Reasoning
4 In relation to the Category 1documents the respondent resists the proposed limitation and submits that to restrict the category by addition of the words in bold print would be artificial because it is possible that the patentee had projects in the four specified areas in circumstances where not all of them led to the invention. An alternative wording is suggested by the respondent. It submits that the limitation could be made less restrictive by substituting a limitation to the effect that the research or studies be limited to those "in the course of which the invention was made."
5 The restrictive wording for which the applicants contend is similar to that referred to in the High Court decision in The Wellcome Foundation Limited v VR Laboratories (Aust) Pty Ltd (1981) 148 CLR 262 at 287 where Aickin J, with whom the other members of the Court agreed, said after a detailed review of the authorities:
"… I have concluded that evidence of research and experiments (if any) of a patentee leading up to his claimed invention is generally admissible though not always likely to be helpful," (Emphasis added)
6 However, his Honour added at 287-288:
"So far as discovery of documents is concerned, the test is wider than the test of admissibility. … It may be that in many cases documents recording such research and experiment could properly be said to relate solely to the inventor's own case but that ground for refusing discovery is no longer available in New South Wales…." (Emphasis added)
7 In the present case I consider that the latter observations of by Aickin J are apposite. The documents which should be discovered in this matter should have some relationship with the invention in dispute. As submitted Category 1 is too open-ended in that it makes no reference to the invention. However, it is too restrictive to limit the material to research or study which led to the invention. More appropriate wording should be used to expand it to research or studies in "the course of which the invention was made". This wording does not require a decision by the party making discovery that the material in fact led to the invention. It is not dissimilar to the criterion of documents "relating to" referred to by Branson J in Lubrizol Corp Inc v Imperial Chemical Industries plc [2000] FCA 1464 at par 32 in that it requires a connection with the making of the invention which is wider than that required for admissibility.
8 In relation to the other suggested limitation of the Category 1discovery namely that it be limited to documents concerning research "carried out not later than the priority date" I consider that the comments of Burchett J in F Hoffman-La Roche A G v Chiron Corporation (2000) 47 IPR 516 at 521 are applicable. His Honour there said:
"Where an order for discovery is made by a patentee, on the issue of obviousness, of documents relating to research and development in respect of the invention, Wellcome Foundation is authority for the proposition that the discovery should be limited to the period ending at the priority date." (Emphasis added)
9 In this case the discovery sought is discovery by the patentee. I respectfully agree with his Honour's remarks and therefore consider that these words of limitation should form part of the order.
10 In relation to the Category 6 documents, the respondent says that the wording should not be restricted because as drafted it would cover documents published after the priority date which may refer to or contain material about dialysis machines or systems where such material was available before the priority date. It is therefore said that such documents would be relevant to the state of the art before the priority date because they could lead to a line of inquiry which may identify documents published before that date which could be relied on by the respondent.
11 In my view the limitation sought to be imposed by the applicant is appropriate. It is a matter of pure conjecture that there may be publications in existence published after the priority date in the possession of the applicants which refer back to other pre-priority date publications which in turn may assist the respondent. The priority date is the critical date. The category is also very wide because there is no limitation on the period over which the documents published after the priority date might have come into existence. On the face of it, identification of these documents could be an onerous task which may be unwarranted in the absence of any evidence to the effect that there are any such documents of this type in existence. The respondent is in effect requiring the applicant to carry out its research for it. I am persuaded that the words of limitation pressed are appropriate and that the category should be so restricted by addition of the words in bold.
12 In relation to Category 7the respondent submits that the restrictions sought would deprive the respondent of documents which may assist it in determining:
"… the line which may be taken in connection with the defence to the attack upon the validity which is going to be put forward. They disclose the approach to the issue of infringement."
13 The above quotation is from the judgment of Whitford J in Vickers plc v Horsell Graphic Industries Ltd [1988] RPC 421 at 423 where his Lordship, after referring to the general desirability of discovery of documents, went on to add:
"On the other hand, it is of equal significance to avoid unnecessary discovery with the consequent endless duplication of papers which at the end of the day nobody bothers to refer to and which have merely been discovered because it is felt cheaper to discover everything, photocopying being cheaper than a consideration of the relevance of any particular material which can be photocopied."
14 These remarks were cited with approval by Burchett J in Hoffman-La Roche.
15 In my view the statement by Whitford J in the passage first quoted are appropriate in the present case. Such documents could assist the applicants' defence to the attack on validity advanced by the respondent. They should not be restricted to the period before the priority date. This line of inquiry formulated in this Category differs from that in Category 6 because the line of inquiry is more specific. Accordingly, the words of limitation in bold, sought to be imposed, are not appropriate, in relation to this category.
16 The costs of this application are reserved.
I certify that the preceding sixteen (16) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Tamberlin.