy before the court as part of the application fell within the general remit of an application for judicial advice as is commonly determined in this court without remark. ... No issue arose where it was necessary for the plaintiff to defend his actions or reputation. The issues and controversy before the court had no signification over and above those commonly arising in applications by trustees for judicial advice and applications within item 11 more generally.

It is plain from these authorities, and the context of s 280 and the Act as a whole, that a matter will not be 'important' in the required sense simply because a party considers it to be so. If it were otherwise, the test of importance would probably be satisfied in every litigated dispute.

Three questions arise:
1. Is there a fairly arguable case that the bill to be presented to the taxing officer may properly tax at an amount which is greater than the limit which would be imposed by the relevant cost determination?
2. Was the Release Application unusually difficult, complex or important?
3. If the answer to both questions is yes, does the inadequacy of the costs allowable under a costs determination arise because of the unusual difficulty, complexity or importance of the matter?

The Border Affidavit set out the legal fees billed to the plaintiffs by their solicitors. It set out the hourly rates of each of the solicitors. It also attached tables setting out the approximate actual costs incurred and the maximum amounts that the plaintiffs could potentially recover under various items of the scale of costs in the 2018 and 2020 Legal Profession (Supreme and District Courts) (Contentious Business) Determination if the maximum rates and the relevant limits on costs and fixed amounts in the scales were applied upon a taxation. The Border Affidavit shows that the plaintiffs have incurred costs exceeding what would be allowable under the costs determinations. It did not, however, include a draft bill of costs.
The failure to produce a draft bill of costs is not fatal.[163] Indeed, in some cases, no evidence will be required at all.[164] The issues that arise in an application for a special costs order are to be addressed as matters of impression, rather than as matters of detailed evaluation, precision or science.[165] It would be undesirable to require a party to produce more evidence than was necessary to enable the court to address the issues. This would inevitably involve extra, and self‑evidently unnecessary, costs.[166] It should be remembered that the reasonableness of costs actually to be awarded will always remain within the discretion of the taxing officer.[167]
In my view, on the facts in this case, no more evidence is required before I could conclude that there is a fairly arguable case that the plaintiffs' bill would properly tax at an amount that is greater than the total amount allowable under those items that stipulate a capped sum for particular work. The defendants readily concede this.[168]

As noted in the extract above, the adjective 'unusual' qualifies only the term 'difficulty' and not the terms 'complexity' or 'importance'.
The plaintiffs submit that the Release Application was unusually difficult and important.
Before considering this, it is necessary to provide more detail of the Release Application.

As noted in the introduction, in the Release Application the plaintiffs had sought a variation of the confidentiality Regime. Under the Regime, inspection of documents alleged to be confidential was limited to the parties' lawyers, counsel and experts (who were required to first sign an undertaking), and the court. The plaintiffs had sought to be permitted to inspect some of those documents personally.
The defendants opposed the Release Application, asserting that the parties were trade rivals. The plaintiffs accepted that the application could be determined on that basis.[169]
In my judgment,[170] I said that the authorities established that:

Generally, a party is entitled to inspect their opponent's documents. This is a prima facie right that is important for the proper conduct of the trial and for informed settlement negotiations.

I set out what I considered the authorities established as to the appropriate approach to take to an application seeking the inspection of confidential documents of a trade rival. In summary, I concluded that the respective burdens in such an application could be seen in the following way:[171]

First, the party objecting to full inspection must establish:

(1) that it is a trade rival with the party seeking inspection;

(2) the existence and degree of confidentiality of each document (or category of documents);

(3) that the document (or category of documents) warrants protection additional to that provided by the implied undertaking.

Second, if these matters are established, the party seeking to inspect must establish why it needs to inspect the documents in the manner it seeks to inspect them.

Third, the court must then assess where a fair balance lies.

With one qualification, I was not satisfied that any of the categories of documents warranted protection additional to that provided by the implied undertaking. The qualification was that I was willing to accept, for the purposes of the Release Application, that the category 4 documents did warrant additional protection.
This finding meant that, apart from in relation to category 4, it was unnecessary to consider the other matters that needed to be established by the parties and unnecessary to consider where the fair balance lay.
Despite this finding, I attempted to consider those other matters in case I was wrong in not finding that the documents warranted additional protection.
I was satisfied that the plaintiffs had a legitimate need to personally inspect each category of documents. In relation to category 4, I found they did not need to do so now.
I was unable to determine where the fair balance would lie in relation to categories 1 and 5.[172]
The category 2 documents were quotes, purchase orders and invoices. The category 3 documents were summaries of such documents. In relation to these categories, had I been satisfied that the documents did require additional protection, I would have found that a fair balance required the release of the documents from the Regime, but that, at this stage, the prices should be redacted.[173]
As noted earlier, I accepted that the category 4 documents did warrant additional protection for the purposes of the Release Application. I found that a fair balance did not require the release of the documents from the Regime at that stage.

The plaintiffs submit that the Release Application was unusually difficult 'due to the inability of the plaintiffs' solicitors to obtain proper and fully informed instructions from the plaintiffs throughout the course of conferral and ahead of the actual hearing of the Application'.[174]
The plaintiffs also submit that the difficulty is 'demonstrated by events surrounding the affidavits filed by the plaintiffs in support of the application itself'.[175] The plaintiffs referred to the defendants' initial claim, later withdrawn, of confidentiality over an affidavit the defendants had filed in opposition to the Release Application. The plaintiffs also referred to the large number of documents that had to be individually reviewed by the plaintiffs' solicitors in order to both determine applicable categories and to categorise them, which increased the difficulty of the application and the time spent.
The Release Application was undoubtedly difficult. However, the difficulty was not, in my view, unusual having regard to the usual run of civil cases determined in this court. Although it required careful analysis of a large number of documents, many of which involved technical jargon, it was ultimately an application to vary a confidentiality regime. The task of the plaintiffs' lawyers was, primarily, to explain why the plaintiffs needed to personally inspect the documents. Given the nature and volume of the documents, this was a difficult task. It was not, however, unusually difficult.

The plaintiffs submit that the Release Application was important for a number of reasons.
The plaintiffs submit it was important because it was necessary that the plaintiffs themselves be able to inspect the documents for the proper conduct of the trial and for the purposes of informed prospective settlement negotiations. The plaintiffs noted that, in my judgment, I had observed that the authorities established that the right to inspect an opponent's documents is a prima facie right that is important for the proper conduct of the trial and for informed settlement negotiations.[176]
I accept that an application for the release of confidential documents may be important in the sense required to justify a special costs order. However, in my view, whether or not such an application is important in the sense required will depend on the particular circumstances.
Many of the documents sought were of a highly technical nature. The plaintiffs' lawyers submit that, without the assistance or instructions of their clients, they could not determine the significance of the documents the subject of the Release Application. They submit that, without access to these documents, the plaintiffs would have been at a serious disadvantage in providing instructions to their solicitors, formulating and proving their case, and in engaging in any discussions as to settlement of the matter.
The plaintiffs' lawyers also submit that the importance of the Release Application is further demonstrated by reference to the extensive conferral which occurred between the parties' solicitors by phone and by email.
As noted earlier, in my decision, I accepted that the plaintiffs had a legitimate need to personally inspect all of the documents. In relation to category 4, I found they did not need to see them now.
Putting aside category 4, I found that the plaintiffs needed to see the documents to enable the efficient finalisation of the pleading, to enable them to give proper instructions, and to enable them to take into account proportionality and case management considerations in doing each of those things.[177]
That said, I do not consider that the Release Application was important in the sense required. It was no different to any other application to ensure a party has access to the documents it needs to properly progress its claim or defence. It was no different, for example, to an application for further and better discovery, when the discovery that had been given was fundamentally deficient.
Accordingly, I am not satisfied that the Release Application was important in the sense required, and would not make the special costs orders sought.
In case I am wrong about that, I will consider, so far as that is possible, the other issues that arose.

The defendants submit that the plaintiffs were partially unsuccessful in the Release Application, and that this is a factor which tends against making a special costs order in and of itself.[178]
It is true that I found that the plaintiffs should not yet be permitted to personally inspect the documents in category 4. Having regard to the reasons why I made that finding,[179] I would describe the degree to which the plaintiffs were unsuccessful as insignificant. The plaintiffs were almost entirely successful.
Accordingly, the outcome is not a factor that weighs against the making of a special costs order.

I have found that there is a fairly arguable case that the plaintiffs' bill may properly tax at an amount which is greater than the limit which would be imposed by the relevant cost determination. If I had found that the Release Application was important, the third question would arise. The third question is whether the inadequacy of the costs allowable under a costs determination arises because of the importance of the matter.
As I have not found that the Release Application was important in the sense required, I cannot sensibly answer this question. I can, however, make the following general observations.

The plaintiffs seek that the costs of the work done by Mr Bennett be taxed without the limits imposed by the maximum allowable hourly and daily rates in the scale. Mr Bennett was the lead counsel in the hearing for the plaintiffs. The Border Affidavit establishes that the rates charged by Mr Bennett exceeded the scale rates.
Merely because the actual rates are higher than the scale rates is not a sufficient reason of itself to lift the scale rates.[180] However, the nature and importance of the proceedings may permit the court to conclude that a party was justified in engaging counsel with greater experience and expertise in commercial litigation than in the usual run of civil cases. It may permit the court to conclude that a party was justified in engaging lawyers who charged more than the scale rates.[181]
If I had been satisfied that the proceedings were important in the required sense, and that this importance justified engaging a lawyer who charged more than the scale rate, I would have made an order that the plaintiffs' costs for Mr Bennett be taxed without the limits imposed by the maximum allowable hourly and daily rates in the scale. However, I would have capped the maximum hourly rate at $680.

I am unable to determine, from the Border Affidavit alone, whether the costs incurred exceeded the maximum scale limit in relation to each individual consent order.
Further, I would not infer from the nature of the consent orders made on 18 December 2019, 21 January 2020, 26 February 2020, and 22 April 2020 that the costs incurred in relation to each would have exceeded the maximum scale limit.
However, from the nature of the consent orders made on 20 August 2020 (August consent orders) and my knowledge of the matter, I would infer that the costs incurred in relation to those consent orders would have exceeded the maximum scale limit.
The August consent orders reflected the parties' agreement that a long list of documents could be released in particular ways (such as by redacting prices) and on particular conditions.
The defendants submit that the costs for the August consent orders cannot be recovered as costs in relation to the Release Application because the documents on that list were not the subject of the application.[182]
I do not accept that the costs cannot be recovered.
In their written submissions in support of the Release Application, the plaintiffs submitted:[183]

The parties have engaged in extensive conferral and have narrowed the scope of the plaintiffs' application.

The defendants have agreed to exclude a number of documents from the interim Regime, and in particular many documents that were duplicates of documents produced on subpoena by PIHA Pty Ltd. These documents are to be the subject of a separate memorandum of consent orders and are not addressed in these submissions.

The plaintiffs' application is now confined to seek inspection of the balance of the documents their solicitors consider should necessarily be disclosed to the plaintiffs to obtain instructions in relation to the prosecution of the plaintiffs' case.

In the defendants' written submissions in opposition to the Release Application, the defendants stated that they had agreed to exempt a number of documents as part of the conferral process and that '[t]he balance are now the subject of this application'.[184]
That agreement was later reflected in the August consent orders.
In my view, it is appropriate to characterise the events in this way. The parties were in dispute as to whether the plaintiffs could personally inspect a large number of documents. Through conferral, the parties were able to reach an agreement as to a number of those documents. This did not eliminate the dispute or change its character. It did, however, significantly reduce the number of documents that were the subject of argument. The parties' agreement as to the documents which could be released set the boundaries of what would be argued in the Release Application. As the defendants said, the 'balance' of the documents were the subject of the Release Application.
In these circumstances, in my view, the work for the August consent orders falls within item 10(c). However, as I have not found that the Release Application was important in the required sense, the scale limit remains operative.

On the materials available to me, even if I had been satisfied that the Release Application was important in the required sense, I would not have been satisfied that the importance warranted two counsel in addition to an instructing solicitor. There was nothing about the nature of the argument itself that meant three legal practitioners would be required. It required a counsel across all the detail, and a person to assist that counsel in the usual way, either as instructing solicitor or junior counsel.

For these reasons, I would not make special costs orders.

As noted in the introduction, after I published my decision on the Release Application, I ordered that the costs to be paid by the defendants included the plaintiffs' costs of conferral.
The plaintiffs seek, in effect, that the costs of conferral include the costs of the exchange of written schedules of proposed particulars and lists of documents pursuant to orders I had made on 27 November 2019. The plaintiffs submit that these costs should be covered because I had effectively ordered the parties to engage in written conferral prior to oral conferral.
The defendants accept that I effectively ordered the parties to engage in written conferral. However, the defendants oppose the plaintiffs' application to recover these costs on the basis that the written conferral occurred prior to the Release Application being made.[185] They say that they[186]

should not be penalised for engaging in productive conferral that significantly narrowed the scope of the dispute between the parties, prior to the Plaintiffs making their application, by the making of a special costs order against them with respect to the costs of that conferral.

The defendants submit that it would be inconsistent with Frigger v Mervyn Jonathon Kitay in his capacity as liquidator of Computer Accounting & Tax Pty Ltd (in liq) [No 3][187]to direct the taxing officer to make an allowance for the written conferral which occurred prior to the plaintiffs making their application.
Parties to litigation in this court are required to confer prior to bringing an application, in the hopes that conferral will resolve or confine the dispute.
If the conferral successfully narrows the issues in dispute, this does not mean that it is not related to the application and should not be the subject of a costs order made in relation to that application.
Such a costs order does not penalise the party required to pay for engaging in the conferral. It compensates the party who was ultimately successful in relation to the conferral it was obliged to undertake before it was entitled to make the application.
In Frigger, Allanson J said (citation omitted):[188]

There are now several statements by judges of this Court that the obligation to confer is not substantively complied with unless and until legal representatives of the parties, with authority to resolve the particular interlocutory dispute in question, have orally conferred in respect of the substantive issues that arise in relation to that dispute, either by telephone or by meeting face to face ... An order for the costs of conferral on an interlocutory application is not intended to include the solicitor's time costing for correspondence with the defendants' solicitors, or telephone conversations in which there was no actual discussion about how to resolve the interlocutory dispute before the court. If those matters are otherwise recoverable under items in the scale, it is not as a cost of conferral.

There is nothing in these remarks to suggest that costs of conferral prior to an application being made is not recoverable in respect of that application. Nor does this passage suggest that the costs of written conferral directed to resolving the dispute is never recoverable.
The parties were required to engage in written conferral prior to oral conferral by my order. The written conferral was specifically directed to resolving the interlocutory dispute.
In my view, it is appropriate to make an order to make it clear that the plaintiffs' entitlement to its reasonable costs of conferral (previously ordered by me) includes its reasonable costs in relation to the exchange of the written schedules of proposed particulars and lists of documents.
Finally, the defendants submit that the costs of conferral should be taxed on the basis of the scale hourly rates.
As I have not found the Release Application was important in the sense required, I accept this submission.

For the reasons I have given, I am not satisfied that the limits sought to be removed should be removed.
I would not direct the taxing officer to make an allowance for two counsel.
I would direct that a reasonable allowance be made in relation to the written conferral.
I will make an order in terms of proposed order 1.2.2 of the Minute.

I certify that the preceding paragraph(s) comprise the reasons for decision of the Supreme Court of Western Australia.

[1] Plaintiffs' Submissions in Support of Application for Inspection of Confidential Documents filed 8 May 2020 (Plaintiffs' Submissions) [13] ‑ [15].

[3] Plaintiffs' Re‑amended Writ of Summons (statement of claim endorsed) filed 14 September 2018 (Statement of Claim) [2]. See also ts 130 ‑ 131, summarising from the affidavit of Mr Keogh filed 20 January 2017 and the affidavit itself.

[4] Statement of Claim [11], admitted in the defence. In the hearing, at ts 135, the plaintiffs submitted that Mr Hoascar commenced employment on 10 March 2016 and the defendants did not cavil with this. The employment contract was executed on 19 February 2016.

[5] See, for example, the Statement of Claim [15.5].

[8] ts 136 and see the table in the Statement of Claim [15.4.2 particular (b)].

[10] While still employed by UON on a casual basis.

[13] And see the Defendants' Outline of Submissions filed 25 May 2020 (Defendants' Submissions) [17].

[14] See, for example, the Statement of Claim [15.8].

[15] Civic Video Pty Ltd v Paterson [2013] WASCA 107 [28] ‑ [31]; Mobil Oil Australia Ltd v Guina Developments Pty Ltd [1996] VicRp 54; [1996] 2 VR 34; Lampson (Australia) Pty Ltd v Fortescue Metals Group Ltd [No 2] [2010] WASC 217 (Murphy JA); Hadid v Lenfest Communications Inc (1996) 70 FCR 403; Alcoa of Australia Ltd v Apache Energy Ltd [No 4] [2013] WASC 377 (Le Miere J); Co‑operative Bulk Handling Ltd v Brookfield Rail Pty Ltd [No 2] [2014] WASC 38 (Edelman J).

[19] Mobil Oil (38). See also Hadid (411) ('The concern that once information comes into the hands of a trade rival the confidentiality in it will be destroyed may, perhaps, be overstated').

[22] It is possible to assess the reasonableness of a proposed regime on a broader basis, without considering claims of confidentiality on a document‑by‑document basis. See Alcoa [21] ‑ [23].

[24] Alcoa [8] and [21] (citing in [8] Lenark Pty Ltd v The Chairmen1 Pty Ltd (No 2) [2012] NSWSC 415, which in turn cited, among other cases, Cadbury Pty Ltd v Amcor Ltd (No 2) [2009] FCA 663 (Gordon J) [6] ‑ [7], Idoport Pty Ltd v National Australia Bank Ltd [2001] NSWSC 1024; Betfair Pty Ltd v Racing New South Wales (No 5) [2009] FCA 1011 and ICAP Australia Pty Ltd v Forrest Moebes [2010] NSWSC 738). See also Lampson [62].

[26] See Co‑operative Bulk Handling Ltd [8], citing NAK Australia Pty Ltd v Starkey Consulting Pty Ltd [2008] NSWSC 1136 [9]. See also ICAP Australia v Forrest Moebes [11] and Alcoa [8]. See also Hadid (410).

[31] Plaintiffs' Submissions [28] ‑ [29].

[34] See, in particular Alcoa at [8] and [21].

[36] See Duckworth v Water Corporation [2012] WASC 30; (2012) 261 FLR 185 [31] (Edelman J).

[39] See Defendants' Submissions [29], [33], [48.1], [49].

[42] See, for example, Defendants' Submissions [3] ‑ [7], [53] and ts 157 ‑ 159.

[46] Although the other party is entitled to seek that the amendments be struck out - Rules of the Supreme Court 1971 (WA) O 21, r 3(3).

[47] Implicit in their submissions at ts 159.

[48] Defendants' Submissions [4] and ts 164 ‑ 165.

[49] See the affidavit of Taleesha Jayne Conlan Elder sworn 8 May 2020 [5] (Elder Affidavit).

[50] Plaintiffs' Reply Submissions in Support of Application for Inspection of Confidential Documents filed 2 June 2020 (Plaintiffs' Reply Submissions) [13].

[52] Plaintiffs' Reply Submissions [15].

[54] Statement of Claim [10.1, particular (e)]

[55] While still employed by UON on a casual basis.

[56] I have not reached a concluded view as to whether this could be a relevant consideration, but see Co‑operative Bulk Handling [12].

[58] Affidavit of Joseph Rino Vetrone filed 3 June 2020 (Vetrone Affidavit).

[60] Vetrone Affidavit [12] ‑ [17]. And see the Defendants' Submissions [22] ‑ [25].

[61] This is the acronym of 'Società Italiana Costruzioni Elettriche Sumirago'.

[64] Plaintiffs' Reply Submissions [21].

[69] Plaintiffs' Reply Submissions [20].

[72] Affidavit of Mark Vincent Keogh sworn 5 June 2020 (Keogh June 2020 Affidavit) [14].

[74] The plaintiffs currently plead that the VarioGen incorporates, copies or reproduces the design features or elements of the Invention - see Statement of Claim [15.4].

[75] Plaintiffs' Reply Submissions [22] and ts 155 ‑ 157.

[78] See the list of the matters that are common ground under the heading 'Is UON a trade rival of Taranis?'

[79] See, for example, the Sample File tab 1 page 11.

[80] Plaintiffs' Reply Submissions [24].

[84] Plaintiffs' Reply Submissions [25].

[86] See under the heading 'Conclusion on sub‑category 1'.

[88] Vetrone Affidavit [22] ‑ [23].

[89] The defendants' submissions on this sub‑category are contained in the Defendants' Submissions [28] ‑ [29] and at ts 195 ‑ 196. See also the discussion of sub‑category 5 and category 5.

[90] See, for example, Keogh June 2020 Affidavit [17] ‑ [20].

[92] Plaintiffs' Reply Submissions [27].

[93] Defendants' Submissions [28] ‑ [29] and ts 196.

[94] See under the subheading 'Premature application'.

[95] See under the subheading 'Conclusion on sub‑category 1'.

[96] The defendants' submissions on this sub-category are contained in the Defendants' Submissions [30] ‑ [32] and at ts 196.

[97] Mr Robinson of Taranis is not related to the defendants' counsel.

[99] Plaintiffs' Reply Submissions [29].

[100] See under the heading 'Conclusion on sub‑category 1'.

[101] The defendants' submissions on this sub‑category are contained in the Defendants' Submissions [33] and at ts 196 ‑ 197.

[103] See under the heading 'Conclusion on sub‑category 1'.

[107] Vetrone Affidavit [18] ‑ [19].

[108] Defendants' Submissions [35]. See also ts 208 ‑ 209.

[110] Fortescue Metals Group Ltd v Argus Media Ltd [2020] EWHC 1304 (Ch) [49]. The reference to 'Faccenda' was a reference to the well‑known case of Faccenda Chicken Ltd v Fowler [1987] Ch 117, 140.

[111] Plaintiffs' Reply Submissions [37].

[113] Keogh June 2020 Affidavit [16] ‑ [20].

[114] Affidavit of Mark Vincent Keogh sworn 7 May 2020 Annexure MVK‑1.

[118] See ts 213 ‑ 214. And see ts 204.

[119] Defendants' Submissions [44.1].

[125] The Elder Affidavit, filed on behalf of the plaintiffs, referred to numerous difficulties the plaintiffs' solicitors experienced because they could not show the documents to the plaintiffs and their witnesses - see at [7]. However, the difficulties were described in very general terms and were, at least in one respect, historical - see [7.3].

[126] See Ancient Order of Foresters in Victoria Friendly Society Ltd v Lifeplan Australia Friendly Society Ltd [2018] HCA 43; (2018) 265 CLR 1.

[132] See tabs 25 ‑ 28 in the Sample File.

[133] See, for example, Keogh June 2020 Affidavit [17] ‑ [20].

[137] It appears that this would only apply to BHP and a company called Atlas Copco - see ts 227 ‑ 229.

[138] Plaintiffs' Submissions [64] ‑ [65].

[139] See under the heading 'Conclusion on sub‑category 1'.

[140] Uon Pty Ltd v Hoascar [2020] WASC 271.

[142] Defendants' Minute of Proposed Orders filed 24 July 2020.

[143] Plaintiffs' Minute of Proposed Orders filed 23 July 2020.

[144] Plaintiffs' Minute of Proposed Orders for Special Costs Orders filed 11 September 2020.

[145] Plaintiffs' Submissions in Support of Application for Special Costs Orders filed 11 September 2020 (Plaintiffs' Submissions).

[146] Affidavit of Jessica Louise Border in Support of the Plaintiffs' Application for Special Costs Orders affirmed 11 September 2020.

[147] Defendants' Submissions in Opposition to the Plaintiffs' Application for Special Costs Orders filed 25 September 2020 (Defendants' Submissions).

[148] Plaintiffs' Reply Submissions in Support of Plaintiffs' Application for Special Costs Orders filed 8 October 2020 (Plaintiffs' Reply Submissions).

[149] Plaintiffs' Reply Submissions [22.1].

[150] Much of the following legal analysis reproduces, or draws upon, my judgments of Pilbara Iron Company (Services) Pty Ltd v Chevron (TAPL) Pty Ltd [2020] WASC 296 (S) and Mirvac (WA) Pty Ltd v Binningup Nominees Pty Ltd [2020] WASC 28 (S).

[151] Sino Iron Pty Ltd v Mineralogy Pty Ltd [No 2] [2017] WASCA 76 (S) [12] ‑ [14].

[154] Electricity Generation and Retail Corporation trading as Synergy v Woodside Energy Ltd [2014] WASC 469 (S) [5] ‑ [12] (Martin CJ).

[155] And see Blatchford v Laine [2018] WASC 207 (S) [91].

[156] Heartlink Ltd v Jones as Liquidator of HL Diagnostics Pty Ltd (in liq) [2007] WASC 254 (S).

[163] Atwell v Roberts [2013] WASCA 37 (S) [23].

[164] See Eclipse Resources Pty Ltd v The State of Western Australia [No 2] [2015] WASC 137 [33] (Beech J), citing Martin CJ in Mentha as Receiver and Manager of Westgem Investments Pty Ltd (in liq) v Hughes as Liquidator of Westgem Investments Pty Ltd (in liq) [2014] WASC 478 (S).

[165] Sino [No 2] [12]; Blatchford [43].

[166] And see Heartlink [20] and Electricity Generation [4].

[168] Defendants' Submissions [4.1].

[172] See the explanation at [97] in Uon in relation to sub‑category 1 of category 1. The same explanation applied to each other subcategory of category 1 and to category 5.

[175] Plaintiffs' Reply Submissions [19].

[176] Plaintiffs' Submissions [19], citing Uon [19].

[177] See Uon under the subheadings 'Why do the plaintiffs need access?' in relation to each subcategory of category 1 and in relation to categories 2 and 5.

[178] Defendants' Submissions [19], citing Nairn v Metro-Central Joint Development Assessment Panel [2018] WASCA 18 (S) [9].

[181] See, for example, The Hancock Family Memorial Foundation Ltd v Fieldhouse [No 5] [2013] WASC 121 (S) [20] (Le Miere J); Duro Felguera Australia Pty Ltd v Samsung C&T Corporation [2017] WASC 348 (S) [10] (Le Miere J); Insurance Commission of Western Australia v Antony Leslie John Woodings as Liquidator of the Bell Group Ltd (in liq) [No 3] [2018] WASC 44 (S) [55] (Pritchard J, as her Honour then was).

[183] Plaintiffs' Submissions in Support of Application for Inspection of Confidential Documents filed 8 May 2020 [16] ‑ [18].

[184] Defendants' Outline of Submissions in Opposition to the Plaintiffs' Application for Inspection of Confidential Documents filed 25 May 2020 [9].

[185] Defendants' Submissions [36] ‑ [37].

[187] Frigger v Mervyn Jonathon Kitay in his capacity as liquidator of Computer Accounting & Tax Pty Ltd (in liq) [No 3] [2014] WASC 24.

Alcoa of Australia Ltd v Apache Energy Ltd [No 4] [2013] WASC 377

Ancient Order of Foresters in Victoria Friendly Society Ltd v Lifeplan Australia Friendly Society Ltd [2018] HCA 43; (2018) 265 CLR 1

Betfair Pty Ltd v Racing New South Wales (No 5) [2009] FCA 1011

Cadbury Pty Ltd v Amcor Ltd (No 2) [2009] FCA 663

Civic Video Pty Ltd v Paterson [2013] WASCA 107

Co‑operative Bulk Handling Ltd v Brookfield Rail Pty Ltd [No 2] [2014] WASC 38

Duckworth v Water Corporation [2012] WASC 30; (2012) 261 FLR 185

Fortescue Metals Group Ltd v Argus Media Ltd [2020] EWHC 1304 (Ch)

ICAP Australia Pty Ltd v Forrest Moebes [2010] NSWSC 738

Idoport Pty Ltd v National Australia Bank Ltd [2001] NSWSC 1024

Lampson (Australia) Pty Ltd v Fortescue Metals Group Ltd [No 2] [2010] WASC 217

Lenark Pty Ltd v The Chairmen1 Pty Ltd (No 2) [2012] NSWSC 415

NAK Australia Pty Ltd v Starkey Consulting Pty Ltd [2008] NSWSC 1136

At a glance

Court

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Before

Source

Judgment (172 paragraphs)

Parties

Legislation Cited (1)

Cases Cited (16)