Fortescue Limited v Element Zero Pty Limited [2025] FCA 1295 | Case summary

Fortescue Limited v Element Zero Pty Limited [2025] FCA 1295 | Case summary | Zoe

[26]

The history of the proceeding leading up to the making and execution of the Search Orders and the EZ respondents' application to discharge those orders (Discharge Application) is set out in Fortescue Ltd v Element Zero Pty Ltd (No 2) [2024] FCA 1157 at [1]- [10] and a summary of Fortescue's claim as then pleaded is set out in Fortescue (No 2) at [11]-[13].
Since the publication of reasons in Fortescue (No 2) and insofar as they are relevant to the resolution of the Amended IA the following further steps have been taken and orders made in this proceeding.
On 23 October 2024 Fortescue filed a further amended statement of claim (FASoC). The summary of Fortescue's claim in Fortescue (No 2) at [11]-[13] is not materially impacted by reason of the amendments reflected in the FASoC.
On 21 November 2024 Fortescue filed an interlocutory application seeking discovery from the respondents (Fortescue's Discovery IA).
On 22 November 2025 Dr Winther-Jensen filed an interlocutory application seeking discovery from Fortescue (Dr WJ's Discovery IA).
On 25 November 2024 the EZ respondents filed an interlocutory application seeking discovery from Fortescue (EZ respondents' Discovery IA).
I will refer to Fortescue's Discovery IA, Dr WJ's Discovery IA and the EZ respondents' Discovery IA collectively as the Discovery Applications.
The Discovery Applications were heard over two days on 6 and 20 February 2025.
On 26 February 2025 I made orders, among others, requiring the respondents to provide discovery (Discovery Orders) to Fortescue, subject to modification in some cases in 12 of the categories sought in Fortescue's Discovery IA (Discovery Categories and each one a Discovery Category). Fortescue was unsuccessful in obtaining discovery in four of the categories it sought. For ease I attach as Annexure A to these reasons a copy of Sch 1 to the Discovery Orders which sets out the Discovery Categories.
On 29 April 2025 the EZ respondents filed and served three verified lists of documents (EZ Lists of Documents): one on behalf of Element Zero verified by Dr Kolodziejczyk; one on behalf of Dr Kolodziejczyk which he verified; and one on behalf of Mr Masterman which he verified. On the same day the EZ respondents produced the non-confidential documents in the EZ Lists of Documents to Fortescue together with a confidentiality undertaking to be signed and returned by its legal representatives.
On 30 April 2025 the proceeding was listed for case management hearing. According to Rebecca Dunn, partner at Gilbert + Tobin with joint carriage of the proceeding on behalf of the EZ respondents, as at that date Fortescue's lawyers had not accessed the non-confidential documents produced by her clients via Mimecast, the large file sharing system used by Gilbert + Tobin.
On 1 May 2025, after receipt of signed confidentiality undertakings, the EZ respondents produced the confidential documents in the EZ Lists of Documents to Fortescue.
On 9 May 2025 Davies Collison Cave Law (DCC), the lawyers for Fortescue, sent a letter to Gilbert + Tobin requesting the EZ respondents to provide their discovery in native format and to provide descriptions for each document in parts 2 and 3 of the EZ Lists of Documents. On 13 May 2025 the EZ respondents provided their discovery in native format.
On 19 May 2025 Dr Winther-Jensen filed and served his verified list of documents (Dr WJ's List of Documents) and on 20 and 30 May 2025 respectively Dr Winther-Jensen produced both the non-confidential and confidential documents in that list.
On 13 June 2025 the EZ respondents filed and served supplementary lists of documents which reproduced part 1 of the EZ Lists of Documents and provided additional descriptions of the documents in parts 2 and 3 of those lists.
By letter dated and sent on 16 June 2025 DCC first notified Gilbert + Tobin and MinterEllison of alleged deficiencies in their respective clients' discovery and on 17 June 2025 DCC served the IA. Thereafter, Gilbert + Tobin exchanged correspondence with DCC in relation to the EZ respondents' claims for privilege in the EZ Lists of Documents.
On 19 June 2025 the proceeding was listed for case management hearing. At the time I made orders leading to a hearing of the IA (now the Amended IA) (19 June Orders).
By letters dated 4 July 2025 (First Deficiency Letter) and 14 July 2025 (Second Deficiency Letter) DCC notified the respondents of the alleged deficiencies in their respective discovery. In all, Fortescue itemised 486 alleged deficiencies in the EZ respondents' discovery and 50 alleged deficiencies in Dr Winther-Jensen's discovery. On 24 July 2025 the respondents provided their responses to the First Deficiency Letter and the Second Deficiency Letter.

[30]

(1) Discovery Category 1 (research involving Ionic Liquid) - searches were conducted of the Seized Material for documents created between 25 March 2019 and 12 November 2021 containing the words "ionic liquid", "molten salts"; "eutectics"; "molten hydroxide-based electrolytes"; "molten carbonate-based electrolytes"; "hydroxide alkali melt"; "eutectic melt"; "molten hydroxide eutectic"; "electrowinning"; "electroplating"; "electrolyte"; or "electrochemical reduction process". These search terms were identified by Ms Dunn and lawyers working under her supervision based on the definition of the term "Ionic Liquid" in the Discovery Orders;

(2) Discovery Categories 2A(a) and (b) (documents alleged to have been taken or copied by Dr Kolodziejczyk or Dr Winther-Jensen from Fortescue, and documents said to be copied by Dr Kolodziejczyk while working from home in October and November 2021) - based on the terms of these subcategories, Ms Dunn was of the view that there were no search terms that could be used for the categories. Thus, she caused Dr Kolodziejczyk to search his Gmail account in relation to his work product, and documents in answer to the categories were identified and produced, namely the documents Dr Kolodziejczyk received from and sent to Matthew Roper of Fortescue;

(3) Discovery Categories 2A(c) and (d) ("Local Drive" documents) - given that the laptop referred to in these subcategories was returned to Fortescue by Dr Kolodziejczyk on his resignation from Fortescue and thus is in Fortescue's possession, and without a record of the contents of the local drives, Ms Dunn was of the opinion it was not possible to conduct searches by reference to search terms. Ms Dunn was informed by Dr Kolodziejczyk that he had no recollection of the documents which were stored on the local drives of his Fortescue laptop and no recollection of copying any Fortescue documents from those local drives. To the extent the local drives contained documents which were saved in the TempSD folder, Ms Dunn refers to the searches undertaken in relation to subcategory 2A(e) (see below);

(4) Discovery Category 2A(e) (TempSD documents) - the documents in this category, which are documents on the "TempSD" folder of the Fortescue laptop returned by Dr Kolodziejczyk to Fortescue, are identified in a report prepared by Rod McKemmish, an independent computer expert appointed for the purposes of the Search Orders, and the spreadsheet entitled "AU24024 - Chronology of activity" (TempSD spreadsheet) annexed to the affidavit of Adrian Huber, Fortescue's senior legal counsel, sworn on 1 May 2024. Ms Dunn caused searches to be undertaken of the Seized Material for the TempSD documents using the TempSD spreadsheet. Those documents were then manually reviewed by lawyers at Gilbert + Tobin cross-checking documents in the TempSD spreadsheet (for the name and file date) and responsive documents were produced. Ms Dunn also caused Mr Masterman to review the TempSD spreadsheet and identify any documents within his control;

(5) Discovery Category 2A(f) (USB documents) - this category seeks documents on two USBs: Toshiba USB device (serial 07080A078F186304) and Kingston USB device (serial 900042ACAE668708). Mr McKemmish's report describes documents which were accessed on the Toshiba USB and the Kingston USB from Dr Kolodziejczyk's computer. Ms Dunn caused searches to be undertaken of the Seized Material and of Dr Kolodziejczyk's devices for each of the documents listed in Mr McKemmish's report. She also caused Mr Masterman to review the documents described in Mr McKemmish's report and identify any documents within his control;

(6) Discovery Category 2A(g) (documents emailed by Dr Winther-Jensen) - as Gilbert + Tobin does not act for Dr Winther-Jensen and has no access to his devices, Ms Dunn caused searches to be undertaken by reference to the documents particularised in [20] of the FASoC (which are also captured under the definition of "First Specified Documents" in Discovery Category 6). Thus, Ms Dunn relies on the searches she undertook in relation to Discovery Category 6 (see below) in relation to this category;

(7) Discovery Category 3 (location and storage of documents responsive to Discovery Categories 1 and 2A) - Ms Dunn caused searches of the Seized Material to be undertaken for all emails containing the documents which were identified as responsive to Discovery Categories 1 and 2A. She says that this is consistent with Fortescue's intention in seeking Discovery Category 3, as evidenced by its argument on the hearing of the Discovery Applications, and reflects the notation on the Discovery Orders that this category does not require forensic investigation by the EZ respondents;

(8) Discovery Category 5 (confidentiality of documents responsive to Discovery Categories 1 and 2A) - Ms Dunn caused searches to be undertaken for the term "confidential" within any of the documents identified as being responsive to Discovery Categories 1 and 2A. Ms Dunn manually reviewed each of the documents which were identified as using the term "confidential" and determined whether they referred to the confidentiality of documents referred to in Discovery Categories 1 and 2A;

(9) Discovery Category 6 (First Specified Documents) - Ms Dunn caused searches of the Seized Material and of Mr Masterman's personal devices to be undertaken for the 106 documents identified by Fortescue as "First Specified Documents". One relevant document was identified, being an excel spreadsheet entitled "Ore Composition After Drying";

(10) Discovery Category 6A (Fortescue plant documents) - Ms Dunn caused searches to be undertaken of the Seized Material for any document containing the words "Fortescue" and "plant" during the relevant period, which she identified as broad search terms that would produce any documents responsive to the category. Ms Dunn manually reviewed all documents which contained those words and determined whether they were relevant to Discovery Category 6A. In addition, Dr Kolodziejczyk and Mr Masterman informed Ms Dunn that they did not have any documents in their possession, custody or control falling within Discovery Category 6A, and that they did not recall taking or copying any such documents when employed by Fortescue. No documents falling under Discovery Category 6A were identified;

(11) Discovery Categories 7 and 8 (Second Specified Documents and use or disclosure) - there was one document to produce in answer to Discovery Category 6 (see above). According to Ms Dunn, the searches of the Seized Material undertaken for the First Specified Documents would also have returned results for documents referring to any of the First Specified Documents contained in the Seized Material (such as a version of the document which was saved in a different location or an email attaching that document). Ms Dunn says that no documents or access artefacts which referred to the spreadsheet "Ore Composition After Drying" were identified;

(12) Discovery Categories 11(a), (b) and (f) (plant and process documents) - Ms Dunn caused searches to be undertaken of the EZ respondents' records for basis of design documents, or any documents describing the design of Element Zero's trial and pilot plants, piping and instrumentation documents and documents recording the research and development of the Element Zero process;

(13) Discovery Category 11(c) (laboratory books) - Ms Dunn explains that all laboratory books which were seized during execution of the Search Orders were produced by the EZ respondents. Dr Kolodziejczyk informed Ms Dunn that there were no further laboratory books to produce and that he does not, and did not, use a laboratory book;

(14) Discovery Category 11(d) (documents provided to Playground Ventures) - Ms Dunn caused emails to or from the playground.global domain and Element Zero addresses to be extracted from the Seized Materials. She also caused searches to be conducted of Mr Masterman's personal devices and of Element Zero's data room, which contained documents provided to Playground Global during due diligence. Those documents were then manually reviewed by lawyers at Gilbert + Tobin and responsive documents were produced;

(15) Discovery Category 11(e) (documents recording Dr Winther-Jensen's "retirement project" and other matters referred to in his affidavit affirmed 8 July 2024 (Dr Winther-Jensen's 8 July Affidavit) - Ms Dunn explains that Gilbert + Tobin does not act for Dr Winther-Jensen and thus she was not able to obtain instructions from him in relation to Discovery Category 11(e). She observed that there appeared to be a

cross-over between Discovery Categories 11(e) and 11(f) and took the view that, to the extent the EZ respondents had documents in their control relevant to the Element Zero process (which could also have been relevant to the retirement project), they would be produced under Discovery Category 11(f);

(16) Discovery Category 12 (expenditure on pilot or trial plants) - Ms Dunn notes that two documents were produced under this Discovery Category. Ms Dunn caused Melissa Gravina, Element Zero's corporate and finance operations manager, to prepare these from information extracted from Element Zero's accounting system;

(17) Discovery Category 13 (patents and patent applications) - Ms Dunn explains that the EZ respondents produced copies of all patent applications and patents in which Dr Kolodziejczyk was named as an inventor that he worked on since 2019. Ms Dunn obtained copies of the final patents from Dr Carolyn Rolls from Oxygene IP (Element Zero's patent attorney). The EZ respondents produced five documents in Part 1 of the EZ Lists of Documents and 25 documents in Part 2 of the EZ Lists of Documents, being documents which are the subject of patent attorney privilege; and

(18) Discovery Category 14 (use of documents in Discovery Categories 1, 2A, 6 and/or 7) - based on Ms Dunn's review of the categories and her understanding of the searches conducted over the Seized Material, Ms Dunn formed the view that the searches for Discovery Categories 1, 2A, 3, 6, 7 and 8 would have caught any use of the documents in Discovery Categories 1, 2A, 6 and/or 7 in answer to this Discovery Category. Ms Dunn was informed by Dr Kolodziejczyk that none of the documents produced in answer to Discovery Categories 1, 2A or 6 were used for preparing or inventing any of the patents or patent applications (noting no documents were produced in answer to Discovery Category 7).

[37]

(1) described (in part B) the nature of chemical R&D projects, record keeping practices of chemists when conducting chemical R&D and of chemical R&D organisations generally and the records a patent attorney would generally expect to receive from a client when drafting the specification for a patent application, including a provisional application, concerning a chemical process;

(2) considered (in part C) the respondents' R&D undertaken in the period 1 January 2022 to 20 October 2022 as follows:

(a) provided an explanation of electrochemistry,

(b) considered what the documents discovered by the respondents in relation to Discovery Categories 11(c), (e) and (f) for the period 1 January 2022 to 20 October 2022 (pre-provisional documents) disclose about the work undertaken on a chemical R&D project (CR&D project) he was instructed was undertaken by the respondents, or some of them (EZ CR&D project) prior to the filing of the 2022 Provisional Application no AU 2022903090 disclose;

(c) considered whether the record keeping evident from the pre-provisional documents is what he would expect for a CR&D project; and

(d) considered whether the pre-provisional documents appeared to be a complete record of the work he would expect to have been undertaken and recorded on the EZ CR&D project during the pre-provisional period (which is the period prior to the filing of the 2022 Provisional) and, if not, whether he considered that there would be additional documents recording the EZ CR&D project during the pre-provisional period;

(3) considered (in part D) whether the examples in the 2022 Provisional reflect the experiments recorded in the pre-provisional documents;

(4) commented (in part E) on whether the documents discovered by the EZ respondents and Dr Winther-Jensen recording R&D conducted in 2022 were consistent with the documents he would expect to have been created and kept during the initial period of R&D into the Element Zero process (or what would become the Element Zero process);

(5) considered (in Part F) documents discovered by the respondents in relation to Discovery Categories 11(c), (e) and (f) during the period 21 October 2022 to 19 October 2023, the specification of the 2023 Provisional Application no AU 2023902103 and the PCT patent application no WO 2024/082020 and provided his opinion in relation to:

(a) whether examples 1-3, 6 and 8-10 of the PCT were taken from the material recorded in the documents; and

(b) whether examples 2-3 of the 2023 Provisional were taken from the material recorded in the documents; and

(6) explained (in part G) in relation to experiments or data referred to in specific documents included in an additional bundle of documents provided by Fortescue's solicitors to him:

(a) his understanding of the experiments or data in the specific documents to the extent they contained matters relevant to his expertise;

(b) whether, in view of the experiments or data referred to in the documents, he would expect other experimental records to exist and be in possession of the respondents;

(c) where the answer was yes, what information he would expect those other experimental records would contain; and

(d) whether he would consider those other experimental records to be documents recording R&D of the EZ CR&D project and process and, if so, why.

[38]

The EZ respondents contended that, because of its nature and its late service, Fortescue required leave to rely on Dr Jacobsen's affidavit. In short, they argued that Fortescue should not be granted leave to rely on Dr Jacobsen's affidavit at the hearing of the Amended IA for two interrelated reasons. First, because it is in truth an expert's report which, in turn, gives rise to the capacity of the Court in regulating proceedings before it not to permit reliance on evidence where to do so would disrupt the hearing or which do not accord with general case management considerations. Secondly, because Dr Jacobsen's affidavit was served late, at the time of its service the respondents had two weeks under the existing Court timetable to prepare and file any evidence in reply and, even if the timetable was extended, the respondents would not be in a position to prepare evidence in response to Dr Jacobsen's evidence.
Fortescue submitted that leave ought to be granted. It submitted that Dr Jacobsen's evidence is relevant if it "could rationally affect (directly or indirectly) the assessment of the probability of the existence of" other relevant documents, referring to s 55(1) of the Evidence Act 1995 (Cth). It submitted that it is necessary to understand the scientific content of Element Zero's patents and other discovered documents in order to engage with their contentions about the deficiencies in the respondents' discovery, a proper understanding of these documents requires knowledge of chemistry, especially electrochemistry, and it is commonplace and appropriate for the Court to derive assistance from expert evidence from a person skilled in the relevant art to understand what these documents disclose, including whether they admit the existence of other relevant documents. Fortescue submitted that Dr Jacobsen's affidavit sought to assist the Court in that task.
In both its written and oral submissions, Fortescue referred to parts of Dr Jacobsen's affidavit. Among other things Fortescue submitted, by reference to the PCT application and the priority date claimed therein, that the process of invention the subject of the PCT must have been complete by 20 October 2022, the date on which the 2022 Provisional was filed. It said that a central factual inquiry for the trial is whether the respondents' contention that all of their R&D undertaken to get to their invention the subject of the PCT took place between July and October 2022 is correct.
Fortescue submitted that at the heart of their application (as framed in the Amended IA) is that an examination of the experiments disclosed in the PCT shows significant gaps in the documents discovered to date and Dr Jacobsen's evidence assists the Court to understand the nature of the experiments undertaken and to identify where records of those experiments do or do not exist in the discovered documents.
Fortescue next submitted that Dr Jacobsen is an experienced industrial chemist, with a PhD in electrochemistry, 24 years of postdoctoral R&D experience in academy and industry between 1982 and 2006 and 18 years experience as a patent attorney. It submitted that the respondents could not seriously argue that Dr Jacobsen is not qualified to explain what is disclosed in the discovered R&D documents and whether what is disclosed supports the existence of other documents or that Dr Jacobsen is not a "person skilled in the art" for the purpose of reading the 2022 Provisional, the PCT and the 2023 Provisional.
Finally, Fortescue submitted that the probative value of Dr Jacobsen's evidence outweighed any prejudice to the respondents or time taken up by the affidavit. It contended that the respondents made a bare assertion of prejudice but that Dr Jacobsen's affidavit was served 35 calendar days before the hearing of the Amended IA, well beyond the usual time required under the Rules for evidence in support of an interlocutory application or even summary judgment, no real prejudice arose from the fact it was filed six calendar days after the due date agreed between the parties (there was a dispute as to whether any such agreement was in fact reached but it was not necessary for me to resolve that dispute) and, in any event, the respondents refused the offer for an extension of time. Fortescue submitted that if there was any good reason for Dr Winther-Jensen or Professor Abbott, who have comparable experience in electrochemistry to Dr Jacobsen, to contradict Dr Jacobsen's evidence as to what is disclosed by the respondents' discovered documents and patents, they have had ample time to do so.
In relation to the length of Dr Jacobsen's affidavit, Fortescue submitted that, except for GPN-EXPT, his CV, the patents and a table of document dates, all other annexures to his affidavit are the respondents' own discovery to which he refers to explain his opinions.
Fortescue submitted that the just resolution of the dispute over prayer 1 of the Amended IA favoured admission of Dr Jacobsen's affidavit which helps the Court understand what is disclosed in the documents discovered and whether what is disclosed admits the existence of other documents. It contended that requiring the Court to undertake this analysis without the assistance of Dr Jacobsen's expert electrochemical evidence, by reference only to the bare documents and patents, would be an inefficient use of the Court's resources and contrary to the just determination of the proceeding according to law under s 37M of the Federal Court of Australia Act 1976 (Cth) (FCA Act).
In Comcare v John Holland Rail Pty Ltd (No 5) (2011) 195 FCR 43; 283 ALR 111; [2011] FCA 622 Bromberg J considered whether the Court should grant leave to call a particular witness (Mr Rozen). The facts of that case were different to those before me in that the intention to call Mr Rozen (who was in fact counsel for the applicant in the case) only arose during the trial. However, his Honour set out a summary of legal principles which underpinned the application for leave to call the proposed witness in that case and in doing so addressed submissions put by the respondents, John Holland Rail Pty Ltd and John Holland Pty Ltd (together John Holland), about the Court's power to restrict the evidence sought to be adduced by a party to a proceeding. Justice Bromberg rejected John Holland's submissions relevantly saying at [19] and [21]-[22]:

[39]

[19] I reject each of those submissions. They suggest that a party has a right to conduct its case in the manner it sees fit to the exclusion of a court's power to prevent the misuse of its procedures. Parties have the right to invoke the jurisdiction and powers of the court in order to seek a resolution of their dispute: Aon Risk Services Australia Ltd v Australian National University (2009) 239 CLR 175; 258 ALR 14; [2009] HCA 27 at [96] (Aon). Just as there is no right given to a party to amend its pleadings at will (Aon at [96]), the capacity to call a witness or adduce other evidence may be regulated by the court's power to control and supervise the proceeding and the requirement upon the court that it take into account case management considerations, including those required by s 37M of Federal Court of Australia Act 1976 (Cth) ("the Federal Court Act").

...

[21] The Court's inherent power to supervise and control the proceeding, including so as to avoid an abuse of process, is also a basis upon which the Court can determine an application such as this. Courts have an inherent power to prevent misuse of their procedures in a way which would avoid unfairness to a party to the litigation or would otherwise bring the administration of justice into disrepute: Aon at [33]. Case management considerations may have a role to play in a court determining whether leave should be given to a party to call a witness, particularly where the calling of the witness is out of step with procedural orders previously made and threatens to disrupt the trial. Attorney-General of Botswana v Aussie Diamond Productions Pty Ltd (No 2) [2009] WASC 301 (Attorney-General of Botswana) per Murphy J and Clifford v Vegas Enterprises Pty Ltd (No 4) [2010] FCA 326 (Clifford) per Barker J are both instances of a court exercising its inherent power to supervise and control the proceeding before it. In both cases the court took into account case management considerations in the context of a late application to call a witness in disconformity with prior procedural orders. Both of those judgments refer to and rely upon Aon and, in Clifford, upon s 37M of the Federal Court Act.

[22] What is required by s 37M is the facilitation of the "just resolution" of the dispute. The just resolution of a dispute does not require that a party be permitted to raise any arguable case at any point of the proceedings: Aon at [98]. Similarly, the just resolution of a dispute does not require a court to permit a party to call a witness at any point in the proceedings. As the judgment in Aon makes abundantly clear, the discretion to be exercised by the court in dealing with the procedural issues raised by a proceeding requires that the need for a "just resolution" be understood in light of the purposes and objectives of a provision such as s 37M of the Federal Court Act: Aon at [98].

[40]

At [25] of Comcare Bromberg J observed that whether a party should be entitled to adduce the additional evidence could be assessed by examining whether a legitimate forensic purpose exists for the calling of the evidence and, if so, the likely importance of the evidence to the determination of the proceeding. His Honour went on to note, by reference to the decision in Aon Risk Services Australia Ltd v Australian National University (2009) 239 CLR 175; 258 ALR 14; [2009] HCA 27, that, even if importance can be demonstrated, a balancing exercise which takes into account the cost, delay and prejudice to the other party in the context of the litigation as it stands at the time must be undertaken.
Here, the relevance of Dr Jacobsen's evidence was to be assessed against the test which at the time of argument (albeit not at the time of the hearing of the Amended IA), the parties agreed was to be applied to the question of whether discovery is inadequate as stated in Procter v Kalivis [2009] FCA 1518; (2009) 263 ALR 461 at [33], namely that there are reasonable grounds for being fairly certain that there are other relevant documents.
Dr Jacobsen's evidence goes no higher than to express his opinion that certain documents which he would expect to see recording experiments referred to in, for example, the PCT are not in the bundle of documents provided to him. His expectation of the types of documents he would expect to see is assessed against his experience working for Dow and BP, two large companies, as opposed to, relevantly, a start-up.
Further, in Procter Besanko J recognised (at [34]) there are limits to the material that a court can consider in determining the sufficiency of an affidavit of discovery (and it follows the discovery given). His Honour referred to Mulley v Manifold [1959] HCA 23; (1959) 103 CLR 341 where, among other things, Menzies J said (at 343) that insufficiency in discovery could not be shown by a "contentious affidavit" (see [71] below).
Dr Jacobsen's evidence is speculative and arguably contentious. He does not express a view that a document exists which has not been discovered because it is referred to in another document which has been discovered. Rather he points to the 2023 Provisional and the PCT to say that certain experiments are described therein which in his view are not described in the material discovered and that, by way of example, in his view "it is reasonable to assume that other records of the R&D that Dr Winther-Jensen conducted into the Element Zero process ... in 2022 exist beyond what has been discovered". Dr Jacobsen's affidavit is replete with similar speculative conclusions.
Evidence of that nature is of very little, if any, assistance in determining whether there are reasonable grounds for being fairly certain that there are other relevant documents that should have been discovered by the respondents.
In addition, Dr Winther-Jensen has previously given evidence in the proceeding that when he resigned from Fortescue, it was his intention to retire to pursue matters for his personal intellectual curiosity and enjoyment. It was within that prism that he says he created, as a "retirement project" in his garage, the Element Zero process. It was not and is not necessary for me to form a view as to the veracity of that evidence for present purposes. It is sufficient simply to note that that evidence was not provided to Dr Jacobsen. Had it been, it is unclear the impact, if any, that it may have had on his expectation as to the existence of certain documents. That further diminishes the utility of Dr Jacobsen's evidence to the determination of the Amended IA.
As Dr Winther-Jensen submitted, Dr Jacobsen's evidence implicitly invites him to detail the work that he undertook in devising the Element Zero process in order to explain why documents that Dr Jacobsen would expect to exist do not. Clearly, that is a matter for determination at final hearing.
On the other hand, the countervailing considerations of cost, delay and prejudice were acute and outweighed any potential relevance of Dr Jacobsen's affidavit: first, the respondents would need to consider whether to file evidence in reply to Dr Jacobsen's affidavit and would need time to do so. The consideration of that factor and the preparation of any evidence in reply, should they choose to do so, would have necessitated vacation of the hearing date for the Amended IA which was allocated on 19 June 2025; secondly, even if the respondents, after consideration of Dr Jacobsen's evidence, determined not to file evidence in reply, the likelihood is that with the addition of that evidence, including any successful application to cross-examine Dr Jacobsen, the hearing of the Amended IA could not be complete in the one day allocated which would not only cause delay but add to the parties' costs; thirdly, the costs and delay that would be occasioned if Fortescue was given leave to rely on Dr Jacobsen's evidence would be disproportionate to the issues in dispute on the Amended IA; fourthly, the proceeding is set down for hearing commencing on 25 May 2026. The dates for hearing have been provisionally allocated since 30 April 2025. Any delay in resolving outstanding issues in relation discovery would likely jeopardise the hearing; fifthly, it is not consistent with s 37M and s 37N of the FCA Act to permit an adjournment, particularly in circumstances where the evidence sought to be relied on is, at best, of marginal assistance to a resolution of the issues to be determined on the Amended IA and where the parties have been on notice of the need to resolve outstanding discovery issues as efficiently as possible for some time; and sixthly, Dr Jacobsen's evidence raises various issues which are in reality matters for final hearing.

[41]

Section 23 of the FCA Act confers a broad power on the Court "in relation to matters in which it has jurisdiction, to make orders of such kinds, including interlocutory orders, and to issue, or direct the issue of, writs of such kinds, as the Court thinks appropriate".
There was no dispute that s 23 of the FCA Act empowers the Court to make an order for access to, or inspection of, material seized under a search order made under r 7.42 of the Rules. However, the parties were not agreed on the test to apply when considering whether, after discovery has been provided by the party the subject of a search order, an order should be made to access the material seized pursuant to the search order.
Fortescue contends that the relief sought in prayer 1 of the Amended IA is not a discovery application and that the relevant test to apply in determining whether access should be granted to the seized material is whether there is "material that cast[s] doubt on the adequacy of the discovery that has actually been given", citing Rauland Australia Pty Ltd v Johnson (No 2) [2019] FCA 1175 at [53] (Stewart J). The respondents do not agree. They submit that the relevant test for determining whether access should be granted to all of the material seized pursuant to a search order is the more stringent test of whether there are reasonable grounds for being fairly certain that there are other relevant documents which have not been discovered, referring to Procter at [33].
In order to resolve the question, it is necessary to examine both those authorities which consider when a court will grant access to material seized pursuant to a search order and those which consider the circumstances in which a court will order further and better discovery.
The analysis begins with Metso Minerals (Australia) Ltd v Kalra (No 3) [2008] FCA 1201. In that case there were three notices of motion before the Court for resolution. The issues to be resolved by the notices of motion were summarised by Flick J at [2] as follows:

[43]

The "O 25B order" referred to by his Honour was a search order made ex parte pursuant to O 25B of the Federal Court Rules 1979 (Cth) (repealed) (Former Rules) in December 2007 (see Metso Minerals v Kalra [2007] FCA 2093) and subsequently varied against the first to fourth respondents (see Metso Minerals (Australia) Ltd v Kalra (No 2) [2007] FCA 2108) (Metso search order): Metso (No 3) at [3]-[6].
By the time of the hearing of the notices of motion, the applicants' solicitors had inspected the seized documents and, as a result, had been able to identify a number of documents relevant to the causes of action to be relied upon and to verify that some documents seized were not relevant and should be returned: Metso (No 3) at [10]. Against that background, Flick J had to resolve the parameters of any further inspection to be permitted and upon what terms. At [21] Flick J observed that the applicants' purpose in wanting to continue to access the seized materials was "as an aid to the discovery process and in order to be able to further particularise their claims" and, "[a]lthough not expressed in these terms, the application [was] presumably an application for leave to inspect (or to continue to inspect) the documents as envisaged by Practice Note 24" (which was the practice note in force at the time).
The respondents opposed the application and submitted that to permit continued access for the purposes identified by the applicants was "not authorised or, (alternatively) as a matter of discretion, should not be permitted" and was "inconsistent with principle": Metso (No 3) at [22].
At [24] Flick J observed that the determination of the ambit of the Court's discretion to grant leave to an applicant to inspect material seized pursuant to a search order, and the way in which that discretion is to be exercised, must necessarily start with an acknowledgment of the extraordinary nature of the relief which may be granted by the Court pursuant to, at that time, O 25B. In that regard, at [25] his Honour referred to Microsoft Corp v Goodview Electronics Pty Ltd [1999] FCA 754 at [9], [1999] FCA 754; 46 IPR 159 at 161 where Branson J cited with approval the following observations of Powell JA (with whom Meagher and Handley JJA agreed) in Long v Specifier Publications Pty Ltd (1998) 44 NSWLR 545 at 547:

[57]

The issue for resolution in Findex Group Ltd v iiNet Ltd [2018] NSWSC 1567 was whether the plaintiffs should be permitted to have access to documents obtained quite some time prior on the execution of a search order made by another judge of the Supreme Court of New South Wales. In that case there had been earlier inspection of the relevant documents pursuant to a confidentiality regime but further access was sought to enable the plaintiffs' lawyers to obtain proper instructions in relation to what was described as a "broad array" of potential causes of action against the fourth defendant: Findex at [3].
After referring to the nature of the power to grant a search order Ward CJ in Eq (as her Honour then was) said at [120]-[123] (emphasis added):
1. The ambit of the discretion of the Court to grant leave to an applicant to inspect seized documents, and the manner in which that discretion is to be exercised, was set out in Metso Minerals at [24]-[28] by Flick J (which, as noted, was approved by Besanko J in Lamond (No 4) [19]-[20]), as set out earlier.
2. In Metso Minerals, Flick J considered, inter alia, an application for discovery in respect of documents which had been previously seized pursuant to a search order. While his Honour was dealing with the rules relating to search orders contained in the Federal Court Rules 1979 (Cth) (O 25B and Practice Note 24) (now, Federal Court Rules 2011 (Cth) rr 7.42, 7.43), they are in identical terms to UCPR r 25.19 and Practice Note SC Gen 13. Indeed, the procedure in relation to search orders is now the subject of harmonised rules across Australia.
3. Taking into account the "extraordinary" nature of relief granted in the form of a search order, Flick J (at [28]) considered that the discretion to allow an applicant to inspect seized documents is to be exercised in order: to ensure that the search order has been complied with; and to ensure that only evidence which should be preserved is in fact preserved pending the final determination of the hearing. His Honour emphasised (at [36]) that access to documents seized pursuant to a search order "should be confined to the purpose for which that power was conferred".
4. The plaintiffs maintain (see T 11.15) that the purpose of the search order was that of "obtaining documents for use in anticipated proceedings including, but not limited to, the proceedings of the kind that were identified at the time" and that this purpose will not be fulfilled "until the plaintiffs have looked at the documents". That, to my mind, conflates the purpose of preserving evidence (for use in anticipated proceedings) and the function of inspection of that material (as to which it is clear there is no absolute right). It is not a purpose or object of search order provisions to facilitate discovery processes otherwise authorised by rules or to facilitate the provision of further particulars. In Metso Minerals at [34], Flick J warned that construing search order provisions as extending to such a purpose would erode the importance attached by the common law to protecting the privacy of individuals and the constraints otherwise imposed by the rules governing discovery process.
At [129] and [131] Ward CJ in Eq continued:
1. As Flick J emphasised in Metso Minerals at [49], to enable a party to obtain a search order and thereafter permit the party to "rummage through" the seized documents in order to make an assessment as to those documents which that party considers would be or should be discoverable, extends beyond the purpose for which a search order is made and defeats the perimeters within which discovery is to be made by a party.

[72]

Justice Emmett was not persuaded that any substantial injustice would accrue to the applicants as a result of the order from which leave to appeal was sought. His Honour found that there was no present utility in referring the matter back to the primary judge to determine whether, assuming he had power to grant access to the seized documents, he would do so in the exercise of his discretion: Metso FC at [14]-[15]. After coming to that view Emmett J said at [16]-[17]:
1. In essence, the dispute appears to me to be a dispute concerning discovery. That is not to say that the question of access to the seized documents is not of significance. It may well be that, if there were material that cast doubt on the adequacy of discovery that has actually been given by the respondents, it would be appropriate to grant access to some or all of the seized documents. I would not endorse a view, if that is the view that his Honour expressed, that the Court would not have power to grant access to the seized documents, in those circumstances.
2. Section 23 of the Federal Court of Australia Act 1976 (Cth) (Federal Court Act), to which his Honour does not appear to have been taken in any substance, would authorise an order granting access to seized documents, if that were considered appropriate for the purposes of ensuring that the proceeding be adequately and properly prepared, and for the purpose, if need be, of testing whether proper discovery had been given and whether discovery that had been given was adequate.
In Rauland the applicant, Rauland Australia Pty Ltd, sought an order for access to forensic images of devices seized from, and an email account of, the first respondent, Ms Johnson, by an independent computer expert. The forensic images were obtained and the email account accessed pursuant to search orders obtained before commencement of the proceeding in which the access orders were sought. The orders sought by Rauland envisaged the expert being able to search the images of the devices and the email account for documents, or information in the form of metadata, related to the pleaded issues in the case and to disclose what he found to the applicant but not to disclose anything else: Rauland at [2].
In considering the application, Stewart J first referred to the purpose of a search order namely, to secure or preserve evidence and observed at [46]:

[77]

Fortescue focuses on the statement in Metso FC at [16] where Emmett J said that it may well be that access may be granted to material seized pursuant to a search order "if there were material that cast doubt on the adequacy of discovery that ha[d] actually been given by" a respondent. That statement was referred to in Rauland at [53], where Stewart J referred to the findings in Metso FC and at [55] where, as I have already observed, Stewart J drew together the principles in the authorities to which his Honour had earlier referred. But in neither Metso FC or Rauland, in referring to the decision in Metso FC, was the Full Court or this Court setting a new test against which adequacy of discovery was to be considered in the context of a search order.
In Metso FC Emmett J, in obiter remarks, was simply observing that access to material seized pursuant to a search order may be granted where doubts were cast on the adequacy of discovery. His Honour did not need to and did not go on to consider how an applicant might establish the requisite lack of adequacy. That said, it is clear that his Honour was not saying that in those circumstances and in order to establish those doubts the accepted and orthodox test as set out in Procter, and the cases referred to therein, did not apply. Namely that, the court must be satisfied that there are reasonable grounds for being fairly certain that other relevant or discoverable documents exist.
That that is so can be tested in another way. The authorities referred to above accept that the purpose of a search order is preservation and security of material. They also accept that search orders are an "extraordinary nature of relief" and by their nature invasive. They are not to be made lightly, and they are not, when made, to be used as an investigatory tool. That being so, it would be incongruous if a less onerous test was to be applied in determining the question of adequacy of discovery in the context of access to material seized pursuant to a search order than in the more usual and less invasive context of an application for further and better discovery.
It follows from the above that the test to be applied in determining whether Fortescue should be granted access to the Seized Material is as set out in Procter and the authorities referred to at [72] above. That is, access to the Seized Material may be granted if I am satisfied that there are reasonable grounds for being fairly certain that other relevant documents exist, beyond those which have been discovered by the respondents. As an aside I observe that this result may not come as a surprise to Fortescue. At the time the parties appeared before me and made submissions in relation to the admissibility of Dr Jacobsen's evidence (which I have addressed above), which was one week before the hearing of the Amended IA, both Fortescue and the respondents accepted that this was the test to be applied on the hearing of prayer 1 of the Amended IA.
Finally, I should address Fortescue's oft repeated submission that the Amended IA was not a discovery application. In the strict sense that may be so. Fortescue seeks access to the materials seized on execution of the search orders. But it does so after the Discovery Orders were made, in circumstances where it alleges that the discovery provided pursuant to those orders was inadequate and where, if it is successful on this application, it proposes a regime for access to the Seized Material which will result in the production of documents which respond to search terms to be specified but which fall within the Discovery Categories.

[78]

In order to obtain the relief sought in prayer 1 of the Amended IA Fortescue must first establish that there are reasons to doubt the adequacy of the respondents' discovery by, in turn, establishing that there are reasonable grounds for being fairly certain that there are other relevant documents that have not been discovered. Thereafter, the question of exercise of the discretion to grant access to the Seized Material arises for consideration.
Despite its position on the application of a less stringent test, Fortescue submits that the evidence in any event establishes that there are reasonable grounds for being fairly certain that there are other relevant documents that have not been discovered and that the respondents' discovery falls short having regard to that more stringent test. The respondents do not accept that to be the case.
On 17 September 2025 I made an order requiring that the parties organise their submissions in relation to prayer 1 of the Amended IA by reference to the alleged deficiencies in the respondents' discovery set out at [37] of Mr Dewar's affidavit affirmed 19 August 2025 (referred to in these reasons as Dewar 10). There Mr Dewar identifies a number of alleged deficiencies about which he gives evidence in sections C.2 to C.14 of Dewar 10. For ease, I will adopt the same approach in these reasons and address each alleged deficiency, to the extent Fortescue relies on it, adopting the numbering in Dewar 10 and in Fortescue's submissions.
At the commencement of the hearing Fortescue abandoned some of the alleged deficiencies in the respondents' discovery leaving eight categories to consider.
As will become clear, I am satisfied that prayer 1 of the Amended IA should be dismissed. In particular, Fortescue has failed to establish in relation to each of the remaining alleged deficiencies in the respondents' discovery that there are reasonable grounds for being fairly certain that other relevant or discoverable documents exist. It follows that the question of whether I would exercise my discretion to grant access to the Seized Material does not arise.

[91]

In all Dr Winther-Jensen produced a further 13 documents.
Fortescue submits that by reason of these deficiencies and the further production the respondents have conceded that their discovery was deficient and that it is well established that prior deficiencies tell against the sufficiency of the entire discovery process. Fortescue contends that, notwithstanding the further production, the respondents have not filed verified lists of documents for the additional production, which is yet another deficiency which casts doubt on the adequacy of the discovery provided, and that the EZ respondents produced the additional documents "without admission" in circumstances where, in the case of production by the EZ respondents of the documents produced which had previously been discovered by Dr Winther-Jensen but not them, there could be no question that those documents were in Element Zero's control.
As Fortescue submits the further documents produced by the EZ respondents and Dr Winther-Jensen have not to date been included in any supplementary lists of documents and, in the case of the EZ respondents and the nine additional images of microscopic views of iron ore depositions produced by Dr Winther-Jensen, were produced "without admission". There are reasons for that approach. First, as Ms Dunn explains, while her clients produced the documents which had been discovered by Dr Winther-Jensen, it did so without admission as to their relevance. That an assessment of relevance may differ in relation to particular documents in a large scale and complex discovery process undertaken by different legal practitioners and/or respondents does not in my view support a conclusion that there has been a deficiency in the entire discovery process to the degree alleged by Fortescue. Secondly, the timing of the further production. That is, the further documents were produced after Fortescue served the IA in which it sought an order for access to the Seized Material. In those circumstances it is hardly surprising that the respondents did not wish to concede any alleged deficiency in their discovery.
As a matter of fact, there has been no concession by the respondents that, by reason of their failure to discover the documents in any of the categories identified by DCC their discovery is deficient. Nor would I infer that to be so. The evidence before me establishes that in each case the omission of the documents later produced was either inadvertent or the documents were not produced because the EZ respondents did not consider that they were relevant to the identified Discovery Category. As to the former, that a limited number of documents might be overlooked or missed in a large and complex discovery exercise is, although not an answer to the obligation to produce these documents, hardly surprising. As to the latter, as I have already observed, there is always a possibility that two parties will form different views about the relevance of a document to a category of discovery. Neither lead me to doubt the sufficiency of the discovery process undertaken by the respondents. To the contrary, the evidence before me establishes that both the EZ respondents and Dr Winther-Jensen took steps to ensure that they complied with their obligations to discover documents pursuant to the Discovery Orders and that their respective solicitors undertook considered searches and implemented plans to ensure that was so.
Further, as soon as Fortescue identified issues or matters which it considered to be deficiencies in the discovery, the EZ respondents and Dr Winther-Jensen undertook further searches and produced additional documents. In the case of the EZ respondents the vast majority of the additional documents produced were copies of those already produced by Dr Winther-Jensen. In the case of Dr Winther-Jensen, who produced an additional 13 documents, nine of which were provided out of an abundance of caution, the omission was plainly inadvertent and, in part, caused by the oversight of his solicitors.
Fortescue raised a further matter in relation to Dr Winther-Jensen. It says that there is a clear inconsistency between the evidence given by Dr Winther-Jensen in Dr Winther-Jensen's 8 July Affidavit (filed in support of the Discharge Application) and his affidavit verifying Dr WJ's List of Documents.
In particular, Fortescue relies on [57] of Dr Winther-Jensen's 8 July Affidavit in which Dr Winther-Jensen affirms (my emphasis):

[107]

In relation to the Technology Base Presentations, Ms Dunn notes that one of those documents produced by Dr Winther-Jensen appeared to have been emailed by him to Dr Kolodziejczyk on 25 July 2025. While this was not a document identified by the EZ respondents in providing discovery pursuant to the Discovery Orders, following receipt of Dr Winther-Jensen's discovery, Ms Dunn caused searches for the email to be conducted over the Seized Material. The email was not identified by those searches.
Ms Dunn has reviewed the Technology Base Presentations and, having regard to their content, says that it is not clear to her why they were produced in answer to Discovery Category 2A (which calls for documents copied, taken or otherwise obtained by Dr Kolodziejczyk and Dr Winther-Jensen during a specified period of their employment at Fortescue). She says that, to the extent the document contains information that Dr Winther-Jensen copied, took or otherwise obtained, that was not a matter known to the EZ respondents or their lawyers at the time they produced their discovery.
Neither Dr Kolodziejczyk or Ms Dunn, following their respective reviews, believe that the Technology Base Presentations record research and development of Element Zero's process and thus they do not consider they fall within Discovery Category 11(f).
Fortescue submits that Dr Winther-Jensen was a co-developer of Element Zero's process and a founder, director and the R&D manager of Element Zero until late 2023/early 2024, he discovered 1,067 unique documents in Discovery Categories 2A, 6, 6A and 7 and, save for one exception, the EZ respondents discovered none of the documents discovered by Dr Winther-Jensen in those categories, despite the entirety of Dr Winther-Jensen's Element Zero laptop having been copied to Element Zero's cloud-based server.
Fortescue submits that the EZ respondents' own evidence admits this deficiency in relation to the chapeau of Discovery Category 2A because Ms Dunn's evidence in relation to that Discovery Category demonstrates that the EZ respondents made no attempt to search for documents that would be responsive to the chapeau. They only searched for documents in sub-paras (a)-(g). Fortescue contends that this failure to search for documents in the chapeau constitutes an exclusion of documents under a misconception of Discovery Category 2A.
This aspect of alleged deficiency in the EZ respondents' discovery relies on the fact that Dr Winther-Jensen has discovered documents which were not discovered by the EZ respondents. In contending that to be the case Fortescue seems to overlook the fact that until May 2023 Dr Winther-Jensen used his own laptop for work he undertook for Element Zero and only used a laptop issued by Element Zero from May 2023 until his resignation in January 2024. Dr Winther-Jensen also used an external hard drive. The documents produced by him in answer to Discovery Category 2A came from the latter. Relevantly, Mr Hales explains:

[116]

Mr Dewar thus opines that the EZ respondents have not produced any documents reflecting the documents Dr Kolodziejczyk took to "finish off [his] work for Fortescue" as referred to in his affidavit sworn on 19 June 2024. By way of example, Mr Dewar says that he considers that Dr Kolodziejczyk must have at least taken drafts of the documents he eventually emailed to Mr Roper.
Fortescue submits that, unlike searches in other categories, the EZ respondents' solicitors ran no searches over the Seized Material for Discovery Categories 2A(a) and (b). Rather, Dr Kolodziejczyk personally ran unspecified "searches" over his Gmail account which was part of the Seized Material and which, Fortescue contends, should have been searched by the solicitors, which can otherwise "seriously ameliorate" concerns about discovery being undertaken personally by a search order respondent. Fortescue submits that Discovery Category 2A(a) is not limited to emails, so a search of emails only is on its face inadequate and a misconception of the subcategory.
Fortescue submits, in addition, that the EZ respondents have misconceived Discovery Category 2A(a) as it does not seek the "work product" created by Dr Kolodziejczyk while working from home but seeks documents copied by him while working from home in October and November 2021.
The searches undertaken by the Element Zero respondents to comply with their obligations to discover documents in Discovery Category 2A(a) (and 2A(b)) are set out at [26(2)] above. In particular, Dr Kolodziejczyk undertook searches of his Gmail account for correspondence with Fortescue employees in relation to his work in that period. While that account was part of the Seized Material, there is no reason why Dr Kolodziejczyk could not assist in the process of discovery by reviewing his own email account, particularly in circumstances where he is more likely to be familiar with the material on which he was working in the period October and November 2021.
Fortescue refers to A v B [2019] EWCH 2089 (Ch) at [30]. That case concerned the interrogation of imaged digital data taken during the execution of a search and seizure order (SSO). The question which arose in two similar cases for resolution was: who goes first in inspecting and interrogating that data (after the filtering out of privileged material) - the claimant or the defendant? Relevantly the orders made provided for each claimant's solicitor to carry out first inspection of the material seized pursuant to the applicable SSO. In answering the question posed, Mann J considered the nature of a SSO and its juridical basis including earlier decisions, applicable legislation and court rules. At [21] his Honour observed that "the question of what should now happen in relation to inspection" should be answered "by going to the central purpose of a search and seizure order, by reference to the authorities and statute, and carefully considering how it fits into the normal established way of conducting litigation".
At [25]-[26] Mann J said:
1. In my view that informs an assessment of what should normally be done with an image of digital data once it is secured. Once the image is taken the documents on it are preserved and safe from the risk of destruction, and it is that wish which the order was primarily intended to meet. It is not necessary to carry out any searching or identification for that purpose; the image is safe. Any searches carried out in relation to those documents cannot be justified on the footing that it is necessary for the preservation of those documents. I can see no justification for a search of those documents being, as a general rule, carried out by the claimant and/or at that stage.
2. I therefore agree with the submissions of the defendants in both cases that if there is to be an inspection of documents on the images at this stage and by the claimants then it needs to be justified as a separate exercise, and analysed in terms of the disclosure jurisdiction. The process of looking for relevant documents is akin to disclosure if it is not actual disclosure (as that process is understood under the CPR). I do not accept the submissions of Mr Cavender QC, for the claimant in A v B, that the inspection of the image is ancillary to the SSO, or at least it is not ancillary in any meaningful way. If anything, the search and seizure order is ancillary to disclosure, because it enables documents to be preserved for that purpose, but without necessarily determining who should do the disclosure. That would be another way of expressing the views of Templeman J (see above).
In A v B at [30], to which Fortescue expressly refers, Mann J observed that the decision whether to allow a claimant to first inspect the seized material "like any other dispute about disclosure, has to be dealt with on the basis of the particular facts of a particular case", noting that there "will be many factors potentially in play" including six that his Honour then lists. Fortescue focuses on the first of those namely that:

[118]

That observation was made in the context of a completely different application: whether the claimant should have first access to material seized pursuant to a search order, before the defendant. The present application concerns access to seized material in circumstances where Fortescue says that the discovery provided to date is inadequate. The Seized Material has been quarantined and preserved. While the requirements to make a search order include that the court must be satisfied that that there is a real possibility that the respondents may destroy the material in question, there is no evidence that Dr Kolodziejczyk did not undertake a proper search or review of the Gmail account or that Gilbert + Tobin did not give him adequate instructions to enable him to do so. Those solicitors have clearly been involved in overseeing the whole of the discovery process.
In response to Mr Dewar's view that Dr Kolodziejczyk must have taken drafts of the documents he emailed to Mr Roper, Ms Dunn has been informed by Dr Kolodziejczyk, that he does not recall taking drafts of the documents and believes that he drafted them from memory and that it is likely that any documents he did take to complete his work for Fortescue were located on the Toshiba and Kingston USBs. Ms Dunn has been informed that any such documents that may have been on the Toshiba and Kingston USBs are no longer has in Dr Kolodziejczyk's possession (see [26(5)] above in relation to searches undertaken for Discovery Category 2A(f)). In undertaking the searches for Discovery Category 2A(f) no documents falling within category 2A(a) were identified. There is nothing to suggest that Gilbert + Tobin misunderstood Discovery Category 2A(a). It is simply the case that, having undertaken the searches described, no documents answering that category were identified.
It is also evident from Ms Dunn's evidence that the searches undertaken were not limited to a search of Dr Kolodziejczyk's email account. The searches undertaken of the Toshiba and Kingston USBs were also considered but did not identify any documents relevant to Discovery Category 2A(a).

[130]

Discovery Category 14 refers to use of the documents in Discovery Categories 1, 2A, 6 and/or 7 for or in preparing the patents or patent applications referred to in Discovery Category 13 (see Annexure A). The EZ respondents did not discover any documents in response to Discovery Category 14.
Fortescue submits that, given the EZ respondents' discovery was deficient for Discovery Categories 1, 2A, 6 and 7 in the ways described by Mr Dewar (in Dewar 10), it follows that their discovery in Discovery Category 14 was also deficient. Fortescue contends that this is confirmed by Ms Dunn who says that no separate searches were undertaken for Discovery Category 14 and Dr Kolodziejczyk's untested assertion that no documents in Discovery Categories 1, 2A or 6 were used to prepare/invent patents.
The searches carried out in relation to Discovery Categories 1, 2A, 6 and 7 are set out at [26(1)-(6), (9) and (11)] above. Fortescue has not demonstrated that those searches were inadequate, and, in any event, I do not accept that to be the case (see relevantly [113]-[137] above in relation to Discovery Categories 2A, 6 and 7 and [166]-[181] below in relation to Discovery Category 1).
As for Discovery Category 14 Ms Dunn explains that, based on her review of the Discovery Categories and her understanding of the searches conducted over the Seized Material, she formed the view that the searches for Discovery Categories 1, 2A, 3, 6, 7 and 8 would have caught any use of the documents in Discovery Categories 1, 2A, 6 and/or 7 for the purposes of Discovery Category 14. Given the way in which Ms Dunn proceeded, it is not the case that no searches were carried out in relation to Discovery Category 14. Rather given the terms of that category, Ms Dunn formed the view, sensibly in my opinion, that any use of the documents in Discovery Categories 1, 2A, 6 and/or 7 for the purpose of patent applications, would be identified in undertaking the searches for those categories and Discovery Categories 3 and 8.
Further, Ms Dunn was informed by Dr Kolodziejczyk that none of the documents produced in answer to Discovery Categories 1, 2A or 6 were used for preparing or inventing any of the patent or patent applications (no documents were produced by the EZ respondents in answer to Discovery Category 7). As Dr Kolodziejczyk was involved in the preparation of the patents, Ms Dunn sought instructions from him as an adjunct to the searches carried out under her supervision. To that end, Dr Kolodziejczyk's assertion about the use of documents in Discovery Categories 1, 2A and 6 was not untested as Fortescue contends.

[134]

On that basis, Ms Dunn does not agree that the documents that have been produced are not relevant to Discovery Category 1, or that the EZ respondents (or she) misunderstood the scope of the category. Ms Dunn says that the very broad definition of "Ionic Liquid" required production of the documents that were ultimately produced by the EZ respondents in response to Discovery Category 1. The fact that they are not relevant to the case does not mean that they are not responsive to the category and required to be produced.
Fortescue submits that it is apparent from Ms Dunn's evidence that the EZ respondents misapprehended what was required of Discovery Category 1, affecting their searches which led to discovery of documents that they admit are irrelevant to the case and their misconception of the category raises concerns as to the adequacy of their discovery.
Fortescue contends that the keywords identified for Discovery Category 1 are deficient because they appear to search exact phrases and do not permit even simple permutations, abbreviations used by the EZ respondents ("ILs" for "ionic liquids"), or basic chemical notations such as "NaOH", "KOH" which are terms for the ionic liquid compositions relevant to this proceeding. They submit that the terms used by the EZ respondents would fail to retrieve documents identified by Dr Winther-Jensen as responsive to Discovery Category 1 and, further, the EZ respondents' lawyers determined the keywords for themselves and did not seek instructions as to the appropriateness of those keywords against the requirements of the category or obtain the input of chemical expert Professor Abbott, whom they had previously engaged to give evidence explaining the meaning of "ionic liquid".
Ms Dunn's evidence does not reveal any misunderstanding of Discovery Category 1. She explains how she determined the search terms to be used to identify documents responsive to Discovery Category 1 having regard to the definition of "Ionic Liquid" (which was proposed by Fortescue) in the Discovery Orders. No criticism can be made of Ms Dunn for adopting the very terms used in that definition as search terms. It was not incumbent on Ms Dunn to consult Professor Abbott or any other expert in circumstances where a definition had been included in the Discovery Orders.
According to Mr Dewar, Fortescue also relies on "admissions" in documents by Dr Kolodziejczyk as to the existence of documents in Discovery Category 1, which was the subject of Fortescue's evidence in support of the Search Orders and summarised in Fortescue (No 2). Mr Dewar refers to Fortescue (No 2) at [67] where I observed:

[142]

Fortescue submits that Discovery Category 1 documents must exist because: Dr Kolodziejczyk's 2020 emails and documents, already reviewed by the Court, describe the work which took place; Dr Winther-Jensen (who worked with and reported to Dr Kolodziejczyk at Fortescue) discovered documents in response to Discovery Category 1; and the file path metadata in Dr Winther-Jensen's discovery shows he copied research on ionic liquids and molten salts from Fortescue on 23 October 2021.
Fortescue (No 2) concerned the Discharge Application. Commencing at [59] I considered the EZ respondents' contention, in relation to the claim about the "Fortescue Process CI", that no Fortescue employee gave evidence as to the nature and scope of the alleged work undertaken by Dr Kolodziejczyk in relation to the Ionic Liquid R&D and that there were no significant internal documents or the type of documents that would be expected e.g. board papers or reports. In relation to the latter, at [66] I set out a number of internal documents that were in evidence before me about the nature and scope of the work. Having done so I made the observation at [67] (see [174] above).
The finding in Fortescue (No 2), based on the evidence before me at the time, does not amount to an admission by Dr Kolodziejczyk. At its highest it is a finding in relation to evidence that demonstrated that work had been undertaken by Dr Kolodziejczyk in late 2020 and early 2021 while he was an employee of Fortescue as recorded in those documents.
Contrary to Fortescue's submissions, it is not the case that Discovery Category 1 documents "must exist". It does not follow that because Dr Winther-Jensen has produced documents in this category, the EZ respondents must also have documents (beyond those they have discovered) which come within Discovery Category 1. Ms Dunn has reviewed the documents produced by Dr Winther-Jensen produced in answer to Discovery Category 1 and is of the view that they do not record research on ionic liquids and molten salts undertaken by Dr Kolodziejczyk or Dr Winther-Jensen, nor can she locate the document recording research on "ILs and molten salts" or a document of that description. Fortescue's submission in this regard is not made out.

[144]

Fortescue contends that in responding to specific deficiencies in the First Deficiency Letter, the EZ respondents admitted that they failed to search properly Dr Kolodziejczyk's and Mr Masterman's non-Element Zero email addresses.
The specific deficiencies raised in the First Deficiency Letter were at items 41 to 46 and concerned an allegation that the EZ respondents had not discovered documents which were discovered by Dr Winther-Jensen in response to Discovery Category 11(d) in circumstances where those documents were sent or received by, or copied to, one or more of the EZ respondents. In response to those specific deficiencies the EZ respondents, without admission as to their relevance and in order to progress the matter, agreed to produce further documents by reference to Dr Winther-Jensen's discovery in answer to Discovery Category 11(d) and indicated that they would conduct further searches by reference to the non-Element Zero email addresses belonging to Dr Kolodziejczyk and Mr Masterman and produce any additional documents in answer to Discovery Category 11(d), if identified.
Mr Dewar believes, from the EZ respondents' response to these specific deficiencies, that the EZ respondents did not search or properly search Dr Kolodziejczyk's and Mr Masterman's non-Element Zero email addresses for documents falling within the Discovery Categories generally. Mr Dewar's reasons for his belief include that, while Dr Winther-Jensen discovered emails to and from Dr Kolodziejczyk's and Mr Masterman's non-Element Zero email addresses, a search of the EZ respondents' discovery of those email addresses only returned three results, being emails which included Mr Masterman's non-Element Zero email address and which were produced in response to Discovery Category 11(d).
Ms Dunn gives evidence in response to Mr Dewar. She says that, as set out in Gilbert + Tobin's response to the specific deficiency raised at items 41 to 46 in the First Deficiency Letter, upon notification of the deficiency, she and lawyers under her supervision, with her input, reviewed the documents produced by Dr Winther-Jensen but not by the EZ respondents in answer to Discovery Category 11(d). They identified that the additional documents produced by Dr Winther-Jensen involved emails to and from non-Element Zero email addresses belonging to Dr Kolodziejczyk and Mr Masterman. Once that was identified, Ms Dunn caused further searches to be conducted across those additional email addresses for any communications between those addresses and Playground Global. The EZ respondents indicated that they would produce any further relevant documents as a result of those searches, which they have now done, producing a further 10 documents.
Ms Dunn gives the following further evidence in response to this alleged deficiency and the EZ respondents' approach to Discovery Category 11(d):

[146]

Discovery Category 11(d) (see Annexure A) concerns documents provided by the respondents to Playground Ventures containing certain types of information which are set out. Insofar as that category is concerned, when notified of the discrepancy between the documents they had discovered and those discovered by Dr Winther-Jensen, the EZ respondents, through their solicitors, took steps to address the issue raised.
Fortescue's criticism in this regard is not focused on a failure to search Dr Kolodziejczyk's and Mr Masterman's non-Element Zero email addresses in Discovery Category 11(d), a matter which in any event the EZ respondents have addressed and according to Fortescue "remedied", but concerns a more general allegation of failure to search Dr Kolodziejczyk's and Mr Masterman's non-Element Zero email addresses in relation to any of the Discovery Categories.
In that regard Fortescue submits that the deficiency arises at least because of Ms Dunn's erroneous assumption that Element Zero communications were only sent to/from Element Zero email addresses, which Dr Winther-Jensen's discovery shows is incorrect. Fortescue contends that Dr Kolodziejczyk's and Mr Masterman's non-Element Zero email addresses are Listed Things in the Search Orders and the EZ respondents' failure to discover emails from those email addresses engages the second aspect of Rauland at [55], namely where the discovery has not produced the Seized Material.
A proper understanding of Ms Dunn's evidence in relation to this alleged deficiency shows that her assumption about communication to or from Element Zero email addresses was limited to Discovery Category 11(d). Upon being informed that there may be documents relevant to that Discovery Category which were sent from non-Element Zero email addresses, Ms Dunn took the steps described.
Contrary to Fortescue's submission, while Dr Kolodziejczyk's non-Element Zero email address is a Listed Thing, Mr Masterman's email address per se is not. Rather, Mr Masterman's non-Element Zero email address is listed in item 6 of the Listed Things in Schedule A to the Search Orders which concerns "any document recording or evidencing communications to which any two or more of the Second to Fourth Respondents are parties". In any event there is no proper basis for me to conclude that those email addresses were not searched more generally in relation to other Discovery Categories. Ms Dunn's evidence insofar as Discovery Category 11(d) is concerned is that Mr Masterman's personal devices were searched, more generally she says that Mr Dewar's belief is wrong and the searches undertaken (described above) show that the Seized Material was searched.

[148]

Fortescue submits that Ms Dunn concedes that there were documents in Discovery Category 11(f) that should have been discovered but were not, which is an admission of deficiency. It contends that the EZ respondents failed to discover these documents because, based on his opinion they were not relevant, Dr Kolodziejczyk failed to provide documents to Gilbert + Tobin for review. Fortescue says that this undermines the integrity of the searches for documents in Discovery Category 11(f), which strikes at the heart of Fortescue's case.
The basis for this alleged deficiency is that Dr Winther-Jensen produced documents in answer to Discovery Category 11(f) that were not produced by the EZ respondents. The steps taken by the EZ respondents to comply with Discovery Category 11(f) are set out at [26(12)] above.
Ms Dunn has reviewed the documents produced by Dr Winther-Jensen but not by the EZ respondents in answer to Discovery Category 11(f) and is of the view that the majority of the documents produced by Dr Winther-Jensen are not relevant to the category and, by way of example refers to Dr Winther-Jensen's weekly timesheets, flight details and meeting logistics, invoices, award applications, pitches made by respondents to obtain funding from venture capital firms, and negotiations about the execution of non-disclosure agreements which he produced. However, there were also a small number of documents that Ms Dunn considers are relevant to Discovery Category 11(f), which were documents that Dr Kolodziejczyk had not previously provided to Gilbert + Tobin. Ms Dunn was informed by Dr Kolodziejczyk that he did not provide those documents as he did not consider them relevant to the research and development of the Element Zero process. Ms Dunn notes that, as foreshadowed to Fortescue, the EZ respondents produced further documents in response to Discover Category 11(f) following their review.
Ms Dunn and thus the EZ respondents accept that there was an oversight in responding to Discovery Category 11(f) in that some documents, which I understand were produced by Dr Winther-Jensen and which were relevant, were not produced when discovery was first given because Dr Kolodziejczyk did not consider them to be relevant to the category. However, that error on the part of Dr Kolodziejczyk, which was corrected with the documents now produced, does not undermine the integrity of the searches in Discovery Category 11(f). Those searches were otherwise comprehensive as described by Ms Dunn and, as I understand it, carried out across the Seized Material and the EZ respondents' records.

[149]

The final area of deficiency concerns items 14 and 15 in the First Deficiency Letter and items 497 to 499 in the Second Deficiency Letter and the alleged failure to discover experimental records to support the examples in patent specifications, namely the 2022 Provisional, 2023 Provisional and PCT.
In support of this category of alleged deficiency Fortescue sought to rely on [13] to [16] of Mr Dewar's affidavit affirmed on 18 September 2025 (which I will refer to as Dewar 11) where Mr Dewar gives evidence in relation to the 2022 Provisional, the 2023 Provisional and the PCT. The respondents objected to those paragraphs of Dewar 11. In summary, the respondents submitted that those paragraphs of Dewar 11 are not in truth evidence in reply, the evidence is speculative and it simply seeks to repeat the evidence which Fortescue attempted to lead through Dr Jacobsen but which was rejected for the reasons set out above. As requested by Fortescue I deferred my ruling and indicated I would determine the admissibility of [13]-[16] of Dewar 11 after hearing the parties' respective submissions in relation to this category of alleged deficiency.
At [13]-[16] of Dewar 11, Mr Dewar does two things: first, he puts the 2022 Provisional, the 2023 Provisional and the PCT into evidence; secondly, he refers to instructions he gave employees of DCC to review the documents produced in answer to specified Discovery Categories and the outcome of those reviews. In light of the issues raised and the submissions made (see below) I am satisfied that the evidence, while not strictly in reply, is relevant as it concerns a notified area of alleged deficiency in the respondents' discovery. Accordingly, I will allow the evidence in Dewar 11 at [13]-[16].
Items 14 and 15 of the First Deficiency Letter and items 497-499 of the Second Deficiency Letter provide:
1. The EZRs have not discovered "documents recording the research and development of...the 'Element Zero process'" (category 11(f)) in respect of all of Examples 1-10 of the patent specification WO 2024/082020 A1 (EZR.0007.0001.0002).
2. The EZRs have not discovered "documents recording the research and development of...the 'Element Zero process'" (category 11(f)) in respect of Examples 2 and 3 of provisional application AU 2023902103 (EZR.0003.0002.0329, EZR.0003.0002.0297).

[153]

The results of those searches were: for the 2022 Provisional and the 2023 Provisional, there were no documents recording the experiments in relation to the identified examples, although for the latter there were summaries of the experiments for examples 2 and 3; and for the PCT there were no documents recording the experiments in examples 1 to 3, 6 and 8 to 10.
Fortescue submits that each patent application contains examples, each example admits one or more experiments, which must have been done, and such experiments must have generated experimental records. Fortescue contends that those records must have existed to instruct a patent attorney to draft the patent applications months or a year later (and they are not listed in part 3 of any of the respondents' lists of documents). Fortescue submits that the alternative inference, that one or more of the inventors remembered all the described details of their experiments, including data, is unlikely.
Fortescue's submissions in relation to this alleged deficiency overlook one important fact. That is that it was Dr Winther-Jensen who carried out the relevant experiments. As explained by Mr Hales, Dr Winther-Jensen does not accept that the discovered documents do not include reference to the experiments in the examples to which Mr Dewar directed the review. Further, Dr Winther-Jensen's laboratory notebook has been discovered which contains records of his work. Those pages, examples of which were in evidence before me, might not obviously, when reviewed by anyone other than Dr Winther-Jensen, set out experiments which are the subject of the examples in the 2022 Provisional, the 2023 Provisional or the PCT. However, the evidence before me is that the laboratory notebook is where Dr Winther-Jensen recorded his work. The work undertaken by Dr Winther-Jensen and his work and record keeping practices will ultimately be a matter for trial.
Further, and relatedly, for completeness I note that, contrary to Mr Dewar's evidence, the EZ respondents have produced copies and drafts of PCT Application no WO2025118033 relating to application no 2023903979, but they are subject to a claim of patent attorney privilege. Those documents are identified in part 3 of the EZ Lists of Documents.

Fortescue Limited v Element Zero Pty Limited

At a glance

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Judgment (183 paragraphs)

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Legislation Cited (4)

Cases Cited (5)