Aristocrat Technologies Australia Pty Limited v Ainsworth Game Technology Limited

Background 2 Aristocrat designs, develops, produces and distributes gaming products and services, including electronic gaming machines (EGMs) and game software. It is one of the largest gaming services providers in the world. Its customers in Australia include clubs, hotels, licensed venues and casinos. 3 An EGM is a combination of a hardware console or "box" and the software which operates the underlying game. The software is stored on computer chips which are loaded into the "box". In some circumstances, a customer may purchase a "conversion". This is a software component which allows the "box" to be converted from one game to another. A "conversion" will include a change in the relevant artwork on the "box" to reflect the new game title. 4 Aristocrat describes its business as focused on innovation in gaming technology. It invests significantly in the design and development of core game innovation and gaming machine systems. It claims to be one of the world leaders in the development of gaming technology. It says that one of its core assets is its intellectual property. 5 Aristocrat has a number of external game design contractors with which it works to create new games. One of these contractors is High Roller Gaming Pty Ltd (HRG). HRG is responsible for designing and developing the Lightning Link family of games. This family comprises a number of themed games. 6 Lightning Link is a linked progressive jackpot game. This means that all EGMs in a venue on which Lightning Link is installed can be linked such that the players of those games contribute to a jackpot prize pool. Lightning Link has been purchased by approximately 1,800 venues in Australia. Lightning Link is also distributed in a number of overseas markets. 7 Aristocrat claims ownership of the copyright subsisting in all literary works, artistic works and cinematograph films that form part of the Lightning Link games. In this proceeding, Aristocrat claims copyright ownership in the following works and other subject matter relating to the Lightning Link games: Artistic Work #1: Game Play Top Screen; Artistic Work #2: Hold & Spin Top Screen; Artistic Work #3: Winner Top Screen; Cinematograph Film #1: Hold & Spin Sequence Top Screen; and Cinematograph Film #2: Hold & Spin Sequence Main Screen. 8 Aristocrat also claims ownership of the copyright subsisting in the Lightning Link game rules, pay tables, reel strips, weighting tables, underlying mathematical spreadsheets, game specifications and any underlying source code, as literary works. 9 Ainsworth is a direct competitor of Aristocrat in Australia and overseas, including in the United States of America. It has developed a new EGM called Jackpot Strike. Jackpot Strike has been displayed at various trade shows: the Australian Gaming Expo held at the Sydney International Convention Centre on 15 to 17 August 2017; the Global Gaming Expo held on 3 to 5 October 2017 in Las Vegas, Nevada; and the Keno Australasian Hospitality and Gaming Expo in Brisbane in March 2018. 10 Ainsworth also staged an "official launch" of Jackpot Strike in Brisbane on 6 February 2018, which was by "invitation only". 11 Although Aristocrat has had only a limited opportunity to view the Jackpot Strike game in situ at the trade shows to which I have referred, it is concerned by what it sees as the number of similarities between Jackpot Strike and Lightning Link, both in terms of visual appearance and gameplay features, including features which it regards to be unique to Lightning Link. It considers that these features may have been copied by Ainsworth in an attempt to trade off the popularity of Lightning Link and to divert sales away from Lightning Link to Jackpot Strike. Aristocrat's concerns about the similarities in gameplay between Jackpot Strike and Lightning Link have been exacerbated by its employment (now terminated) of a game designer in March 2017, Mr Prabhu, who was previously employed by Ainsworth. 12 In around May 2016, Aristocrat advertised for a game designer to work with the existing game design team at HRG. Mr Prabhu responded to the advertisement and was hired by Aristocrat in around July 2016 to start in March 2017. He was initially given the limited task of getting up to speed with the mathematics involved in the operation of the Lightning Link "Magic Pearl" game (Magic Pearl). 13 Shortly after Mr Prabhu's employment commenced, Aristocrat received a communication from Ainsworth claiming that, in the course of his employment with Aristocrat, Mr Prabhu had engaged in conduct that Ainsworth characterised as a "wilful misappropriation of Ainsworth intellectual property and confidential information". The basis for this allegation is that Mr Prabhu had sent text messages to an employee of Ainsworth seeking assistance and information. Aristocrat made a decision not to continue Mr Prabhu's probationary employment because of his failure to meet the conduct and performance standards Aristocrat expected of him. On 22 March 2017, Mr Prabhu was informed that he would not be continuing his probation period. Shortly after, on 18 April 2017, Mr Prabhu recommenced employment with Ainsworth as a games designer. 14 While he was employed at Aristocrat, Mr Prabhu accessed a number of highly confidential documents that he did not need to access. They were not required to enable Mr Prabhu to complete his training exercise in respect of Magic Pearl. The documents included the key mathematical and strategic documents concerning almost all of the Lightning Link themed games. He connected various external hard drive devices to his Aristocrat computer in close proximity to the times he was accessing Aristocrat's confidential information. A subsequent forensic examination of Mr Prabhu's Aristocrat computer also revealed that he had in his possession confidential information of Ainsworth while he was at Aristocrat. In light of this conduct, and the similarities between Lightning Link and Jackpot Strike which Aristocrat has identified, Aristocrat has raised what it regards as a significant likelihood that Ainsworth (through Mr Prabhu) ultimately may have had access to Aristocrat's information for the purpose of copying the game features of Lightning Link in Jackpot Strike. At the hearing of the present application, Ainsworth stated unequivocally that Mr Prabhu was involved in the development and design of existing versions of Jackpot Strike. 15 In light of these facts, Aristocrat believes it may have a right to obtain relief against Ainsworth and Mr Prabhu for misuse of confidential information and for infringement of copyright. 16 Aristocrat also believes that it may have a right to obtain relief against Ainsworth in relation to the way in which Ainsworth has promoted, offered to sell and sold Jackpot Strike. In this connection, Aristocrat says that Ainsworth may have: misled or deceived consumers into believing that Jackpot Strike, as released, will be the same or substantially the same in appearance and gameplay as the Jackpot Strike game displayed at the events to which I have referred; falsely represented that Jackpot Strike as released will be the same as, or of the same quality as, the Jackpot Strike game displayed at those events; and misled or deceived consumers into believing that Ainsworth will be applying for regulatory approval of the versions of Jackpot Strike displayed at those events. 17 Aristocrat further believes that it may have a right to obtain relief against Mr Prabhu for breach of the six months restraint period and other terms of his employment contract with Aristocrat, and against Ainsworth for inducing Mr Prabhu's breach of contract given that Ainsworth re-hired Mr Prabhu during the restraint period. 18 Correspondence has passed between the solicitors for Aristocrat and the solicitors for Ainsworth. As a result of that correspondence, Ainsworth has offered to provide certain undertakings in relation to the version of Jackpot Strike that will be submitted for regulatory authority approval. However, it has refused to provide Aristocrat with any of the documents it has sought, until recently. In the period immediately before the present hearing, Ainsworth has signified its preparedness to provide, on terms, certain categories of documents.

The evidence 19 Aristocrat read the following affidavits in support of its application: Mark Dunn, sworn 3 May 2018; David William Brown, sworn 24 April 2018; Jennifer Ann Hatton, sworn 24 April 2018; Rodney David McKemmish, sworn 30 April 2018; John Dominic Lee, sworn 1 May 2018 and 6 June 2018; Simon Sze Chun Ma, affirmed 19 July 2018; and Siabon Seet, sworn 19 July 2018. 20 I made a confidentiality order in respect of a number of documents referred to in the affidavits that have been tendered as exhibits. 21 Ainsworth read the following affidavits: Jacqueline Jessica Chelebian, sworn 5 July 2018 and 13 July 2018; and Khajaque Kortian, sworn 6 August 2018 ([19]) only). 22 A question has arisen in relation to the admissibility of a statutory declaration annexed to Ms Chelebian's affidavit of 5 July 2018. The declaration is made by David Greenslade, Ainsworth's in-house General Counsel. In his declaration, Mr Greenslade makes the bald statement that he has made reasonable inquiries to ascertain whether certain documents are or ever have been in Ainsworth's possession, custody or power. The documents identified by Mr Greenslade are three described external storage devices; a folder named "hrg stuff" on any computer or device used by Mr Prabhu; and any documents that Mr Prabhu copied, transferred, removed or exported in physical or electronic form from Aristocrat or HRG between 2 and 23 March 2017. 23 Although the statement in Mr Greenslade's declaration is undoubtedly hearsay, the parties proceeded on the basis that the present application is an "interlocutory proceeding" for the purposes of the hearsay exception in s 75 of the Evidence Act 1995 (Cth) (the Evidence Act). There is conflicting authority on that question: see the observation in Stephen Odgers, Uniform Evidence Law (13th ed, 2018) [EA.75.90]. 24 In Levis v McDonald (1997) 75 FCR 36 (Levis), Lindgren J, when dealing with an application for preliminary discovery under O 15A r 3 of the Federal Court Rules 1979 (Cth), expressed the view (at 43 - 44) that such a proceeding was not an interlocutory proceeding for the purpose of s 75. In Optiver Australia Pty Ltd v Tibra Trading Pty Ltd [2007] FCA 1560; (2007) 163 FCR 554 (Optiver) Tamberlin J (at [10] - [20]) came to the opposite view. In that case, his Honour reasoned that the analysis in Levis was "too narrow" and that there were a number of more recent decisions that were directly in point, which were to the effect that "applications for pre-action discovery…are interlocutory and not final". 25 In Liu v The Age Company & Ors [2010] NSWSC 1176 (Liu), McCallum J, when dealing with the admissibility of hearsay evidence under s 75 of the Evidence Act 1995 (NSW) in an action for preliminary discovery, expressed her preference for the view stated in Levis, but accepted (at [27]) that the weight of authority appeared to be against that view. 26 More recently, in Pfizer Ireland Pharmaceuticals v Samsung Biopis AU Pty Ltd [2017] FCAFC 193 (Pfizer), Allsop CJ (at [79]) stated that an application under r 7.23 FCR is "an interlocutory application in the exercise of federal jurisdiction". In characterising the application in that way, his Honour cited the Full Court decision in Hooper v Kirella Pty Ltd [1999] FCA 1584; (1999) 96 FCR 1, which was influential in Tamberlin J's reasoning in Optiver. 27 I, like McCallum J in Liu, accept that the weight of authority favours the view that an application for preliminary discovery, such as the present, is an interlocutory proceeding for the purposes of s 75 of the Evidence Act. I am particularly mindful of Allsop CJ's recent affirmation of the interlocutory character of the proceeding, even though the relief provided for finally determines the rights of the parties in relation to the question in suit. 28 The substantive objection raised by Aristocrat to the reception of Mr Greenslade's declaration was based on s 135 of the Evidence Act. Aristocrat submitted that the evidence was unfairly prejudicial because its substance could not be tested. I was not persuaded that the evidence should be rejected on that basis, although I accept that the statement made by Mr Greenslade is of little weight given both its form as a bald assertion and its hearsay character. Further, Ainsworth advanced no reason why Mr Greenslade could not have made an affidavit rather than a declaration which, if read, would have provided an opportunity to Aristocrat to cross-examine him.

Categories of documents 29 The categories of documents Aristocrat seeks in its amended originating application are: 1 A video file of Jackpot Strike showing a sequence from the base game of at least 20 spins, all features including the winning sequence for all jackpots and bonuses, and all triggers into the features. 2 The following documents in relation to Jackpot Strike: (a) the mathematics documents, including any underlying mathematical spreadsheets relevant to any feature of Jackpot Strike; (b) pay tables, reel strips and weighting tables; (c) game specifications; (d) game rules; (e) artwork files, including for the attract screen; and (f) source code. 3 A copy of the audio files containing any Sounds presented to a player of Jackpot Strike. 4 All documents created on or after September 2014 recording: (a) all communications with customers or potential customers of Jackpot Strike which refer to Lightning Link. 5 All documents created on or after 1 July 2017 recording: (a) any expressions of interest in or actual or potential sales of Jackpot Strike; and (b) any communications between AGT and its customers as referred to in paragraphs 1 to 3 of the letter from Spruson & Ferguson Lawyers to Gilbert + Tobin dated 11 July 2018. 6 All documents recording any input by Mr Prabhu into the development or design of Jackpot Strike on or after 2 March 2017, including but not limited to any spreadsheets containing mathematics. 7 All documents created on or after 2 March 2017 by Mr Prabhu referring to Lightning Link or any features of Lightning Link, or any other Aristocrat game. 30 A number of the terms used in this list are defined in the amended originating application. Nothing turns on the definitions for present purposes.

The areas of disupte 31 Ainsworth agrees to produce the documents in categories 1 and 3. 32 As to category 2, the issue between the parties is directed to the question of access and inspection, not production. In oral submissions, Senior Counsel for Aristocrat, Mr Hennessey SC, identified the debate between the parties, as follows: … documents will be produced under category 2. They will be produced to our solicitors for the use of access by external lawyers but we would propose ultimately, if we think it's necessary, and we think it will be, to retain an independent expert to assist us in looking at the underlying mathematics and source code and the like, to assist in trying to work out whether there's a replication of our underlying material or not, and that's the point at which AGT says it wishes to have a debate with us because, as best we understand its position in their written submissions and in some correspondence, it proposes some regime whereby there would be, effectively, a joint expert which AGT says should come from a particular-one or two testing laboratories that are involved in regulatory approval processes for games. 33 In short, there would be production to Aristocrat's external legal advisers, with the question of access to, and inspection by, any independent expert to await agreement between the parties on that question or, if agreement cannot be reached, subsequent determination by the Court. 34 As regards access to, and inspection by, any independent expert, Mr Hennessey explained that Aristocrat had three objections to Ainsworth's proposal: One, we don't - we don't submit to the joint retainer of any expert. We - if we need assistance with interpreting the documents produced in category 2, we will retain our own independent expert for that purpose. That's point 1. Point 2, if we seek to embark upon that process we will notify AGT as to who that expert will be, and we will need to in any event, to provide an undertaking. And if AGT wishes to raise any issue with us about our proposal, for example, whether the expert is an appropriate expert, or whether it has an objection because it says that the expert's not independent, or there's a conflict or anything else, then it can do so at that stage, and we will endeavour to resolve it. And the third point is that in answer to AGT's suggestion about a joint expert we say, no, the purpose of this proceeding is for us to get the documents, and for us to make up our mind whether we wish to commence a proceeding against AGT, and, therefore, the expert should be our expert, and we should be able to then use that expert's report if we choose to do so in any subsequent proceeding. 35 Senior Counsel for Ainsworth, Mr Heerey QC, explained his client's position as follows: Now, as I said there's a dispute as to who that mutual agreed expert should be, but on the orders that my friend has proposed he seeks - he proposes orders to the effect that that agreement can be made subsequently, so we have that opportunity to confer and see if we can resolve any disagreement as to who the appropriate expert might be. So we don't seek a resolution of that by your Honour now. So, to that extent, we can defer that aspect of our disagreements. So I won't go into more detail about why it is we've proposed the particular experts that we have proposed, save that it's set out there in paragraph 1 of our submissions, your Honour. 36 Paragraph 1 of Ainsworth's written submissions states: Ainsworth is prepared to provide the documents in paragraph 2 of the schedule to Aristocrat's originating application…on a confidential basis, for analysis by a mutually agreed expert from an approved testing facility such as BMM Australia Pty Ltd or QA Labs Pty Ltd. These experts routinely analyse such documents for the purpose of obtaining regulatory approval and are well qualified to provide an independent report, for confidential review by the parties' external lawyers only, identifying the extent of any objective similarity between Ainsworth's documents and Aristocrat's corresponding documents. This proposal is consistent with the proposal in Aristocrat's Outline of Submissions… at [27]. 37 The position is clouded somewhat by draft orders prepared by Ainsworth to the effect that the category 2 documents will be produced to a mutually agreed expert from an approved testing facility, subject to the expert providing a confidentiality undertaking in accordance with an existing confidentiality regime. The form of the draft orders suggests that Ainsworth has in mind that production will only be to an agreed expert, and not also to Aristocrat's external legal advisers on a confidential basis. Given that fact, I am left in some doubt as to whether the parties are of one mind as to the ambit of their dispute in respect of the category 2 documents, contrary to what the transcript suggests. In short, it is possible that they are at cross-purposes. 38 In the circumstances, I propose to proceed on the basis that the dispute between the parties in relation to the category 2 documents concerns the identity and nature of the retainer of the expert or experts who might be granted access to, and inspection of, the documents - not whether the documents should be produced to Aristocrat's external legal advisers on a confidential basis. This means that there is no issue in relation to the category 2 documents that presently requires determination (which is what the parties have said). I will determine the question of access to, and inspection of, the documents by experts if and when that question arises. If my understanding of the parties' position in relation to these documents is incorrect, the parties will, no doubt, inform me of that fact and I will revisit category 2. 39 As to category 5, Ainsworth says that production under this category should be satisfied by its production to Aristocrat's external legal advisers of a confidential summary of all orders and expressions of interest in Jackpot Strike from potential purchasers. 40 Production of the category 4(a), 6 and 7 documents remains in dispute.

Legal requirements 41 Rule 7.23 of the Federal Court Rules 2011 (Cth) (FCR) provides: (1) A prospective applicant may apply to the Court for an order under subrule (2) if the prospective applicant: (a) reasonably believes that the prospective applicant may have the right to obtain relief in the Court from a prospective respondent whose description has been ascertained; and (b) after making reasonable inquiries, does not have sufficient information to decide whether to start a proceeding in the Court to obtain that relief; and (c) reasonably believes that: (i) the prospective respondent has or is likely to have or has had or is likely to have had in the prospective respondent's control documents directly relevant to the question whether the prospective applicant has a right to obtain the relief; and (ii) inspection of the documents by the prospective applicant would assist in making the decision. (2) If the Court is satisfied about matters mentioned in subrule (1), the Court may order the prospective respondent to give discovery to the prospective applicant of the documents of the kind mentioned in subparagraph (1)(c)(i). 42 There is no dispute between the parties as to the principles to be applied. Putting categories 2 and 5 aside for one moment, Ainsworth's submissions were directed principally to whether Aristocrat has satisfied the "insufficient information" requirement of r 7.23(1)(b) in respect of categories 4(a), 6 and 7. 43 In this connection, a prospective applicant must demonstrate as an objective fact that it lacks sufficient information to decide whether to start a proceeding. The purpose of preliminary discovery is not to require the production of material that strengthens or enhances a decision to commence a proceeding, where that decision can reasonably be made on already existing material: Matrix Film Investment One Pty Limited v Alameda Films LLC [2006] FCA 591 at [19]; Costin v Duroline Products Pty Limited [2013] FCA 501 at [45]; McFarlane as Trustee for the S McFarlane Superannuation Fund v IOOF Holdings Limited [2018] FCA 692 at [65]. As Lindgren J expressed the position in Alphapharm Pty Ltd v Eli Lilly Australia Pty Ltd [1996] FCA 391: is there an obstacle consisting of the lack of key information which the prospective applicant needs to enable it to decide whether to commence a proceeding? 44 Relatedly, Ainsworth relies on the following observation made by me in Reeve v Aqualast Pty Ltd [2012] FCA 679 (Reeve) at [65(f)]: While a respondent to an application for preliminary discovery is entitled to remain passive, the applicant must place before the Court all of the evidence already available to it relevant to the sufficiency of the information it possesses to enable a decision to be made whether to commence a proceeding. The applicant must not hold back information. This obligation on the applicant to be forthcoming arises from the special and intrusive nature of preliminary discovery and the fact that ordinarily the respondent will not know, or be in a position to expose, the full extent of the information already available to the applicant. 45 Ainsworth relies on this passage in relation to its objection to producing documents in categories 6 and 7. I will deal with its particular submission below. 46 Ainsworth also advances a submission directed to r 7.23(1)(a), principally in relation to production of the category 4(a) documents as informing a decision whether to commence a proceeding for relief in relation to misleading or deceptive conduct or the making of false representations. Recent authority has emphasised that the relevant question under this part of the rule is whether the prospective applicant has a reasonable belief that it may have (not that it does have) the right to obtain relief. The rule is, therefore, concerned with possibilities: Pfizer at [17] and [69]-[70] (Allsop CJ) and [101]-[126] (Perram J). In that case, Perram J said (at [120]-[121]): 120 The following propositions about preliminary discovery applications should be accepted: (i) the prospective applicant must prove that it has a belief that it may (not does) have a right to relief; (ii) it must demonstrate that the belief is reasonable, either by reference to material known to the person holding the belief or by other material subsequently placed before the Court; (iii) the person deposing to the belief need not give evidence of the belief a second time to the extent that additional material is placed before the Court on the issue of the reasonableness of the belief. That belief may be inferred; (iv) the question of whether the belief is reasonable requires one to ask whether a person apprised of all of the material before the person holding the belief (or subsequently the Court) could reasonably believe that they may have a right to obtain relief; and (v) it is useful to ask whether the material inclines the mind to that proposition but very important to keep at the forefront of the inclining mind the subjunctive nature of the proposition. One may believe that a person may have a case on certain material without one's mind being in any way inclined to the notion that they do have such a case. 121 In practice, to defeat a claim for preliminary discovery it will be necessary either to show that the subjectively held belief does not exist or, if it does, that there is no reasonable basis for thinking that there may be (not is) such a case. Showing that some aspect of the material on which the belief is based is contestable, or even arguably wrong, will rarely come close to making good such a contention. Many views may be held with which one disagrees, perhaps even strongly, but this does not make such a view one which is necessarily unreasonably held. Nor will it be an answer to an application for preliminary discovery to say that the belief relied upon may involve a degree of speculation. Where the language of FCR 7.23 relates to a belief that a claim may exist, a degree of speculation is unavoidable. The question is not whether the belief involves some degree of speculation (how could it not?); it is whether the belief resulting from that speculation is a reasonable one. Debate on an application will rarely be advanced, therefore, by observing that speculation is involved. 47 In the same case, Nicholas J cautioned (at [175]) that belief is not the same as suspicion. His Honour referred to the following explanation in George v Rockett [1990] HCA 26; (1990) 170 CLR 104 at 115-116: Suspicion, as Lord Devlin said in Hussien v Chong Fook Kam [[1970] AC 942 at p 948], 'in its ordinary meaning is a state of conjecture or surmise where proof is lacking: "I suspect but I cannot prove."' The facts which can reasonably ground a suspicion may be quite insufficient reasonably to ground a belief, yet some factual basis for the suspicion must be shown… The objective circumstances sufficient to show a reason to believe something need to point more clearly to the subject matter of the belief, but that is not to say that the objective circumstances must establish on the balance of probabilities that the subject matter in fact occurred or exists: the assent of belief is given on more slender evidence than proof. Belief is an inclination of the mind towards assenting to, rather than rejecting, a proposition and the grounds which can reasonably induce that inclination of the mind may, depending on the circumstances, leave something to surmise or conjecture.

Categories 4(a) and 5 48 It is convenient to consider these categories together because Ainsworth's submissions in relation to each category rely, in part, on its proposal in relation to how category 5 should be addressed. 49 Before summarising the parties' respective submissions, it is necessary to summarise further background facts. 50 In a letter dated 16 March 2018, Ainsworth's solicitors stated: While Ainsworth has engaged in some promotional activity, it has not made any application for regulatory approval of Jackpot Strike and has not accepted orders for the product. The games loaded onto the display EGMs at the exhibitions (presumably, the trade shows and the "launch") are not the games that will be the subject of any application for regulatory approval. The Jackpot Strike games that will be the subject of regulatory approval are not ready for regulatory submission. Further, Ainsworth has not yet decided when applications for regulatory approval will be made. Therefore, no commercial release date has been fixed for the Jackpot Strike product. 51 In a letter dated 29 March 2018, Ainsworth's solicitors communicated Ainsworth's preparedness to provide the following "undertakings and assurances": Immediately upon submission of the first application for regulatory approval to sell and supply a Jackpot Strike game and in any Australian State or Territory, Ainsworth will produce to Aristocrat's external lawyers and an agreed independent expert all documents submitted to the regulatory authority on behalf of Ainsworth as part of that application. Ainsworth undertakes and assures that Mr Prabhu will have had no involvement whatsoever in the design of any Jackpot Strike game that is developed and submitted for regulatory approval. 52 In that letter, the solicitors also said that Ainsworth would certify by way of statutory declaration that it does not have in its possession, custody or power (after a reasonable search) any of the external storage devices apparently used by Mr Prabhu, a copy of any folder named "hrg stuff", or any documents that Mr Prabhu copied, transferred, removed or exported in physical or electronic form from Aristocrat or HRG between 2 March and 23 March 2017. This "certification" was provided by Mr Greenslade's declaration to which I have referred at [22] above. 53 In a letter dated 16 April 2018, Ainsworth's solicitors conveyed a further undertaking by Ainsworth that it would not sell, supply, market or promote any of the versions of Jackpot Strike that were displayed at the events to which I have referred. Ainsworth's solicitors said that, consistently with that undertaking, Ainsworth was in the process of removing all references to Jackpot Strike from its marketing and promotional materials (although not references to Jackpot Strike from hardcopy brochures that had already been disseminated). However, Ainsworth's solicitors also said that it remained Ainsworth's intention to release a Jackpot Strike gaming machine in the future. In that connection they said that no such gaming machine was ready for regulatory approval and that Ainsworth had not determined what features any such game would have. 54 It is necessary for me to return to the statements made in Ainsworth's solicitors' letter dated 16 March 2018. In a letter dated 11 July 2018, the solicitors sought to clarify the statement that Ainsworth had not accepted orders for a Jackpot Strike product. Ainsworth's solicitors said that Ainsworth had accepted orders for other gaming machine products prior to 16 April 2018 in circumstances where it offered to convert those products to a Jackpot Strike product or any product in Ainsworth's product portfolio (including a Jackpot Strike product), subject to a Jackpot Strike product obtaining regulatory approval. Ainsworth's solicitors communicated their instructions that customers who had submitted such orders had been notified verbally by Ainsworth's sales representatives that the Jackpot Strike game in the form marketed or promoted by Ainsworth at the events to which I have referred, will not be made available. Ainsworth's solicitors also said that Ainsworth's sales representatives had been instructed to advise these customers, and any other customers who express an interest in Jackpot Strike, that a Jackpot Strike product will no longer be developed by Ainsworth. 55 The last-mentioned statement caused Aristocrat's solicitors to seek a definite answer whether Ainsworth will be releasing any Jackpot Strike product into the market. On 6 August 2018 (the day before the instant hearing), Ainsworth's solicitors wrote to Aristocrat's solicitors stating that a Jackpot Strike product is no longer being developed by Ainsworth, although it remained Ainsworth's intention to use the Jackpot Strike trade mark at some stage in the future. 56 Aristocrat took me to some correspondence between it and one of its customers, as late as April 2018, which suggests that at around this time Ainsworth had represented or was representing that new games/upgrades to be released by Ainsworth (namely, Jackpot Strike) would compete with Lightning Link, thereby enlivening, in Aristocrat's submission, its belief summarised at [16] above. I accept that its belief that it may have the right to obtain relief in that regard is reasonably held, but that it has insufficient information to decide whether to start a proceeding in the Court to obtain that relief. Aristocrat seeks the category 4(a) documents to enable it to assess whether Ainsworth has made or is continuing to make such representations. As developed in oral submissions, it seeks the category 5 documents for essentially the same purpose, particularly in light of the corrected information communicated in Ainsworth's solicitors' letter dated 11 July 2018. 57 In evidence, Aristocrat also sought to justify the need for discovery of the category 5 documents on the basis that they would enable Aristocrat to assess the existing and potential damage or loss to Aristocrat resulting from Ainsworth's conduct. I note that this justification is not confined to prospective claims for relief based on misleading or deceptive conduct or the making of false representations, but extends to prospective claims for relief based on copyright infringement and misuse of confidential information. 58 In light of the statements made by Ainsworth's solicitors in the correspondence I have summarised, any claims for relief in respect of misleading or deceptive conduct or the making of false representations would relate to conduct or representations made with respect to versions of the Lightning Strike product which, it seems, Ainsworth no longer seeks to release to the market. This does not mean, however, that Ainsworth may not have engaged in misleading or deceptive conduct or made false representations to the effect of that summarised at [16] above, or that Aristocrat's belief that it may have the right to obtain relief in that regard is not reasonably held. 59 Ainsworth submits that, on the presently available material, any case for relief based on misleading or deceptive conduct or the making of false representations is "demonstrably weak". This, however, is not the relevant question under r 7.23(1)(a). As I have noted, the relevant question in that regard is whether Aristocrat has a belief, reasonably held, that it may have the right to obtain relief: see [46]-[47] above. 60 Further, as was made clear in oral argument, Ainsworth's submission in this regard proceeds on the basis that Aristocrat's prospective case would be based on passing-off, or on conduct or representations by Ainsworth that suggests that there is an affiliation or association between Ainsworth's products and Aristocrat's products. Some part of Aristocrat's evidence is directed to that proposition, but Aristocrat's case in support of both categories is also directed to its belief that false or misleading representations may have been made concerning the features and performance characteristics of Jackpot Strike when compared with the features and performance characteristics of Lightning Link. Ainsworth's submission does not engage with this particular basis on which relief might be available. 61 Ainsworth further submits that its proposal to provide a confidential summary allowing Aristocrat to assess the number of units of Jackpot Strike that have been ordered, and in respect of which expressions of interest have been made, would provide Aristocrat with sufficient information to enable it to decide whether to start a proceeding in the Court to obtain relief for misleading or deceptive conduct or the making of false representations. 62 I do not accept that submission. While the summary proposed by Ainsworth may provide information which is informative of the extent of any loss or damage that Aristocrat might have suffered, it would not provide information as to the nature of the specific representations that might have been made or whether those representations, if made, would have, or would have been capable of, causing loss or damage. Further, the summary would not inform Aristocrat of the nature and extent of any other relief to which it might be entitled beyond damages. 63 I am satisfied that Aristocrat has made out its case for preliminary discovery in respect of the documents in both categories. Specifically, I accept that it has satisfied the requirements of paragraphs (a) and (b) of r 7.23(1), which are the requirements in contest in respect of these categories.

Categories 6 and 7 64 It is convenient to deal with these categories together. They are directed to prospective claims for relief in respect of the misuse of confidential information in connection with the design of Jackpot Strike or any other Ainsworth game, and in respect of breach of contract by Mr Prabhu and inducing breach of that contract by Ainsworth. 65 As to a prospective case for relief based on misuse of confidential information, Ainsworth submits that Aristocrat has sufficient information in order to decide whether to start a proceeding in the Court to obtain relief. It relies, firstly, on the information provided in Mr Greenslade's declaration: see [22] above. It argues, relatedly, that there is no utility in requiring Ainsworth to undertake again the task which Mr Greenslade says he has already undertaken. 66 Ainsworth also relies on the fact that Aristocrat has obtained certain patents and filed certain patent applications covering systems and methods employed by Aristocrat in Lightning Link and other games. It is in this context that Ainsworth relies on the passage from Reeve quoted at [44] above. 67 The point that Ainsworth seeks to make in this regard is opaque. Further, the relevance of the passage from Reeve is not apparent in this particular context. Ainsworth's argument appears to be that, on the assumption that Aristocrat has complied with its legal obligations under s 40 of the Patents Act 1990 (Cth) with respect to the drafting of complete specifications for standard patents, it is difficult to see that there remains any information that could be regarded as confidential information, protectable as such. 68 As to a prospective case for relief based on breach of contract, or inducing breach of contract, Ainsworth also submits that Aristocrat has sufficient information in order to decide to start a proceeding in the Court to obtain relief. Ainsworth submits that the only asserted breach is Mr Prabhu's alleged breach of the six months restraint period when he commenced his current employment with Ainsworth. It submits that Aristocrat has full knowledge of the terms of the contract and of the factors it would rely on to argue that a breach has occurred, and that the restraint was reasonable in the circumstances to protect its own interests. It further submits that Aristocrat has sufficient information to determine whether it can reasonably allege that Ainsworth had knowledge of the restraint in Mr Prabhu's contract with Aristocrat at the time Ainsworth offered to re-employee Mr Prabhu, given that, on Aristocrat's own evidence, Mr Prabhu's previous employment agreement with Ainsworth included a restraint and that restraint periods are relatively standard for game designers. 69 I am satisfied that Aristocrat has made out its case for preliminary discovery in respect of the documents in both categories. For the reasons stated at [28] above, I give Mr Greenslade's declaration little weight. The declaration is completely uninformative as to the enquiries which Mr Greenslade made. I am not persuaded, for example, that they would be sufficient to discharge the obligation that an order for discovery would impose. Further, the fact that Mr Greenslade has made enquiries, without the Court knowing what those enquiries were, does not stand as a sufficient reason to refuse preliminary discovery on discretionary grounds. 70 As to Ainsworth's reliance on Aristocrat's patents and patent applications, Aristocrat has adduced evidence from one of its in-house patent attorneys, Mr Ma, to the effect that, beyond the matters required to be disclosed in a complete specification for a standard patent, there are also separate copyright works and confidential information relating to the Lightning Link games. These include the underlying mathematics documents which drive the gameplay. Mr Ma's evidence is that this information cannot be ascertained by playing or reverse-engineering the games in question. The evidence is that Mr Prabhu had access to this information - in particular, combination sheets (the mathematical blueprints for Aristocrat's games), source mathematics documents and submissions for regulatory approval - or obtained access to the information without Aristocrat's authorisation. Aristocrat does not know whether or to what extent such information might have been used in developing Jackpot Strike. As I have noted, there is now no doubt that Mr Prabhu was involved in the development and design of existing versions of Jackpot Strike. Further, the evidence establishes that there are similarities in operation between Lightning Link and Jackpot Strike. The document sought in categories 6 and 7 are directly relevant to whether any of Aristocrat's claimed confidential information was used in the development or design of Jackpot Strike. I am satisfied that Aristocrat's belief that it may have the right to obtain relief for misuse of confidential information is reasonably held, but that it has insufficient information to decide whether to start a proceeding in the Court to obtain that relief. 71 In light of this conclusion, it is not necessary for me to consider whether an order for preliminary discovery of the documents in these categories is also supported by Aristocrat's prospective claims for relief in respect of breach of contract and inducing breach of contract.

Disposition 72 Orders for preliminary discovery should be made in respect of each of the categories sought in Aristocrat's amended originating application. The parties should provide an agreed minute of the orders to be made to give effect to my findings and conclusions. 73 Aristocrat has asked that it be given the opportunity to address me on the question of costs. I will grant this opportunity, but it seems to me that, with the benefit of short written submissions, this question can be determined on the papers. I will make orders accordingly. I certify that the preceding seventy-three (73) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Yates.