Gordagen Pharmaceuticals Pty Ltd v Commonwealth Scientific and Industrial Research Organisation

REASONS FOR JUDGMENT 1 By application dated 24 April 2014, the prospective applicant ('Gordagen') before me seeks preliminary discovery pursuant to r 7.23 of the Federal Court Rules 2011 (Cth) ('the Rules') from the prospective respondent ('CSIRO'). 2 Gordagen relies upon affidavits of Dr Tong in support of the application, and, it is fair to say, by the application, seeks a wide range of documents through the preliminary discovery application. 3 The concern Gordagen has is that the confidential information it disclosed to CSIRO has been misused, and the preliminary discovery sought is directed to enabling Gordagen to determine how that information was being used by or within CSIRO and determine whether or not to pursue allegations of misuse of the confidential information against CSIRO. 4 It is important at the outset to indicate that the Rules be applied keeping in mind the overarching purpose of the civil practice and procedure provisions in the Federal Court of Australia Act 1976 (Cth) ('the Federal Court Act'). 5 Section 37M of the Federal Court Act reminds us that the overarching purpose of the civil practice and procedure provisions is to facilitate the just resolution of disputes according to law and as quickly, inexpensively and efficiently as possible. Subsection 37M(3) provides civil practice and procedure provisions must be interpreted and applied in a way that best promotes the overarching purpose. 6 Rule 7.23 has a number of hurdles that a prospective applicant must overcome. I do not need to rehearse the rule in its entirety, nor to go through the way in which it has been applied and interpreted. 7 It is sufficient to say that the principles set out by the Full Court in Optiver Australia Pty Ltd v Tibra Trading Pty Ltd and Ors (2008) 169 FCR 435; [2008] FCAFC 133 ('Optiver'), and by Nicholson J in Lynx Engineering Consultants Pty Ltd v The ANI Corporation Ltd [2007] FCA 578 adequately cover the issues that have arisen in this application by Gordagen in relation to each and every aspect of r 7.23 needed to be considered by the Court. 8 It seems to me in this particular application that a determination can be made by looking at whether or not Gordagen has made reasonable inquiries before coming to the Court, so that it may be concluded that Gordagen did not have sufficient information to decide whether to start a proceeding in the Court to obtain the relief that is being sought against the particular prospective respondent, CSIRO. 9 Counsel for Gordagen argued in favour of my being satisfied that reasonable inquiries had been made, and indicated that I should look at the matter in the context of all the correspondence between the parties' solicitors leading up to the application now before me. 10 Nevertheless, despite the submissions put by counsel for Gordagen, I have come to the view that I do not think that reasonable inquiries have been made by Gordagen in this particular case. 11 By letter of 17 April 2014, CSIRO made an offer in terms there set out, whereby copies of two patent specifications filed by Zeenar Enterprises Pty Ltd were to be provided in confidence. The purpose of that disclosure was set out in the letter, and it was also stated that CSIRO wanted confirmation that this material was being provided in an attempt to resolve Gordagen's concerns. 12 I should indicate that the letter of 17 April 2014 may not have satisfied the concerns of Gordagen, and it may have been that the information that was offered would not have put an end to the train of inquiry that may have needed to be undertaken by Gordagen. This is not a matter for me to speculate upon. 13 Undoubtedly, it is clear that the provision of the two patent specifications would have assisted in the reasonable inquiries to be undertaken by Gordagen, and should have been availed of before making this application. Whether other information needed to be taken into account or asked for, would at least depend upon what information was provided to Gordagen in the two patent specifications. 14 I should indicate that I do not regard the letter of 17 April 2014 as being a letter that indicates a "take it or leave it" approach. It is a letter that seems to me to be a step further along the way in a negotiation between the parties as to what could be provided, so as to prevent any further disputation between them as to the provision of information. 15 Counsel for CSIRO has confirmed this was the intention of the letter. It is a matter for me to look at the letter and to see what it reasonably conveys. However, it seems to me to reasonably convey what I have been told by counsel for CSIRO as to the letter's intent. 16 The letter from the solicitors for Gordagen in response to the letter of 17 April 2014 was short. In itself, this is not a criticism. However, in my view, the letter does not sufficiently engage in the letter of 17 April 2014. It certainly did not engage in the possibility of at least taking the information offered, and seeing where that would lead as part of a reasonable inquiry that should have been undertaken. 17 This finding of fact, namely that Gordagen did not make reasonable inquiries, disposes of the application. The requirements of r 7.23 have not been satisfied. 18 I indicated at the outset that the requirements of r 7.23 (as with all the Rules) should be read in conjunction with the overarching purpose. The overarching purpose would also seem to indicate that further endeavours between the parties, particularly on the part of Gordagen, should have been undertaken to make further inquiries in any event. 19 Even if I had been satisfied that there were reasonable inquiries made by Gordagen, and despite the comments made in Optiver about the exercise of the discretion, I would have dismissed the application on discretionary grounds based upon the overarching purpose as set out in the Federal Court Act. The parties should have engaged further, relevantly Gordagen, in further negotiations relating to the provision of information prior to Gordagen bringing the application. 20 One matter concerned me upon my determining to dismiss the application on my interpretation of the letter dated 17 April 2014. If CSIRO will now not provide any material, Gordagen could come back to the Court and say the circumstances have changed based upon my reasoning that there was going to be the provision of the two patent specifications, and an opening of the door in relation to further discussion as to other documentation. 21 I have been informed by counsel for CSIRO that, effectively, the offer made on 17 April 2014 will be remade, and that CSIRO has not closed the door entirely on discussions in relation to the providing of documents to Gordagen. 22 I propose, for the above reasons, as the requirements of r 7.23 have not been satisfied, to dismiss the application. 23 This is an interlocutory application. I have dismissed it on a particular basis, and, on the basis of the evidence before me. There is no reason as a matter of principle, or based upon my reasons, why Gordagen could not bring another application if so advised, and on proper material. 24 I order the application dated 24 April 2014 be dismissed. I certify that the preceding twenty-four (24) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Middleton.