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Representation: Counsel:
B Lloyd (Plaintiffs)
N Kabilafkas (Defendant)
Solicitors:
HFW Australia (Plaintiffs)
Holding Redlich (Defendant)

File Number(s): 2023/00168801

JUDGMENT

1. These proceedings and the motion presently before the Court concern a Summons filed by the Plaintiffs (who are the Applicants on the motion) on 26 May 2023 by which they seek preliminary discovery of all documents in the possession, custody or control of the Defendant (the Respondent to the motion) within nine categories described in Attachment A of the Summons, together with an order for costs.

2. Despite the effluxion of more than three years since the commencement of these proceedings, the preliminary discovery dispute has not reached its terminus.

3. On 15 December 2023, the Common Law Registrar ordered by consent that the Respondent make discovery of all documents which are, or have been, in its possession, custody or control which fall within the categories described in the attachment to those orders by 31 March 2024 (the Consent Discovery Order).

4. On 11 March 2025, the Applicants were given leave to file an Amended Notice of Motion in Court. The Amended Notice of Motion sought to amend the Summons filed on 26 May 2023 to include an “Attachment B” which listed further documents sought from the Respondent by the Applicants. In the alternative, it sought further and better discovery of the documents identified in Attachment B to the proposed Amended Summons. The Common Law Registrar’s orders gave effect to the latter, ordering the Respondent to give further and better preliminary discovery of Categories 1–8 of Attachment B to the Amended Summons (which was not filed) annexed to the Amended Notice of Motion.

5. On 31 October 2025, the Applicants filed a further Notice of Motion seeking a number of orders. What remains for determination by me is the relief sought in order 2, namely, that the Respondent give further and better discovery of all versions of a product owned by the Respondent known as “HumanTrak”. The Respondent opposes this order.

6. Justice Wright embarked upon a partial hearing of the motion in February 2026. On 17 February 2026, the parties agreed that cross-examination of the Respondent’s general counsel and company secretary, Mr Timothy Richard McCusker Wilkins, ought take place. The matter was then transferred to me. Mr Wilkins was cross-examined at some length on 5 March 2026. I heard submissions on 20 May 2026.

7. To determine this matter, I must examine the protracted history of not only the proceedings, but the circumstances giving rise to them, to provide necessary context for the further discovery orders now sought.

Parties

8. The Applicants are:

9. Dynamic Motion Detection Ltd, a company registered in the United Kingdom which acts as the commercial arm of Teesside University, Middlesbrough (First Applicant);

10. Shadowboxer Systems Pty Ltd (Second Applicant); and

11. Shadow Boxer International Pty Ltd (Third Applicant).

12. The Second and Third Applicants specialise in designing, manufacturing and commercialising exercise devices, including boxing movement devices.

13. The Respondent, Vald Pty Ltd (formerly known as Vald Performance Pty Ltd), is located in Newstead, Queensland. It is a musculoskeletal technology company that markets, sells and leases products designed to measure human movement, predominantly to practitioners in athletic performance and allied health. Since around December 2014 its CEO and director has been Mr Laurie Malone.

Background

11. In essence, the Applicants seek preliminary discovery so they may ascertain whether the “Technology”, which I describe below, has been wrongfully appropriated by Vald in the products that it has developed and currently sells.

12. The “Technology” was initially developed by Teesside University (the University), together with the Applicants. It is defined in the Consent Discovery Order (and further discovery orders) as:

“(a) The Patent;

(b) Any preferred embodiment of any claim of the Patent; and

(c) The Technology Platform.”

13. The “Patent” (as found in the definition of “Technology”) means:

“the method and apparatus for measuring expended energy embodied in registered Patent PCT 2012/172375.”

14. The Patent teaches the use of multiple sensors, including inertial measurement units, cameras, GPSs, accelerometers, heart rate monitors and calorimetry devices, to capture human movement data and measure expended energy, including by deforming resistive devices and measuring relative distance based on motive force.

15. The “Technology Platform” (as found in the definition of Technology) is defined as a technology platform comprising at least the following elements:

“(a) Algorithms developed by the University for the purposes of enabling individual subjects to perform physical movements and forces and record and display data corresponding to those movements and forces in a form that provides data feedback to the subjects and others;

(b) Hardware developed by the University used by individual subjects to capture and transmit physical movement and force data (referenced in (a) above) to a software program;

(c) Software developed and authored by the University to receive, process and display physical movement data captured and transmitted by the Hardware (in (b) above); and

(d) Software and application programming interfaces developed and authored by third parties (referable to (a) to (c) above).”

Technology Licence Agreement

16. On 10 October 2014, a Technology Licence Agreement was entered into between the Applicants and a company known as The Realm System Pty Ltd (Realm) (the TLA). The Applicants and Realm entered into the TLA to commercialise and exploit the Patent and the Technology Platform. It also provided a facility for their licence and sub-licence in defined markets.

17. The definitions of “Technology” and “Technology Platform” found in the Consent Discovery Order without doubt adopt their definitions from the TLA. I set out their definitions in the TLA below.

18. Clause 3.1(r) defined the “Technology” as:

“(i) the Patent;

(ii) any preferred embodiment of any claim of the Patent; and

(iii) the Technology Platform,

but, notwithstanding any other defined term, excludes any Shadow Boxer Product or the Shadow Boxer Design.”

19. “Technology Platform” was defined in cl 3.1(s) as the following:

“(i) algorithms developed by Teesside University for the purposes of enabling individual subjects to perform physical movements and record and display data corresponding to those movements in a form that provides data feedback to the subjects and others;

(ii) hardware developed by Teesside University used by individual subjects to capture and transmit physical movement data (referenced in (i) above) to a software program;

(iii) software developed and authored by Teesside University to receive, process and display physical movement data captured and transmitted by the hardware (in (ii) above); and

(iv) software and APIs developed and authored by third parties (referable to (i)-(iii) above),

as amended, modified, improved and the like by Teesside University or the Licensor Parties from time to time.”

20. For clarification, in this judgment, the expressions “Technology” and the “Technology Platform” are used in the sense defined in the Consent Discovery Order made on 15 December 2023.

21. On 30 September 2015, a Deed of Assignment was executed between Realm, Dr Pierre Lagadec and ABCIP Pty Ltd (the Deed). Dr Lagadec was initially a student at the University who was involved in developing the Technology. He was later employed by Realm and subsequently by Vald. The Applicants described Dr Lagadec as having been “intimately involved in [the Technology’s] development history through Realm, the associated companies and into Vald”.

22. Under the Deed, Realm purported to assign to ABCIP Pty Ltd its right, title and interest in the “Business IP” for the nominal consideration of $1. The Business IP included the intellectual property specified in Schedule 1 of the Deed which consisted of, inter alia, the “University tech” obtained from the University, and all intellectual property rights created for the purpose of exploiting rights granted to Realm by the Applicants under the TLA. The Applicants say that they were unaware of the Deed prior to receiving it through Vald’s preliminary discovery served on 15 May 2024.

23. On 6 July 2016, the TLA was amended by an agreement between the Applicants and Realm (the Amended TLA). The Amended TLA restated the key definitions of “Technology” (now at cl 3.1(t)) and “Technology Platform” (now at cl 3.1(u)) in the same, or substantially similar, terms as under the TLA.

Vald’s products

24. In 2016 Vald started selling “NordBord”, which was a hardware device used with software to measure hamstring strength. It also developed other products such as “GroinBar”, later renamed “ForceFrame” (a hardware device used with software measuring groin strength) and “DashBord”, later renamed “Vald Hub” (a cloud-based software to store and display data captured from Vald products).

25. In June 2017, Vald acquired the issued share capital in Bio X Data Holdings Pty Ltd (Bio X). Bio X held all the issued share capital in Realm and ABCIP Pty Ltd. In consequence, Vald acquired Realm. At the time of the acquisition, which was facilitated through a document styled “Sale Deed” (the Sale Deed), Bio X was selling a product called “BioCap” which Mr Malone, Vald’s CEO, described as comprising:

26. a set of inertial measurement unit sensors worn as ankle and wristbands;

27. an infrared camera, called the “Kinect”, which used Microsoft Windows Software Development Kit, a publicly available off-the-shelf product;

28. algorithms that combined the data from the sensors with data from the infrared camera; and

29. a software interface that operated the above.

30. Mr Malone described BioCap, in his view, as comprising two streams of technology. Stream 1 measured human movement. Stream 2 measured expended force or energy. Mr Malone understood that the Technology (as defined in the TLA and Amended TLA) corresponded to Stream 2.

The HumanTrak dispute

27. In approximately October 2017, Vald began selling a product called “HumanTrak”. Mr Malone described HumanTrak in his 20 October 2023 affidavit as “a hardware device used in conjunction with software that measures how and to what extent an individual moves, including the angles in which their body moves”. He deposed that, in developing HumanTrak, Vald removed the computer coding that allowed BioCap’s Stream 2 (force and energy measurement) to function, excluded the ankle and wristbands, and retained the use of the Kinect infrared camera (which was later replaced by the Azure Kinect DK, a publicly available Microsoft hardware product). He deposed that “HumanTrak does not measure, has never measured, and has never sought to measure, expended energy or force by a person”.

28. The Applicants’ position, supported by an expert report by Mr Gregory Crouse dated 27 October 2025 (the Crouse Report), is materially different. They contend that HumanTrak embodies or relates to the Technology for the following reasons:

29. Vald’s research and development tax incentive application for 2017–18 stated that “the technology was originally developed by researchers at Teesside University and commercialised by The Realm System Pty Ltd under the brand name ‘BioCap’. Vald Performance acquired the technology in June 2017 and rebranded the technology as ‘HumanTrak’”;

30. Realm’s quarterly reports over several years reported HumanTrak as a product in respect of which royalties were payable to the Applicants; and

31. improvements to HumanTrak embody or relate to the Technology or part of it.

32. Vald markets HumanTrak as a “3D motion capture and biomechanical analysis in a portable, plug-and-play system” that “measures what the eye can’t see” and provides “live rep-by-rep analysis, detailed reports, and video biofeedback”. The Crouse Report observes that these “commercial offerings promise the same fundamental outcomes as the patented technology: the capture of human performance data, its biomechanical analysis, and structured reporting and storage of results”.

Negotiations

30. During 2018, the Applicants negotiated with Vald for months regarding Vald’s development of the Technology. The Applicants contend that, in those discussions, Vald’s employees demonstrated a detailed understanding of the Technology and its development.

31. On 18 September 2018, Mr Malone wrote to Mr Paul Todd, a director of the Second and Third Applicants. That letter stated that HumanTrak “is provided on a modular basis and various modules do not use the technology” covered under the TLA. Mr Crouse says that this assertion requires a comparison of the full original source code and related materials with the HumanTrak code, which Vald has not fully produced.

32. The Applicants also relied on Realm’s last quarterly report for 2019, which described HumanTrak as a product for which royalties remained payable to the Applicants. The report noted that the “majority of the Q4 engineering effort has been invested into the refactoring of the HumanTrak database” which was “a necessary step to ensure future development due to inherited technical debt”. The Applicants see this as an admission that HumanTrak was considered by Vald/Realm as a product related to the Technology and in relation to which royalties remained payable.

33. On 26 September 2019, Dr Geoff Archer of the University emailed Mr Malone and Mr Andy Todd, a director of the First Applicant. Dr Archer sought clarification as to what aspect of Vald’s products contained the intellectual property developed by the University. He asked Mr Malone to nominate and describe the key elements of the intellectual property, to list the elements needed for Vald’s current or future marketing plans, to list elements that Vald did not need and which the University might use unencumbered, and to indicate whether Vald still had an appetite to develop a solution based on the “original concept”. He also raised issues as to outstanding payments.

34. Mr Malone responded by email on 24 October 2019. He stated that he had “asked Shadow Boxer on numerous occasions for a definition of the IP without an answer”. Mr Malone said he consulted Dr Lagadec about this and was informed that “the actual IP is limited and rather outdated now (and has been for some time)”. He indicated that, given the lack of defined IP, he found it difficult to explain exactly what was needed. He concluded by stating:

“Ultimately I think the definition of IP (or lack thereof) has created a situation where Shadow Boxer does not have an understanding of the current situation and shoots from the hip rather than reverting back to the IP. I think if a fully [sic] review of the patent is done (assuming the patent is the key part of the IP), there is actually limited commercial use as set out in the patent.”

35. There appear to have been few or indeed no further exchanges on this topic until Mr Malone’s email to Mr Paul Todd, Mr Andy Todd and Mr Robert Bucci on 13 January 2021. In that email Mr Malone stated that the technology in HumanTrak “has become redundant and at best is used in some peripheral aspects”.

Solicitors’ correspondence

36. Prior to the commencement of the proceedings, HFW Australia, acting for the Applicants, and Vald exchanged nine letters in which the Applicants requested various categories of documents from Vald. The letters were:

37. HFW’s letter to Vald dated 13 March 2020;

38. Vald’s letter to HFW dated 30 March 2020;

39. HFW’s letter to Vald dated 14 May 2020;

40. Vald’s letter to HFW dated 26 May 2020;

41. HFW’s letter to Vald dated 4 June 2020;

42. HFW’s letter to Vald dated 23 June 2020;

43. HFW’s letter to Vald dated 8 September 2020;

44. HFW’s letter to Vald dated 26 October 2020; and

45. Vald’s letter to HFW dated 27 October 2020.

46. HFW’s letter of 26 October 2020 requested that Vald provide various categories of documents to allow assessment of potential claims. On 27 October 2020, Vald declined to provide any of the requested documents. The document categories requested included those in relation to Vald’s acquisition of Realm, the intellectual property mapping exercise referred to in Mr Malone’s email dated 22 April 2018, the development of HumanTrak, the “Realm System” and/or the BioCap, and all documents relating to the Technology and any improvements. In relation to the mapping exercise, Mr Malone’s email to Mr Paul Todd dated 22 April 2018 relevantly stated:

“We have had our IP lawyers, the university and an industry expert go through the IP and we have mapped out where it exactly sits and where it doesn’t. Unfortunately it appears you think it extends well beyond where it does.”

38. It appears there was a hiatus in correspondence from HFW until its letter dated 28 February 2023 to Mr Wilkins and Vald. This letter was the final demand prior to filing the Applicants’ preliminary discovery application. That letter referred to the nine previous letters in 2020. HFW informed Vald that the Applicants had now obtained litigation funding to bring a preliminary discovery application against it but, before filing the application, one final attempt would be made to obtain the documents voluntarily. HFW requested that Vald provide the documents described in Schedule 1 to the letter by 13 March 2023, noting that it had been requesting many of these documents for almost three years. The letter indicated that, if those documents were not received by that date, the Applicants would commence a preliminary discovery application without further notice and would rely on the correspondence on the question of costs.

39. In Schedule 1, HFW sought nine categories of documents, including Categories 3, 4 and 5, which were as follows:

“3. all documents that contain, or refer to, the intellectual property mapping exercise undertaken by Vald that was referred to in an email from Laurie Malone to Paul Todd on 22 April 2018;

4. all documents that relate to the development of HumanTrak, the Realm System and/or the BioCap System;

5. all documents that relate to the Technology, including any Improvements to the Technology.”

40. There is no response from Vald in evidence. I infer from this that Vald ignored the Applicants’ request.

These proceedings

41. The Applicants commenced these proceedings on 26 May 2023. The Summons seeks an order under r 5.3 of the Uniform Civil Procedure Rules 2005 (NSW) (UCPR) for the discovery of all documents in Vald’s possession, custody or control within the nine categories described in Attachment A, together with an order for costs. The Summons was accompanied by an affidavit of Sophy Woodward, a partner of HFW. That affidavit sets out the factual matrix underlying the Applicants’ proposed claims and refers to the email of 22 April 2018 from Mr Malone to Mr Paul Todd regarding the IP “mapping exercise”.

42. Vald provided discovery on or about 15 May 2024. The Applicants were not satisfied with this production.

43. By letter to Vald’s solicitors, Holding Redlich, on 26 July 2024, HFW raised substantial non-compliance in relation to several categories. In relation to Category 5, no documents were produced. HFW contended that this was inconceivable given that Mr Malone’s affidavit confirmed that the Technology was embodied in or related to BioCap, which had been rebranded as HumanTrak. It also referred to Vald’s research and development tax incentive application for 2017–18, which stated the Technology was commercialised by Realm, acquired by Vald and rebranded as “HumanTrak”.

44. By letter dated 16 August 2024, Vald (through its solicitors) responded to HFW’s 26 July 2024 letter and the further correspondence exchanged in the meantime.

45. In paragraphs [1] to [16] of its letter, Vald essentially held the Applicants to blame for failing to engage meaningfully with its request for information about the Technology in December 2023. Vald stated that, having failed to provide such assistance, the Applicants could not now criticise Vald’s reasonable search approach. It contended that the Applicants’ 18 January 2024 response was of minimal assistance. Had the Applicants provided the original software code, algorithms and specifications, Vald could have conducted targeted searches. Rather, in the absence of such information, Vald was forced to reconstruct an understanding of the Technology from contextual materials, namely, the TLA, the Patent and other extrinsic materials.

46. In paragraphs [22] to [36], Vald responded to the purported non-compliance with Category 5 of discovery. It rejected the Applicants’ contention that Vald’s interpretation of “Technology” was too narrow. Vald said its interpretation was reasonable given that it did not have copies of the original source code created by the Applicants.

47. In circumstances where Vald had searched for and not found the Technology in its products, those products did not “relate to” the Technology within the definition. It then addressed its research and development tax incentive application, Mr Malone’s affidavit, Realm’s quarterly reports and the Kinect camera argument. For these reasons, and those provided in relation to other categories, Vald disputed the non-compliance alleged by the Applicants.

48. When the matter returned to this Court on 4 October 2024, the Common Law Registrar ordered the Applicants, by 5 pm on 21 October 2024, to file and serve a Notice of Motion seeking leave to amend the Summons to include additional categories of preliminary discovery.

49. A Notice of Motion (and, subsequently, an Amended Notice of Motion) was filed on 21 October 2024, together with a supporting affidavit of Maurice Thompson, a partner of HFW who had commenced acting for the Applicants. Mr Thompson deposed that the purpose of the motion was to amend the Summons to seek additional preliminary discovery from Vald given (what was contended to be) Vald’s restrictive interpretation of the Consent Discovery Order. Mr Thompson stated that, had Vald raised its restrictive interpretation during the negotiation of the Consent Discovery Order, the Applicants would not have consented to the orders and would have, at that time, sought the additional discovery categories that they were now seeking in the Amended Summons/Amended Notice of Motion.

50. The proposed Amended Summons contained Attachment A, which formed part of the original preliminary discovery categories from the 26 May 2023 Summons. It added “Attachment B” which sought additional/further preliminary discovery. Attachment B contained nine items.

51. On 11 March 2025, following a hearing of the Amended Notice of Motion (which amendment was filed in Court on 11 March 2025), Registrar Hedge ordered Vald to give further and better discovery in respect of Categories 1–8 of Attachment B of the Amended Summons.

52. Vald served a list of documents dated 20 June 2025. Pursuant to consent orders dated 15 April 2025 that established a confidentiality regime, on 26 June 2025, Vald provided those documents to the Applicants’ legal representatives.

Mr Crouse’s expert report

53. On 25 October 2025, HFW retained Mr Crouse, senior managing director at FTI Consulting, as an independent expert. Mr Crouse holds a Bachelor of Business Administration in finance from the University of Texas at Austin, and a Master of Science in Information Technology Management from Western Governors University. He has more than 30 years’ experience in implementation and software development.

54. Mr Crouse was retained to provide an expert opinion as to whether Vald had provided all the software code and other documents expected to be produced in answer to the category requiring production of the original version of HumanTrak (Category 3) pursuant to the 11 March 2025 orders. He produced a preliminary report on 27 October 2025.

55. Mr Crouse’s preliminary opinion was that Vald’s documentary production was incomplete and inadequate despite the 11 March 2025 orders, owing to, predominantly, the limited scope of source code provided (273,976 lines of code, compared with the at least 14 million lines of code in Vald’s repository). He also observed that no design or architectural documentation was provided and that code relating to business logic (e.g. application of biomechanical components) was particularly absent. He concluded that the absence of those materials prevented him from unequivocally determining whether the HumanTrak software continues to leverage the Technology.

56. He also considered that the marketed functionality of HumanTrak, as reflected in the source code provided, appeared to overlap, from a technical and functional perspective, with the predecessor Realm product. He further opined that the source code contained references to BioCap. No doubt on the basis of this report, the Applicants filed their present Notice of Motion seeking to cross-examine Vald’s general counsel, Mr Wilkins, and an order that Vald give further and better discovery in respect of all versions of HumanTrak.

57. Mr Wilkins’ further affidavit, affirmed on 19 December 2025, responded to Mr Covington’s affidavit filed in support of the Notice of Motion. It is necessary to set out the matters addressed in Mr Wilkins’ detailed affidavit. He affirmed, amongst other things, the following matters:

58. over more than two-and-a-half years, Vald had applied considerable time and effort to conduct various searches and provide two tranches of discovery: [12];

59. on 26 June 2025, Vald complied with its obligations under the further preliminary discovery orders made by Registrar Hedge by producing the original version of HumanTrak. He stated that this was done following Mr Malone’s statement, in his 20 October 2023 affidavit, that “HumanTrak … ceased using any part of the Technology” in around mid-2017. The rationale was that if HumanTrak included the Technology at some earlier time, and later ceased using it, the original version should be produced so the Applicants could consider whether the Technology was present: [13]–[14];

60. Vald’s reference to 14 million lines of code was a reference to Vald’s entire code repository for all its products, rather than HumanTrak specifically, such that Mr Crouse’s conclusion that there was a shortage of approximately 13.73 million lines of code was based on an erroneous premise. Mr Wilkins stated that the majority of those 13.73 million lines of code related to other Vald products not required to be produced pursuant to the further preliminary discovery orders: [24]–[27];

61. the fact that there was no developer documentation, including design and architectural documentation (in response to paragraph [42] of the Crouse Report), was a consequence of Dr Lagadec’s not being a software engineer but, primarily, a biomechanist who had limited experience in commercial software engineering/development and who worked for a small company with no fixed documentation requirements. In consequence, Dr Lagadec did not create the developer documentation that a software engineer at a mature software company might create and, further, did not follow best practices used in contemporary software engineering: [28]–[30]; and

62. Mr Crouse’s reference to development guidelines from IBM was entirely inapposite. Whilst IBM has over 300,000 employees across 170 countries, with over 660 products, 19 research facilities across 12 laboratories on 6 continents, Vald had 3 products and fewer than 20 employees, such that any evaluation of the HumanTrak code against the software development standards of IBM was inappropriate: [31]–[35].

63. In addition to relying on Mr Wilkins’ fifth affidavit, Vald retained its own expert, Dr Matthew Wilson, to respond to the Crouse Report. Dr Wilson is an expert in the field of software development, programming and architecture. He reviewed the Crouse Report, as well as the three files produced by Vald in response to Category 3, which required production of “[a] complete copy of the original version of ‘HumanTrak’”. He provided his opinion on Vald’s search methodologies to date and addressed the concerns raised in the Crouse Report about the original version of HumanTrak, as produced. At paragraph [8.1], Dr Wilson concluded that Vald had performed all reasonable searches conceivable given the lack of specificity in the Applicants’ search request, the time that had elapsed, and personnel changes within its organisation. He also concluded that Mr Crouse’s “common practice” argument did not reflect the wide variety of organisational structures and resourcing arrangements in software development companies.

Legal principles

59. An affidavit verifying a list of documents must include a statement by the deponent that they have made reasonable inquiries as to the documents referred to in the order for discovery: UCPR r 21.4(2)(a). That requirement extends to affidavits verifying a list of documents in preliminary discovery applications: UCPR r 5.5.

60. The parties relied on several authorities. The principles that can be extracted from those authorities can be summarised as follows:

61. the “true rule” concerning an affidavit verifying discovery is that such an affidavit is conclusive on the question of sufficiency unless it can be shown:

(a) by recourse to the documents actually discovered; (b) from the content of the verifying affidavit itself; (c) from the pleading(s); and/or (d) from “any other source that constituted an admission of the existence of a discoverable document”,

that the discovery has been insufficient;

2. however, where a party takes a narrow view of what is discoverable and thereby misconceives the scope of its obligation, the Court can order further discovery without needing to identify the specific documents that are missing, since the error in approach is itself sufficient to demonstrate inadequacy: Proctor & Gamble Australia Pty Ltd v Medical Research Pty Ltd [2001] NSWSC 183 at [64] (Hunter J); and
3. the Court must be satisfied that there are reasonable grounds for being fairly certain that there are other relevant documents which ought to have been disclosed before ordering further discovery: Con Ange v Fairfax Media Publications Pty Ltd [2010] NSWSC 1200 at [54] (Garling J); Dai v Zhu [2013] NSWCA 412 at [125] (Sackville AJA, Barrett and Leeming JJA agreeing), citing Procter v Kalivis [2009] FCA 1518; 263 ALR 461 at 468 [33] (Besanko J); Preston v S**tar Ci**ty Pty Ltd [2007] NSWSC 293 at [21] (Hoeben J), cited in Luxon v SC (Melbourne) Pty Ltd (No 2) [2016] NSWSC 1417 at [21], [37] (Beech-Jones J).

Has Vald misconceived its discovery obligation?

61. In relation to the very limited grounds that justify an order for further discovery, the Applicants contend that Vald has misconceived its discovery obligation. A misconception of the scope of the discovery obligation is a separate and independent basis for further discovery, without the need to identify specific missing documents. The Applicants must establish such a misconception for the application to succeed.

62. Pursuant to an order made by Wright J on 17 February 2026, Mr Wilkins was cross-examined at some length by Mr Lloyd of Counsel, who appeared for the Applicants. Mr Wilkins, as Vald’s general counsel, testified that he was responsible for coordinating its response to the Consent Discovery Order. Because the categories were outside the scope of his knowledge, he required assistance from other members of Vald’s business: T9.15–22. The Applicants contend that Vald misconceived the nature of its discovery obligation because before the Consent Discovery Order was made in relation to the original discovery categories, Vald repeatedly represented that Category 5, as agreed, made clear the documents it would need to discover.

63. The Applicants say that the letter sent by Holding Redlich on 22 December 2023, seeking the provision of source code, establishes that the alleged representation was incorrect and untrue and demonstrates that Vald misconceived its discovery obligation. Vald denies this. It says that there is nothing that establishes that it misconceived the task of construing Category 5 of the Consent Discovery Order by, for example, applying an incorrect construction of that category.

64. I reject the Applicants’ submission that Vald, by requesting additional information from the Applicants, in any way misconstrued its discovery obligation.

65. First, the detailed affidavit evidence of, predominantly, Mr Wilkins describes the steps that Vald took to comply with its discovery obligations, particularly in relation to Category 5. It undertook those tasks because it understood, rather than misconceived, its obligations.

66. Secondly, there is a difference between misconceiving the nature of a discovery obligation and misperforming it. This is the same as confusing the construction of a contractual term with its performance. Whilst there can be a causative relationship between these two elements, I do not consider that any exists here.

67. Thirdly, the very fact that Vald sought, with precision, information from the Applicants to assist it in better performing its discovery obligations, rather than using less effective workarounds (as Mr Wilkins testified), fortifies my finding that Vald understood its discovery obligations.

68. It remains unclear why the Applicants did not provide the information sought by Vald. Mr Lloyd submitted that the Applicants would hardly have handed over valuable source code to a competitor in circumstances where the potential proceedings they could bring concerned the misuse of their intellectual property. I have some difficulty understanding such an argument. The Applicants appear to contend that Vald failed to undertake sufficient searches to provide discovery of the source code. If this were so, then providing such source code to assist in the search would merely be providing Vald with something that it already has in its possession. Conversely, if Vald did not have such source code in its possession, any concern about providing it could be allayed by a confidentiality arrangement which the parties had already established.

69. The Applicants invite the Court to reject Vald’s submission that it was reasonable for Vald to request copies of the source code, algorithms and specification of hardware that made up the Technology after Vald had represented, “in effect”, that it did not need it.

70. I do not accept that Vald ever represented that it did not need this information to perform its discovery obligation. The Applicants contend that no explanation has been given for “the significant change of position”. This submission presupposes that there has been a change of position. I disagree.

71. Mr Lloyd put to Mr Wilkins in cross-examination that Vald’s letter of 2 November 2023 was inconsistent with its letter of 22 December 2023, the latter being Vald’s request for the source code. Mr Wilkins steadfastly rejected this. He stated that Vald could “simply conduct the searches on the basis of its own knowledge but in an effort to avoid further dispute considers it more productive to seek your client’s input”: T23.45–48; see also T24.15, T24.26, T26.28, T26.45, T27.03. I accept this explanation.

72. For these reasons, I reject the argument that Vald has misconceived its obligation. Consequently, there is no entitlement, at least through this gateway, to obtain further and better discovery.

Inadequacy of discovery

73. The Applicants argue that Vald has failed to adequately undertake its discovery obligations. If I am to conclude that there has been insufficient discovery, I must draw that conclusion from the discovered documents themselves, the verifying affidavit, the pleadings and/or some other source constituting an admission of the existence of discoverable documents. In short, the Applicants bear the onus of persuading me there are reasonable grounds to find, fairly certainly, that there are other documents, within the categories, that have not been discovered.

74. The Applicants have marshalled several arguments to support their submission, but none of them fit neatly, or at all, into the relatively narrow band of exceptions establishing insufficiency. The Applicants do not assert insufficiency from the discovered documents themselves, the verifying affidavit or the pleadings. I have already rejected the misconception ground. This appears to leave only one other exception, namely, some other source constituting an admission of the existence of discoverable documents.

75. The Applicants rely solely on Mr Wilkins’ evidence (including his cross-examination) to establish the following:

76. Mr Wilkins said that examples of the source code were needed to provide “further certainty” about its compliance with its discovery obligation;

77. Mr Wilkins interpreted the definition of “Technology” in a way that narrowed its scope;

78. Vald’s searches of its source code repository were inadequate to identify Vald products that embodied or related to the Technology;

79. the date that Dr Lagadec saved source code to the repository did not definitively determine whether the code contained the Technology;

80. there were limited keyword searches of the code repository; and

81. the evidence suggests that the keyword “BioCap” was not searched.

82. Vald responds to these arguments, in summary, as follows:

83. Vald was required to make “reasonable inquiries”, not to achieve certainty: UCPR rr 5.5, 21.4(2)(a);

84. the Applicants adduced no evidence that Vald erred in its interpretation of the definition of “Technology”;

85. Mr Wilkins did not concede that Vald applied a definition of “Technology” in its searches which was narrower than the definition in the orders, or that Vald did not search for any part of the Technology;

86. there was no evidence to support the argument that Vald’s searches of its source code repository were inadequate. There is no evidence from any of the Applicants’ own witnesses, nor their own expert, to this effect. In addition, Vald’s expert gave unchallenged evidence that search by keywords was appropriate in the circumstances;

87. Mr Wilkins gave evidence—on which he was not cross-examined—that Mr Roodveldt did search for BioCap and that Vald did not have a relevant product to produce. Mr Malone also gave evidence that the Technology was removed from BioCap, and the Applicants’ evidence does not contradict this.

The BioCap issue

77. A central theme of the Applicants’ cross-examination of Mr Wilkins concerned the adequacy of searches in relation to the product known as BioCap.

78. Mr Wilkins was Vald’s main witness and affirmed the affidavits verifying the list of documents for discovery. He has, in total, prepared six affidavits for these proceedings dated:

79. 14 May 2024;

80. 16 August 2024;

81. 10 December 2024;

82. 20 June 2025;

83. 19 December 2025; and

84. 12 February 2026.

85. The first and third affidavits were exhibited to the affidavit of Mr Grant Covington dated 31 October 2025. The 16 August 2024 and 12 February 2026 affidavits were both read before the Court at the hearing before Wright J on 17 February 2026.

86. I found Mr Wilkins to be a model witness. He gave his evidence thoughtfully, succinctly and candidly. I consider that he was doing his best to assist the Court in its determination of this matter. Nevertheless, his evidence has given me some degree of concern as to the adequacy of the searches Vald undertook in relation to BioCap. His evidence requires close analysis.

87. In Mr Wilkins’ first affidavit, affirmed on 14 May 2024, where he verified a list of documents, the only response to Category 5, which required production of Vald documents that “embody or relate to the technology or any part of it”, was “N/A” (not applicable). At this point, it was Vald’s position that it had not located any product containing any part of the Technology. BioCap is included in the definition of “Vald Product” in the Consent Discovery Order.

88. In paragraphs [22]–[25] of his first affidavit, Mr Wilkins stated that he had provided a copy of the discovery orders, the affidavit of Ms Woodward affirmed on 25 May 2023, the letter from the Applicants of 18 January 2024, the ‘mapping exercise’ (discussed below) and the Deed of Assignment to Mr Roodveldt, who is Vald’s chief product officer and its most senior technical employee. Mr Wilkins described Mr Roodveldt as holding a bachelor’s degree in business (management) and applied science. Mr Roodveldt joined Vald in June 2019 and had held senior technical roles before that. He says that Mr Roodveldt is responsible for the development of Vald’s products, including both the physical equipment and software.

89. At T41–42, Mr Wilkins testified that he had referred Mr Roodveldt specifically to paragraph [55] of Ms Woodward’s affidavit dated 25 May 2023, which drew the conclusion that the BioCap system incorporated the Patent. Paragraph [67] of Mr Wilkins’ first affidavit records that Mr Roodveldt’s position was that BioCap did not incorporate the Patent because the Patent relates to a device for measuring expended energy, and the BioCap pitch deck did not show such a device.

90. Mr Wilkins requested that Mr Roodveldt review the material and, having regard to it all, provide guidance on the scope of the Technology as it may relate to Vald Products. He set forth in paragraph [24(a)–(f)] of his first affidavit the information provided to Mr Wilkins by Mr Roodveldt after his review of all the materials.

91. It was put to Mr Wilkins during cross-examination (T41.23–33) that paragraph [67] of his first affidavit addressed only whether BioCap contained the Patent. Mr Wilkins was asked whether any search was undertaken as to whether BioCap contained the Technology Platform. Mr Wilkins said that such a search had been conducted, because Mr Roodveldt’s searches were across all of Vald’s source code. It does not seem that this answer dealt with the issue raised, namely, whether any search was carried out to determine whether BioCap contained the Technology Platform.

92. Mr Wilkins was taken to the BioCap pitch deck. That pitch deck contains a timeline reference to the patent number and a “global exclusive licence”. Mr Wilkins accepted that this was likely a reference to the TLA. It was put to Mr Wilkins that, given the pitch deck’s express reference to the Patent by name, it was safe to conclude that BioCap incorporated the Patent. Mr Wilkins declined to make that assessment, citing his lack of qualifications to do so. Nor could he recall whether he specifically discussed this page of the pitch deck with Mr Roodveldt.

93. Exhibit 4, being the Sale Deed, defined “Business” in relation to Realm as including developing products, including the BioCap product, that use or relate to the Patent. Mr Wilkins accepted that this definition suggested that BioCap related to the Patent. It was at this point that Mr Lloyd sought to explore a contradiction, namely, that Vald had produced a document, the Sale Deed, which expressly acknowledged that BioCap related to the Patent, whilst it simultaneously relied upon Mr Roodveldt’s evidence that the Patent was not in BioCap. Mr Wilkins said he did not recall seeking clarification of this from Mr Malone, who had signed the Sale Deed, on whether BioCap incorporated the Patent. Whether or not he sought such clarification, the Sale Deed is a formal contract and I am persuaded, on the basis of the Sale Deed, that BioCap (at that point in time) related to the Patent.

The keyword searches

88. The next issue was the adequacy of keyword searches. At T39, Mr Wilkins was cross-examined about the keyword searches Mr Roodveldt undertook in the code repository, which used terms such as “Realm”, “Shadow Boxer”, “Box” and “Teesside”. It was put to Mr Wilkins that the word “BioCap” was not among those search terms. Mr Wilkins confirmed that Mr Roodveldt had not informed him that such a search term was used, nor could he recall whether he had sought clarification from Mr Roodveldt on this issue. I am left with a strong impression that there was no keyword search undertaken using the expression “BioCap” and I so find.

89. As to the methodology adopted by Mr Roodveldt, as Mr Wilkins recalled at T37–39, it involved an examination of who had committed code to Vald’s repository and when. Mr Roodveldt had found that the earliest date that Dr Lagadec had committed code to the Vald repository was 13 April 2016, but this was before Dr Lagadec commenced employment at Vald in April 2017. This somewhat undermines Mr Roodveldt’s methodology.

90. In his February 2026 affidavit, Mr Wilkins gave evidence that a complete copy of BioCap, as it existed in 2017, could not be located but that folders within the code repository containing the word “BioCap” were found. Those folders were included in the original version of HumanTrak produced in response to the second set of discovery orders. At T46–47, Mr Wilkins acknowledged that he could not exclude the possibility that other files or folders containing the word “BioCap” existed but had not been produced. His basis for stating that all relevant BioCap material had been disclosed went no further than a conversation with Mr Roodveldt in which Mr Roodveldt answered “yes” to a question Mr Wilkins put to him, “have we disclosed BioCap?”.

91. The connection between these issues and the further discovery sought by the Applicants emerged at T45 of Mr Wilkins’ cross-examination.

92. At T45.27–34, Mr Lloyd took Mr Wilkins to paragraph [68] of his first affidavit, which stated:

“… all material parts of the BioCap product, for example, the processing engine, have been removed from the current version of HumanTrak.”

93. The following exchange occurred thereafter (T45.39 – T46.12):

“Q. So based or those instructions it is your understanding that earlier versions of Human Trak did contain material parts of Bio Cap?

A. I don’t know. I don’t know.

Q. That is a clear inference from what is being said there, isn’t it?

A. That was what I was told by Mr Roodveldt.

Q. So you would agree that if Bio Cap contains technology that is to say the patent and parts of Bio Cap are in versions of Human Trak would you agree that those versions of Human Track would need to be produced?

A. I think your logic is that the patent is in Bio Cap and therefore Bio Cap, to the extent it existed in the VALD products would need to be produced? Am I just understanding your question?

Q. Yes, that is what I put to you, yes?

A. Mr Roodveldt searched for the patent in our products and did not identify and so the patent was not present.

Q. Your evidence is that Mr Roodveldt told you that the patent was not in Bio Cap and he referenced the pitch deck as proof of his position, so it is your evidence that Mr Roodveldt searched for the patent in relation to Bio Cap?

A. He considered the patent as he was constructing his searches and looking at the VALD products.”

94. At T46.22–24 the following further exchange took place:

“Q. In any event, as you sit there now you have no knowledge of what earlier versions of Human Track contained Bio Cap product?

A. No, I can’t tell you that.”

95. By way of peroration, the evidence appears to establish that Mr Roodveldt’s analysis of BioCap focused almost entirely on whether BioCap incorporated the Patent as assessed principally by reference to the BioCap pitch deck description of functionality. No separate, documented search appears to have been conducted into whether BioCap contains the Technology Platform. Keyword searches of the code repository did not include the term “BioCap”. Mr Roodveldt’s methodology is questionable: Dr Lagadec could not have committed code to the repository before he was employed by Vald. The existence of BioCap-labelled folders and assemblies within the produced HumanTrak code, as Mr Crouse identified, suggests that BioCap code was present in the code base and was discoverable. The only basis on which Mr Wilkins could confirm that full disclosure was made was Mr Roodveldt’s oral assurance.

96. Mr Wilkins conceded that he could not exclude the possibility of undisclosed BioCap files in the repository and could not explain how Mr Roodveldt verified the absence of any BioCap material prior to 26 November 2022. Finally, paragraph [68] of Mr Wilkins’ first affidavit, which states that material parts of BioCap have been removed from the current version of HumanTrak, carries with it the implication that earlier versions did contain material BioCap parts. That implication stands despite Mr Wilkins’ evidence that he had no knowledge of what those earlier versions contained.

97. On this combination of factors, I am not persuaded that Vald has satisfactorily undertaken discovery in relation to the existence of BioCap technology within the HumanTrak product. For that reason, I am prepared to make order 2 sought by the Applicants in the Notice of Motion.

Scope of further discovery

98. The parties disagree about the extent to which the Court should order discovery of the HumanTrak product if such an order is to be made. The Applicants seek all versions of the HumanTrak product created during the period from 1 January 2018 to 31 December 2022. Their logic in seeking this range is that versions commencing on 1 January 2018 can reasonably be expected to capture the version subsequent to version 1, which was created in October 2017. They further submit that as there is no evidence as to how many versions of HumanTrak have been created, or when they were created, seeking discovery over the five-year period proposed is appropriate.

99. The Applicants note that Vald had previously consented to give preliminary discovery of HumanTrak unlimited by range.

100. Vald submits that any order for discovery be limited to the version of HumanTrak closest in time to September 2021, being the time when the TLA was terminated. It cites the decision of Burley J in Pfizer Ireland Pharmaceuticals v Samsung Bioepis AU Pty Ltd (No 2) [2019] FCA 657 at [25] as to the invasive nature of an order for preliminary discovery. I accept that proposition.

101. I am not prepared to order discovery of five years of versions of HumanTrak. This is an overreach. I am prepared to allow half of this period, that is to say, all versions of HumanTrak from 1 January 2018 until 1 July 2020.

Costs

102. The parties will need to address the Court on costs. I will grant the parties leave to approach my Associate to obtain a date convenient to the Court and the parties for argument on costs. I will allocate a period of no longer than two hours to hear such submissions.

Orders

103. For those reasons, the Court orders that:

104. The Defendant give further and better discovery of all versions of “HumanTrak” created during the period 1 January 2018 to 1 July 2020.

105. The parties have leave to approach my Associate to obtain a date for a hearing on the question of costs.

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