Documents sought in Category 9
53 The final category of documents sought are those recording or evidencing communications or correspondence passing between Rockwool and external patent agents or attorneys prior to 8 November 1994 regarding the alleged inventions, including but not limited to the patentability of those inventions. At the hearing of the motion, counsel for CSR limited this category by reference to Category 6, that is, to such documents passing between Rockwool and its patent advisors relevant to the matters that are the basis of grounds for the selected oxide ranges and other parameters. As in the case of the Category 6 documents, the documents in Category 9 are also said to relate to the grounds of alleged invalidity concerning lack of inventive step, manner of manufacture, false suggestion and insufficiency.
54 Rockwool asserted that the Category 9 documents it holds are not relevant to any issue in dispute between the parties.
55 CSR referred to several authorities indicating that the Category 9 documents are not protected from disclosure by the doctrine of legal professional privilege: see, e.g. Eli Lilly and Company v Pfizer Ireland Pharmaceuticals (2004) 137 FCR 573. However, those authorities do not assist CSR in relation to the question of relevance. Furthermore, even if the Category 9 documents were privileged, such privilege would not relieve Rockwool of any obligation to provide discovery of them.
56 It is convenient to deal with Categories 1 to 4 of the claimed further discovery together, as they fall under the general rubric of Project Sleipner activities. I am not persuaded that the documents in respect of which further discovery is sought in those four categories are documents which fall within the reach of O 15 r 2(3) of the Rules. There is no material which, to my mind, reveals that Rockwool has not addressed in its discovery the prior art directly relevant to the assertion that the alleged inventions are not novel. Indeed, as I understood the submissions for CSR, the dispute arises because it claims that an incorrect assessment has been made by Rockwool about the materiality of the documents in Categories 1 to 4 rather than that their relevance has not been assessed at all by Rockwool. Of course, Rockwool's assessment of the extent to which such documents should be discovered is not conclusive. That is a matter for the Court. But, on the other hand, the existence of a document or documents which possibly touch upon an issue in question in the proceeding is not itself sufficient to order its discovery: Mulley v Manifold (1959) 103 CLR 341 at 344 - 345. That is a matter to be decided by the Court from the pleadings and the evidence on the application.
57 The class of the first category of documents, in my view, is not, by its description or by such information as there is as to its likely contents, of such a nature as to satisfy the "relevance" hurdle of O 15 r 2(3). The conferences and meetings referred to, and including the presentations by an employee or employees of Rockwool in April 1994 and in September 1992, are obviously not confined to the product claims concerning MMV fibres in Rockwool Patent #1 or the method of producing MMV fibres in Rockwool Patent #2. The fact that, at such conferences and meetings, there would have been information sharing between informed persons in the general industry does not indicate or tend to indicate that the information included information about the prior art concerning or leading up to the particular claims made in the two patents. Accordingly, I do not consider that there is a prima facie case that the conferences and meetings included in the exposure of information concerning whether the claimed inventions the subject of those patents involved an inventive step compared to the prior art. It is a case of the material relied upon by CSR not taking me over that threshold test. See the discussion by Tomlin J in Astra-National Productions Ltd v Neo-Art Productions Ltd [1928] WN 218 at 219.
58 That conclusion reflects the view I have come to, notwithstanding the careful and helpful submissions of senior counsel for CSR, that discovery in this matter should be confined to documents which relate directly to the particular issues concerning the validity of the two Rockwool patents in suit, and that wider inquiry of material concerning Project Sleipner generally or relating to other fibres or processes than the particular products and process the subject of the two patents will not expose documents which fall within the coverage of O 15 r 2(3) of the Rules.
59 I have reached the same conclusion in relation to the Category 1 documents, insofar as CSR contended that they may expose that the claimed characteristics of elements of the Rockwool Patents were previously well known and recognised by manufacturers of MMV fibres, so that documents of that class may support CSR's third ground of alleged invalidity. It is necessary for a prima facie case to be made out that the category of documents sought to be discovered, including of the two particular presentations specified, may adversely affect the case of Rockwool or may support the case of CSR. I am not satisfied that they might do so.
60 The second category of documents sought is, I think, somewhat more speculative as to its "relevance" in terms of O 15 r 2(3). There was no dispute that there are many undiscovered exchanges of information between Rockwool and third parties, including the nine specified persons or entities. What is not apparent in the material before me is that those exchanges of information (other than those which have already been discovered by Rockwool) relate to the MMV fibres or the method of producing them which are the subject of the two Rockwool patents. For the reasons already given, I am not satisfied that a prima facie case has been made out that such documents as exist within this category, and which have not already been discovered, may advance CSR's case or may detract from Rockwool's case in the way anticipated by CSR.
61 As I have indicated, that conclusion applies also to the documents sought in Categories 3 and 4 of the further discovery sought by CSR. In each instance, I have considered the material to which I was referred by senior counsel for Rockwool, but I did not conclude that there was a prima facie case that documents within either of those categories might advance CSR's case or adversely affect Rockwool's case concerning the Patents in suit. In particular, I note CSR's contention that the minutes and reports sought by CSR may include research documents on MMV fibres other than HT fibres to explain why HT fibres were chosen by Rockwool for development to lead to the claims in the two patents. That may be the case, but it is only a speculative assertion. More importantly, to my mind, the material does not indicate that Project Sleipner concerned the particular fibres or process the subject of the two patents in suit or that there is a real basis for concluding that the material sought to be discovered would fall under the coverage of O 15 r 2(3). That is so, even if there were some material within the documents in Category 3 which might indicate why Rockwool came to focus or refine its research, or certain of its research, on developing HT fibres (and I do not think such a claim goes beyond speculation). The existence of documents reviewing or assessing Rockwool's general research and development options would not of itself provide information which might advance CSR's case or might be adverse to Rockwool's case, and the material before me does not lead to the conclusion that Rockwool has not or may not have discovered documents which more directly indicate the development of its research leading to the claims made in the two patents in suit concerning HT fibres. The Category 4 documents, in my view, attract the same conclusions. The Project Sleipner umbrella does not identify documents which, prima facie, are relevant to the issues in this proceeding. And once that request is confined to publications of analysis results, reports, or conclusions or other material about HT fibres, it is not shown that there may be documents beyond those already discovered by Rockwool which should have been, and have not been, discovered by Rockwool.
62 There is no dispute between the parties that documents of the kind described in Category 6 should be discovered by Rockwool, as they may expose tests to evaluate the validity of the patents in suit. Rockwool's response, as noted, was simply that such documents as exist have already been discovered.
63 The exchange between senior counsel for the parties on this part of CSR's claim exposed that the documents which Rockwool had discovered under this category may not have been as readily identifiable in Rockwool's lists of documents as falling within the category as might have been the case. That is not intended as a criticism of Rockwool, or indeed of CSR for not having identified readily what the relevant discovered documents were. It is simply an observation derived from the submissions to explain why the issue was, at the time of argument, an ongoing one. The CSR contention was that research and experimentation documentation had been discovered, but not that relating to the reasons for selecting oxide ranges, or other parameters including the sintering temperature of the viscosity ranges. In submissions in response, senior counsel for Rockwool identified by discovery number a significant number of documents said to have disclosed such material. Not unexpectedly, I am not able from the descriptions of those documents to discern whether they do relate to the particular research features or elements upon which CSR focused. At present, I am therefore unable to decide whether further discovery by Rockwool should be ordered of documents, or certain documents, falling within Category 6. At present, I am not satisfied that Rockwool has further discoverable documents in that category which it has not discovered.
64 The Category 9 documents, as noted above, were confined in oral submissions on behalf of CSR to documents passing between Rockwool and its patent advisers on the matters to which Category 6 refers. I was uncertain from the response of senior counsel for Rockwool whether the documents discovered, and said to fall within Category 6, included all such communications or whether there were some such communications between Rockwool and its external patent advisers which were claimed to be privileged but had not been separately discovered as such.
65 At present, I am not satisfied that there are documents within Category 9 (as so confined) which have not been discovered or whether the discovered documents said by Rockwool to be encompassed within Category 6 include documents which fall also within Category 9. I do not anticipate any difficulty in the parties, through their legal representatives, clarifying that position privately. If then Rockwool has documents within Category 9 which it has discovered but claimed to be privileged from production, or makes such a claim, it can be addressed.