Hardie Rubber Co Pty Ltd (now known as Firestone Australia Pty Ltd) v General Tire & Rubber Co

1. (1910) 11 C.L.R. 689, at p. 694. 2. (1890) 16 V.L.R. 108. 3. (1884) 26 Ch. D. 1, at pp. 9, 12. 4. [1916] V.L.R. 550, at p. 555. 5. [1959] V.R. 275, at pp. 276-277.

Power to order that a request to examine witnesses shall issue is given to the Court or a Justice by O. 37 r. 4 of the Rules of this Court. It has frequently been said that the exercise of such a power is a matter of judicial discretion: Coch v. Allcock & Co. [1] ; Ross v. Woodford [2] ; Wong Doo v. Kana Bhana [3] ; New Zealand Towel Supply and Laundry Ltd. v. N.Z. Tri-Cleaning Co. Ltd. [4] ; La Baloise Compagnie d'Assurances contre l'Incendie v. Western Australian Insurance Co. Ltd. [5] . However, the decision of this Court in Willis v. Trequair [6] establishes that there are certain limits to the exercise of the discretion. The party seeking an order for the examination of a witness abroad must show to the satisfaction of the Court or Justice that the witness is out of the jurisdiction of the Court, that his evidence is material and that his attendance within the jurisdiction cannot be procured; if these matters are established, as a general rule the letter of request ought to issue: Willis v. Trequair [7] . However, the members of the Court in Willis v. Trequair [6] recognized that there may be exceptions to this general rule and repeatedly referred to the power as a discretionary one, although they did not find it necessary to attempt to state exhaustively the circumstances in which an order may be refused in the exercise of the discretion of the Court. In the present case the applicant, besides denying that it has been shown that there are witnesses in Japan who can give material evidence and whose attendance in Australia cannot be procured, submits that having regard to the procedure that would be followed by the court in Japan and to the circumstances of the case, the issue of the letter of request would operate to cause grave injustice to the applicant and further that the respondent was guilty of a want of frankness in making the application to the Chief Justice. If these submissions were made out, I would have power to refuse the issue of a letter of request notwithstanding that the case fell within the general rule stated in Willis v. Trequair [6] . In my opinion, if it appeared that the procedure in Japan would not permit the evidence given by a witness to be properly tested and that this would cause injustice to the applicant, I would not be bound to confirm the order. I regard In re Boyse; Crofton v. Crofton [8] which was referred to in the judgment in Willis v. Trequair [6] , with apparent approval, as an example of an exercise of the discretion to refuse to allow evidence to be taken abroad if it appears that the procedure in the foreign court would not permit justice to be done in the circumstances of the case. As to the alleged want of frankness, the ordinary principle is that full and fair disclosure must be made by any person who seeks an order ex parte and the failure to make such disclosure is sufficient ground to discharge the order (The Hagen [1] ; Thomas A. Edison Ltd. v. Bullock [2] ) and I can see no reason why this principle should not apply to a case such as the present.

1. (1888) 21 Q.B.D. 178, at p. 181. 2. [1894] 1 Ch. 38, at p. 41. 3. [1933] N.Z.L.R. 1455, at p. 1459. 4. [1935] N.Z.L.R. 204, at pp. 214, 219, 222. 5. [1939] V.L.R. 363, at p. 369. 6. (1906) 3 C.L.R. 912. 7. (1906) 3 C.L.R., at p. 919. 8. (1906) 3 C.L.R. 912. 9. (1906) 3 C.L.R. 912. 10. (1882) 20 Ch. D. 760. 11. (1906) 3 C.L.R. 912. 12. [1908] P. 189, at p. 201. 13. (1913) 15 C.L.R. 679, at pp. 681-682.

The first question that arises for decision is whether the respondent has established that the witnesses whom it is desired to examine in Japan can give evidence material to the issues in the action. To answer this question it is necessary to consider what facts are in issue in the action at the present stage. The patent in question (which expired on 20th November 1966) was for an invention entitled "Manufacture of a plasticised polymerical diolefinic compound suitable for tires". The respondent's allegation, shortly stated, is that during the life of the patent the applicant infringed all the claims of the complete specification by manufacturing, exhibiting for sale, offering for sale and selling motor tyres. In particular the respondent complains of the manufacture and sale in Australia of a particular tyre, number SD 01308. The applicant by its defence denies any infringement and further sets up that the patent is invalid and pleads the statute of limitations. From admissions of facts and answers to interrogatories it appears that tyre number SD 01308 was made in Australia by the applicant between 1st June 1965 and 12th July 1965 and that the applicant believes that one of the ingredients used in the manufacture of the vulcanizable rubber compound employed by the applicant in the manufacture of the tread portions of the tyre was a synthetic rubber masterbatch selected from a range of masterbatches called JSR 1712, bought by the applicant from a supplier within Australia, namely Mitsubishi (Aust.) Pty. Ltd., and which the applicant believes was manufactured and marketed by Japan Synthetic Rubber Co. Ltd. It therefore appears to be relevant to the issue whether the patent (assuming it to have been valid) has been infringed to ascertain whether the polymerization product used in making the masterbatches JSR 1712 answered the description contained in the specification, claim 2 of which reads as follows:

The method of making a rubber compound suitable for a rubber tire including the step of mixing a polymerization product of a conjugated diolefinic compound having not in excess of eight carbon atoms with a compatible plasticizer and carbon black said polymerization product having a "computed Mooney" plasticity of at least 90 and said plasticizer being present in amounts of at least 30 per cent by weight of said polymerization product, said plasticizer and said carbon black being distributed through said product before said product has been appreciably deteriorated by mastication. Certain admissions have been made as to the nature of the relevant polymerization product but it remains in issue whether it had a "computed Mooney" plasticity of at least 90. The term "computed Mooney" is not a term of art; it was invented by the respondent for the purposes of the patent. The toughness of a polymer may be indicated by a reading taken by a Mooney Plastometer. However, according to the complete specification, the Mooney Plastometer does not give a satisfactory result either if the Mooney reading exceeds 120 or if the rubber has a substantial gel content. In relation to this matter the specification contains the following important passage: We have found that in any given polymer modified so as to have substantially no gel, the amount of oil required to obtain a given compounded plasticity varies directly with the Mooney plasticity and directly with the intrinsic viscosity. Thus, there is a substantially straight line relationship between the amount of a given oily plasticizer required to obtain a given compounded Mooney and the raw Mooney reading providing a given carbon black such as a fine reinforcing furnace black for example "Philblack O" (a structural type of fine high abrasion furnace black of the Phillips Petroleum Company) is utilized and the amount of the carbon black is equal to a given percentage of the total weight of rubber plus oily plasticizer say 50 per cent of the total of these two materials. We have also found that the compounded Mooney of a given polymer varies in approximately a straight line relationship with the amount of a given oily plasticizer contained therein. If, therefore, the polymers are of a non-gel type, and vary only by molecular weight as indicated by intrinsic viscosity measurements, then the curves obtained by plotting parts of oil necessary to obtain a given compounded Mooney (CML-4′) versus measured raw Mooney of the polymer are approximately parallel lines especially when the accuracy of duplication and measurement is considered. We have made use of this fact as hereinafter further explained to develop the term "computed Mooney" which applies to all synthetic rubbery polymeric materials, regardless of how they are obtained. The "computed Mooney" of a gel-containing polymer is the true Mooney of an equivalent of a gel free polymer. In Fig. 2 calculated or "computed Mooney" is plotted versus parts of oil (Sundex 53) required in the various gel free polymers to obtain compounded Mooney values of approximately 40, 60, and 80 as shown by lines C, B, and A with a short mixing cycle of not more than 12 minutes as hereinafter described. The computed Mooney and the measured raw Mooney are the same within accuracy of measurement at the lower values, i.e., below 120 for these gel free polymers.

In order to properly prepare tires and particularly extruded treads of tires, the compounded Mooney of the compounds used should generally lie between 40 and 80. When the rubber compound is too plastic (too low a Mooney, for example much below 40) difficulty is had in holding shapes and when the compound is not sufficiently plastic, i.e., has over 80 Mooney, great difficulty is had in overheating and scorching in the extruding operation as had in a calender, tuber or the like machine necessary for forming extruded tire treads of uniform section. It is preferred that the compounded Mooney of the rubber compound be within the range of 50 to 70. Line B, the curve for compounded Mooney values of 60 is therefore squarely in the center of the range preferred for factory processing. The slope of this line was obtained by plotting the measured raw Mooney reading of gel free polymers against the amount of oil required to obtain a compound with a 60 CML-4′ (compounded Mooney of 60 measured with the large rotor at four minutes). Slopes and positions for 40 CML-4′, and 80 CML-4′ lines were obtained in the same manner except that the compounds were made to 40, and 80 compounded Mooney respectively. One may find "computed Mooney" of a given polymer utilizing the graphs of Fig. 2 by preparing a carbon black mixture with a given amount of oil utilizing the mixing procedure described below and measuring the Mooney of the compound in the ordinary manner using the large rotor of a standard Mooney Plastometer and reading the value at four minutes.

If the measured four minute compounded Mooney of the compound falls in the neighbourhood between 40 to 80 i.e., near any of lines A, B, and C the "computed Mooney" may be simply read from the scale designated "Computed Mooney" using standard interpolation or extrapolation procedures. If the measured compounded Mooney is substantially removed from the range of 40 to 80 another compound with greater or less oil may be prepared showing a compounded Mooney closer to this range and the amount of oil and actual Mooney level may thereupon be read by interpolation procedures.

The specification then details the procedure for mixing the compound.

Mr. Aickin, for the respondent, stated in argument that his primary aim in seeking the issue of a letter of request was to obtain in Japan evidence relative to the question what was the "computed Mooney" of the polymerization product in the masterbatch used by the applicant in the manufacture of the tyre in question. He submitted that evidence of the raw Mooney values of the latex would be relevant to this question. The basis of this submission was that the specification upon its proper construction defines the term "computed Mooney" to mean the measured raw Mooney in the case of polymers "at the lower values", i.e. below 120 for gel-free polymers. If this is the true meaning of the specification it of course follows that evidence as to the raw Mooney value of the polymer will be relevant, if the evidence also shows that the polymer was gel free and had a Mooney reading below 120. However, Mr. Fullagar, for the applicant, strongly contended that this suggested construction of the specification is absurd and untenable. He said that it appears from the specification that the "computed Mooney" is defined as a figure obtained by applying the graph, fig. 2 of the specification, to a compound prepared as instructed by the specification; it is only the figure read from the graph that is the "computed Mooney" and the statement in the specification that in certain circumstances the "computed Mooney" and the raw Mooney are the same is merely a collateral statement of fact which does not form part of the definition of the term "computed Mooney". He further submitted that this statement of fact could be demonstrated to be erroneous, and that the raw Mooney and the "computed Mooney" do not necessarily coincide under the circumstances postulated, and in this respect he particularly relied on table 12 of an article published by three inventors of the patent. However, I am not concerned on this application to consider any disputed question of fact and even if the only evidence were that the statement in the specification was erroneous as a matter of scientific fact, that might be held to be immaterial if on the true construction of the specification it appeared that the words in question form part of the definition of "computed Mooney". The submission made on behalf of the applicant that the "computed Mooney" is defined only by reference to fig. 2 warrants serious consideration but in my opinion it is not my function on an application of this kind to attempt to determine whether that argument is correct. I have to determine, not that the respondent will succeed at the trial but that there is a question really to be tried: Willis v. Trequair [1] . The construction of the patent presents obvious difficulties and I have been informed that courts in other jurisdictions have reached differing conclusions on questions that will arise in this action. It is possible that at the trial scientific evidence will be admitted which will assist in the construction of the specification. Whether that is so or not I find it impossible to hold that the respondent's suggested construction of the specification must be rejected as unarguable. In my opinion, the question whether the term "computed Mooney" is so defined in the specification as to include the raw Mooney in certain circumstances is a triable issue and if that issue is determined in favour of the respondent evidence as to the raw Mooney reading of the polymer will be material.

It was, however, further submitted on behalf of the applicant that the evidence fails to establish that there are witnesses in Japan who could give evidence of the raw Mooney value of the polymerization product used in making the masterbatch that was used to make the tyre in question. The material put before the Court on behalf of the respondent on this point is not altogether satisfactory. The application made to the Chief Justice was supported by an affidavit sworn by a solicitor, Mr. Pond. The language of this affidavit was criticized but on a fair reading it appears to me to state that the respondent desires to prove the Mooney and the "computed Mooney", and also the oil content, of the polymerization product contained in the rubber compound or oil masterbatch known as JSR 1712, and to prove the history of that compound from the time of its manufacture by Japan Synthetic Rubber Co. Ltd. until its receipt by the applicant, and that as a result of unspecified inquiries the respondent's solicitors believe that the witnesses named in the affidavit (six employees of Japan Synthetic Rubber Co. Ltd. and one of Mitsubishi Shoji Kaisha Ltd.), or some of them, and possibly other employees as well, are able to give evidence relevant to those matters. Admissions have been made as to the oil content of the masterbatch and, as I have indicated, the respondent now seeks to justify the issue of the letter of request primarily on the ground that witnesses in Japan can give evidence as to the raw Mooney of the polymerization product. In reply to Mr. Pond's affidavit the applicant filed an affidavit by Mr. Kewley, the applicant's solicitor, and much of this affidavit was devoted to the suggested injustice and inconvenience to the applicant of taking evidence in Japan, a topic to which the greater part of most of the affidavits subsequently sworn was devoted. However, Mr. Kewley did state that it was unlikely that any of the witnesses named in the letter of request would be able of his own knowledge to give evidence material to any of the issues referred to in Mr. Pond's affidavit. Three reasons were given for this submission. In the first place it was said that a trade brochure (Ex. K9) served on the applicant by the respondent, and stated by the respondent's solicitors to have been published by the Japan Synthetic Rubber Co. Ltd., indicated that JSR 1712 is a synthetic rubber oil masterbatch or range of masterbatches and that the raw polymer used in such masterbatches has a "computed Mooney" viscosity of less than 90, if the relevant data in the respondent's patent in suit are correct. In the second place it was stated that the term "computed Mooney" was unintelligible and of no certain meaning. Thirdly, reference was made to the fact that certain facts had been admitted by the applicant and were no longer in issue. Having regard to the ground on which the respondent principally bases its argument, I am now concerned only with the first of these reasons. The assertion that the brochure (Ex. K9) indicates that the polymer has a "computed Mooney" of less than 90 is challenged in an affidavit sworn by Mr. Dowling, one of the respondent's solicitors. Mr. Dowling said, inter alia, that he is informed by one Watkins, whom he believes to be a qualified and experienced rubber scientist, and believes that if the data in the complete specification are correctly applied, the "computed Mooney" in the case of each of the masterbatches referred to in the brochure exceeds 90. He went on to say that he is also informed by the said Watkins, and believes, that in the year 1967 Watkins ascertained from Dr. Matsudaira, who is now deceased but was then a senior officer of Bridgestone Tire Co. Ltd., that the actual Mooney values of the raw polymer used by Japan Synthetic Rubber Co. Ltd. over the period January 1962 to July 1967 were always in excess of 90 and generally in excess of 100. According to Mr. Dowling's information, Bridgestone Tire Co. Ltd. owned at least a half interest in Japan Synthetic Rubber Co. Ltd., and according to Mr. Kewley it owned, together with four other Japanese rubber companies, sixty per cent of the stock of Japan Synthetic Rubber Co. Ltd. Mr. Dowling said that he is further informed by the said Watkins, and believes, that the Bridgestone Tire Co. Ltd. has acknowledged that over the said period the "computed Mooney" of JSR 1712 exceeded 90. The affidavit does not condescend upon particulars as to the circumstances in which the acknowledgment was made, or the form that it took or the information upon which it was based, nor is it made clear how Bridgestone Tire Co. Ltd. would have been in a position to know what was the "computed Mooney" of JSR 1712 if the concept of a "computed Mooney" exists only for the purpose of the Australian patent. I accordingly place no weight upon the evidence as to the alleged acknowledgment. The applicant strongly criticized the evidence as to what Watkins had ascertained from Dr. Matsudaira on the ground, inter alia, that it did not appear whether Dr. Matsudaira was speaking of the polymer used in JSR 1712 or of one of the many other polymers and masterbatches manufactured during the period 1962 to 1967, but the fact said to have been ascertained from Dr. Matsudaira is stated quite generally and in wide enough terms to refer to all polymers including that used in JSR 1712. In reply to this evidence Mr. Kewley said that he believes that it is impossible that the statements referred to by Mr. Dowling concerning Japan Synthetic Rubber Co. Ltd. polymer in the period 1962 to 1967 could refer to any actual production batch or commercial batch of JSR 1712 polymer, because JSR 1712 is an oil masterbatch range only, not containing any carbon black, and because he believes that JSR 1712 masterbatches were made by dispersing oil in copolymer latex and coagulating the mixture and have never been coagulated otherwise than in the presence of oil; he further said that he believes that it is impossible to measure the Mooney plasticity of a polymer until it is first coagulated. He went on to give reasons why the raw Mooney would be irrelevant or unreliable in the determination of the "computed Mooney" but this assertion need not be discussed because, as I have said, the contention of the respondent is simply that the definition of the latter term as it appears from the specification itself shows that in certain circumstances the "computed Mooney" may be the same as the raw Mooney. In reply to Mr. Kewley's evidence, Mr. Dowling filed a further affidavit in the course of which he said that from information given to him by officers and United States counsel of the respondent he believes that Japan Synthetic Rubber Co. Ltd. has retained records of its compounding and manufacturing procedures over the period mentioned and that Dr. Matsudaira in giving the information referred to had access to and relied on such records. He further said that from information given to him by an officer of the respondent he believes that it was at all material times the practice of Japan Synthetic Rubber Co. Ltd. to run control batches and to take samples for the precise purpose of ascertaining the Mooney value of the polymerization product in each batch of JSR 1712. Mr. Dowling further said that he was informed by an unnamed officer of an unnamed Japanese company engaged in the manufacture of tyres in Japan (whose names he withheld because the company is involved in business dealings with Japan Synthetic Rubber Co. Ltd. and wishes to preserve its anonymity) and believes that Susumu Kitagawa, Hidetoshi Yasunaga, Narimasa Ishikawa and Keiyu Kuramoto, all of whom were employed by Japan Synthetic Rubber Co. Ltd., would be able to give at first hand evidence as to the matters in relation to which the respondent might require evidence. He further said that he was informed by Namoru Ishihara, and believes, that Ishihara had been employed by Mitsubishi Shoji Kaisha Ltd. in Australia prior to 1965 and that he was familiar with the way in which that company dealt with products of Japan Synthetic Rubber Co. Ltd. imported into Australia at that time. He further said that the other witnesses named in the letter of request, namely Fujio Aoki, Yasuo Yokoyama and Mikio Wakasugi, were intended to give evidence as to the identity and location of appropriate witnesses employed by Japan Synthetic Rubber Co. Ltd. in the event that other witnesses named in the letter of request were not available.

In my opinion Mr. Dowling's evidence sufficiently establishes that Japan Synthetic Rubber Co. Ltd. kept records of its compounding procedures and that those records, if available, will disclose the raw Mooney values of the polymer used in making the masterbatches JSR 1712. It is true that his evidence is hearsay - indeed it is hearsay upon hearsay - but affidavit evidence on information and belief is admissible on interlocutory proceedings provided that the sources and grounds of that information and belief are stated: O. 39 r. 3 (3). Mr. Dowling did state the sources of his information although in some cases he described and did not name his informants. It is true also that Mr. Kewley's information casts some doubt on the information with which Mr. Dowling has been supplied, but it is impossible to resolve this conflict at the present stage. It is in the nature of things probable that Japan Synthetic Rubber Co. Ltd. did keep records of its compounding procedures, and if Mr. Dowling's information is correct those records will reveal the raw Mooney values of the polymer used. It seems to me proper to conclude from the respondent's evidence that it is probable that some officers and employees of Japan Synthetic Rubber Co. Ltd. who were concerned in the compounding of JSR 1712 could by reference to the company's records give evidence that would serve to establish the raw Mooney values of the polymer. I also conclude that the appropriate officers of Mitsubishi Shoji Kaisha Ltd. could probably give evidence as to the manner in which products of the Japan Synthetic Rubber Co. Ltd. delivered to Mitsubishi Shoji Kaisha Ltd. were dealt with.

However, the respondent has not shown specifically the evidence which any particular witness is expected to give and has not even alleged expressly that the four named employees of Japan Synthetic Rubber Co. Ltd. who are said to be able to give evidence at first hand can give evidence relevant to the determination of the Mooney values of the polymer. It was submitted on behalf of the applicant that the aim of the respondent is to conduct a roving inquiry in Japan in the hope of obtaining some evidence there, and that in the circumstances the respondent has failed to prove the materiality of the witnesses sought to be examined. Although it is not permissible to use letters of request for the purpose of conducting a search in the hope of finding evidence (Armour v. Walker [1] ; Sydney Ferries Ltd. v. s.s. "Tahiti" [2] ), that does not mean that the issue of a letter of request must be refused on the ground that it is not certain who ought to be called to give evidence, when it is known that some, but not all, of the members of a group of persons can give material testimony. In my opinion, if it were made to appear that some of the employees of a company were in a position to give material evidence, but it was not known which of those employees had the requisite knowledge, it would be permissible in appropriate circumstances to issue a letter of request. In the present case, I do not think it right to infer that the respondent is merely fishing for witnesses to examine. Although Mr. Dowling's affidavit does not state what are the matters in relation to which the four named employees of Japan Synthetic Rubber Co. Ltd. are able to give evidence, it seems to me proper to infer that it is believed that their evidence will relate to the compounding procedures used in making JSR 1712 or to tests conducted with a view to determining the raw Mooney values of the polymer used therein. Moreover, it is well established that it is not necessary that the names of all the persons sought to be examined should be set out in the letter of request (Nadin v. Bassett [3] ; Armour v. Walker [1] ) and in my opinion it would be in the interests of justice to permit other employees of the company to be called if it appeared that the named witnesses were unavailable or were not the persons appropriate to give evidence.

1. (1883) 25 Ch. D. 673, at p. 677. 2. (1928) 28 S.R. (N.S.W.) 307, at p. 311. 3. (1883) 25 Ch. D. 21, at p. 29. 4. (1883) 25 Ch. D. 673, at p. 677.

The second matter which it lay on the respondent to prove was that the attendance of the witnesses within Australia cannot be procured. In the affidavit of Mr. Pond it was stated that inquiries in Japan made by the respondent's solicitors indicate that none of the witnesses whom it is desired to call is willing to come to Australia or to make any statements on the matter. The later affidavits of Mr. Dowling appear to show the nature of the inquiries referred to in Mr. Pond's affidavit. Mr. Dowling said that he asked one of the witnesses, Susumu Kitagawa, whom he believed to hold the position of manager of the Licence Department, Overseas Division, in Japan Synthetic Rubber Co. Ltd., whether that company would be willing to permit such of its employees as might be required by the respondent for the purpose of giving evidence to do so, and was informed by Kitigawa that he would consult other executives of the company before giving a decision. Later, Mr. Dowling was informed by his Japanese agents that Kitigawa had informed them that Japan Synthetic Rubber Co. Ltd. would not co-operate unless legal proceedings were taken, because the issues in the action involve one of their customers. Mr. Dowling accordingly formed the belief that the witnesses who are employed by Japan Synthetic Rubber Co. Ltd. would not be willing to come to Australia; there is no procedure to compel their attendance and he believes that there is no way of obtaining their co-operation. He made a similar inquiry from Namoru Ishihara as to witnesses who were employed by Mitsubishi Shoji Kaisha Ltd. and later was informed by his agents that Ishihara had told them that his company would not permit him to give evidence because its policy was not to become involved in litigation between its own customers. There was no evidence that any witness had been directly requested to come to Australia and had refused, or that any endeavour had been made to persuade or to induce witnesses to come to Australia. It is certainly not true that in every case an employee will decline to make himself available as a witness simply because his employer is not co-operative, but it seems to me that a witness who is employed in Japan will be unlikely to come voluntarily to Australia as a witness if his employer refuses to grant him leave to do so. An unco-operative employer could face his employee with the choice of remaining in Japan or absenting himself from Japan and losing his employment, and an employee faced with such a choice would probably choose the former alternative. Moreover, it is suggested by the very nature of the issues that the witnesses might not be able to give useful evidence without refreshing their memory from records, so that the employer by refusing to make the records available could render the testimony of the witnesses valueless. I conclude on the probabilities that the attendance of the witnesses in Australia and the production of necessary documents here cannot be procured.

I am therefore satisfied that there are witnesses out of the jurisdiction of the Court whose evidence is material and whose attendance within the jurisdiction cannot be procured. The question that then arises is whether the issue of the letter of request would cause such injustice to the applicant that it ought to be revoked. The applicant submitted that this question ought to be answered in the affirmative for a number of reasons. First it was said that the procedure that would be followed in Japan is significantly different from that which is observed in Australia and that because of this difference the evidence could not be conveniently taken or properly tested in Japan. According to the Japanese attorney consulted by the applicant, a letter of request not made under a treaty or convention is extremely rare in Japan and it is uncertain whether in acting on the request the District Court would apply the Code of Civil Procedure, which is generally applicable to litigation in civil matters in Japan, and the Civil Procedure Regulations which have been made by the Supreme Court in aid of the Code, or the older so-called "mandatory" system of Japanese law under which the examination of the witnesses would be conducted only by the judge and no cross-examination would be permitted. The Japanese attorneys consulted by the respondent, on the other hand, had no doubt that the District Court in taking evidence pursuant to the letter of request would apply the provisions of the Code and the Regulations, and to the knowledge of one of those attorneys the District Court has in practice applied those provisions in many cases in which letters of request have been issued by countries with whom no treaty or convention exists. I have no hesitation in accepting this evidence that the Japanese court would apply its current procedural rules rather than the apparently archaic system which they supersede. Under the current Japanese law the course of procedure resembles that in common law countries, upon which it is no doubt modelled, and provides for examination-in-chief, cross-examination and re-examination to be conducted by counsel (see art. 294 of the Code and reg. 33). However, counsel for the applicant submitted that even if the Code of Civil Procedure and Regulations were applied, the rights of the applicant to test by cross-examination the evidence given by witnesses in Japan would be more limited than if the examination were conducted in Australia. Three matters in particular were relied upon in this submission. Under reg. 35, which apparently applies to cross-examination as well as to examination-in-chief, a judge has power to "restrict" any question if he deems it to be not proper as being, inter alia, a leading question. Therefore, it was said, the normal right, as we consider it, to ask leading questions in cross-examination may be denied by the Japanese judge. However, the evidence shows that in Japan during cross-examination, when the witness is not being asked about new subject matter, but is being pressed to alter a previous answer given in examination-in-chief, the practice is not to prevent or disallow leading questions. In view of this evidence it does not seem likely that the Japanese court would wish to exercise its discretionary power to exclude leading questions in cross-examination. Under reg. 34 (2) the judge has power to "restrict" any question put in cross-examination if he deems it to be not proper as being one relating to matters other than "the matters that have been revealed in the examination-in-chief, the matters relevant thereto and the matters relating to the credibility of the witness". Therefore it seems that the Japanese court could refuse to allow cross-examination directed to issues in the action which had not been dealt with by the witness during his examination-in-chief, and if it exercised that power the scope of the cross-examination would be narrower than that in our courts. However, if this power were exercised it would not seem to me to result in any injustice to the applicant. The exercise of the power would of course not prevent the applicant from fully testing in cross-examination any evidence led by the respondent. If the applicant wished to elicit from a witness called by the respondent evidence on a matter which had not been at all touched upon in examination-in-chief, and if the judge refused to allow questions on that matter to be put, it would be open to the applicant to make application for a supplementary letter of request, but I do not regard such a situation as likely to arise. Under art. 33 the judge has power to examine witnesses for himself. However, the respondent's evidence shows, as I should have expected, that in practice in Japan this power is exercised carefully and judicially and it is not likely that the judge would wish to take over for himself the examination of witnesses in a manner that would prevent their testimony from being properly tested. I conclude that on an examination conducted in Japan the rights of the parties would not be so different from those under our law as to provide any reason to revoke the letter of request.

It was further submitted that, quite apart from any suggested differences between the procedure in Japan and that in this country, the applicant would be caused injustice if it were obliged to arrange for the cross-examination of the witnesses in Japan. It was said that the questions as to which evidence is likely to be led are scientific questions of considerable difficulty, and that it would be impossible for counsel properly to test that evidence without having at his side experts who could advise him while the cross-examination was proceeding. Since the applicant's experts have no knowledge of the Japanese language, and the cross-examination would have to be conducted by Japanese counsel, it was submitted that the applicant would be placed under a grave disadvantage if the examination were conducted in Japan. It was said that translation facilities would not be available during the course of the proceedings and that this would increase the applicant's difficulty. Finally it was submitted that, in the circumstances of this case, to conduct the examination in Japan would involve the applicant in enormous additional expenditure of costs.

The difficulties involved in the cross-examination of witnesses in Japan on this technical subject matter will be real, but in my opinion not insuperable. The scope of the examination will be limited, and no doubt the court in settling the questionnaire can take steps to prevent those limits being exceeded. It should not be impossible to arrange for the attorneys in Japan to receive proper expert assistance in one way or another. The costs no doubt will be considerable but in a case of this kind they would still be considerable even if the witnesses were brought to Australia. On the whole, I have not been satisfied that to hold the examination in Japan would cause injustice to the applicant.

It was further submitted on behalf of the applicant that in the circumstances the letter of request might have the result that a mass of inadmissible evidence, especially documentary evidence, would be received in the course of the examination. In my opinion, however, as I shall later mention, the effect of the order is that evidence taken in Japan pursuant to the letter of request will only be admissible at the trial if it answers the tests of admissibility under the law of the State where the trial is conducted.

After careful consideration of all the considerations advanced on behalf of the applicant, I have not been satisfied that it would cause injustice to the applicant to hold the examination in Japan.

Finally the applicant contended that the respondent in making its application to the Chief Justice was guilty of a want of frankness. Some of the many particulars given in support of this charge do not in my opinion warrant separate discussion but I shall deal with the most important of them. It was said that to make the application ex parte itself demonstrated a want of frankness. I incline to the view that an application for the issue of a letter of request should ordinarily be made on notice (see O. 51, r. 5) and this seems to be the usual practice in England (see Supreme Court Practice 1970, par. 39/9-3/5; Daniell's Chancery Practice, 8th ed., p. 557; Chitty's Queen's Bench Forms, 20th ed., form 615; and Bidder v. Bridges [1] ), but I find it impossible to hold that the very fact that the application was made ex parte is evidence of a lack of frankness, particularly when it was known from the outset that the request would not be given effect before a questionnaire was sent to Japan, and the applicant was informed of the making of the order before the questionnaire was prepared. Then various criticisms, some of them justifiable, were made of Mr. Pond's affidavit which the respondent used to support its application to the Chief Justice. The most serious of these criticisms were the following. The statement in Mr. Pond's affidavit that inquiries in Japan indicated that none of the witnesses is willing to come to Australia nor are any of them willing to make any statements on the matter suggests that the witnesses were approached and declined either to come to Australia or to make statements, whereas, as I have already discussed, this was not the case. Mr. Pond's affidavit does not reveal the rather skimpy information upon which, as appeared from Mr. Dowling's affidavits, the respondent reached the conclusion that the witnesses named in Mr. Pond's affidavit could give material evidence and he did not state that some of those witnesses were required only to give evidence as to the identity of other employees. Mr. Pond's affidavit in one place suggests that the application to the Chief Justice was made necessary because of the refusal of my brother Menzies to accede to an application made by the respondent for further answers to interrogatories, whereas it does not appear that if these further answers had been obtained they would have provided the material evidence which it is now sought to obtain in Japan. These criticisms cannot be lightly dismissed, because it is clear that a party who seeks an order without first giving notice of his application to his opponent should be at pains to state fully, fairly and accurately the facts relevant to the question whether the order should be made. Moreover, this was not a case in which the exigencies of the situation required the making of an urgent application with little time to prepare the material in support of it. However, it does not appear to me that there was the least intention deliberately to mislead the Chief Justice or to refrain from stating the circumstances fully and fairly to him. The most that can be said is that Mr. Pond's affidavit was not prepared with the scrupulous care and precision that ought to be shown by those endeavouring to make out a case for an ex parte order. I have reached the conclusion, without any hesitation, that the respondent was not guilty of a deliberate failure to make full and fair disclosure and although the fact that a failure was unintentional does not necessarily excuse it, in my opinion, in the circumstances of the present case, where the parties have availed themselves of the opportunity to place before me all the evidence that appeared to them to be relevant to the present application, it would not be just, but would merely conduce to a multiplication of costs, to set aside the order of the Chief Justice and require the respondent to apply again de novo.

The final matter relied on by the applicant, in conjunction with its submission that the respondent was guilty of a want of frankness, was that it appeared that the respondent must have possession of relevant documents which were not disclosed on discovery. Failure to make proper discovery is of course a very serious matter, but in the present case the applicant has no more than a suspicion, which is unsupported by any proof, that proper discovery was not made. Put shortly, it appears that the respondent was involved in a dispute with Bridgestone Tire Co. Ltd. and some Japanese tyre manufacturers in relation to the respondent's patents and that the parties to this dispute engaged in a correspondence in the course of which the Japanese tyre manufacturers acknowledged to the respondent that they could ascertain the "computed Mooney" values as referred to in certain agreements. Mr. Kewley stated in one of his affidavits that he was informed and believed that the respondent has in its possession documents relating to the dispute between the Japanese companies and the respondent and that such documents, if relevant, would not be admissible in Australia but that such documents might be admitted in evidence in Japan. In reply to this affidavit Mr. Dowling stated that the respondent's legal advisers in Australia are not at present aware of any such documents but further submitted that the fact that any such documents might be admitted in Japan would cause no prejudice to the applicant since in the proceedings in Australia the question would be whether they had been proved in a manner making them admissible according to Australian law. These passages in the affidavits were directed mainly to the question whether prejudice would result to the applicant by reason of the admission in Japan of documents that would be inadmissible in Australia rather than to the question whether the respondent had been guilty of a breach of its duty to make proper discovery, and this may explain why the respondent did not make further inquiries outside Australia as to the existence of any documents that had not been but should have been disclosed. However, the evidence does not establish that the respondent has failed in its duty to make discovery of all material documents.

For the reasons given I consider that I ought not to exercise my discretion adversely to the respondent which, as I have held, has shown that there are witnesses in Japan who can give material evidence and whose attendance in Australia cannot be procured.

I therefore hold that the order that a letter of request should issue ought to stand. However, it remains to consider certain submissions of the applicant that the order, and the letter of request, should be varied in certain respects.

The applicant attacked the provision in the order that the letter of request should contain a request to the Japanese court that in relation to the depositions to be taken, the procedure thereinafter set out in the order should be observed in so far as the same might be permitted under Japanese law, but that in so far as such procedure might not be permitted under Japanese law the court be requested to record its ruling in that regard. It was submitted that the Japanese court would be unlikely to follow the procedure suggested or to record its ruling that the procedure should not be followed. However, the procedure suggested is inherently sensible and fair; if the Japanese court does not follow it that will be the end of the matter, and if it does, neither party will have ground for complaint. Similarly, if the court does not record its ruling no harm will be done.

One part of the suggested procedure does, however, require special mention, namely par. (v) which provides:

that all objections made by either party whether as to the form or substance of any question or answer be made promptly after the asking of such question or the giving of such answer as the case may be and be fully recorded in the transcript of proceedings at the time of the making of the said objections. For the reasons I am about to give, I consider that a party should not be precluded from taking an objection at the trial in Australia by his failure to take the objection at the examination in Japan. However, that consequence is not brought about by par. (v) standing alone. That paragraph has the effect that a party who wishes to take an objection in Japan shall take it promptly, but the provision of the order that goes further and requires a party to take in Japan any objection that he may wish to raise at the trial is the following: AND IT IS FURTHER ORDERED that the parties in this action do make at the hearing before such tribunal all such objections whether as to the form or substance of said questions or answers as they may wish this Honourable Court to consider on the trial of this action. I can see the virtue of a provision designed to prevent a party who has ground to object from lying by at the examination and later raising his objection at the trial, particularly if the objection is simply as to a matter of form, but after full consideration of the arguments addressed to me, I have reached the conclusion that this requirement should not be imposed in the present case. At the examination in Japan the parties will doubtless be represented by Japanese attorneys, and, although Australian legal advisers may be present, the examination will be conducted in Japanese and it cannot be certain that there will be facilities for simultaneous translation into English. In this situation, a Japanese attorney may fail to take an objection that would be open under Australian, but not under Japanese, law and his Australian adviser might not be aware, until some time afterwards when he received a translation of the proceedings, that an opportunity to object had been allowed to slip by, and in my opinion it would not be right in those circumstances to preclude the party concerned from taking the objection at the trial. I would vary the order by deleting this provision.

The order further provides that the evidence taken pursuant to the letter of request may be given in evidence at the trial of the action "saving all just exceptions". In my opinion, these familiar words have the effect that only such of the evidence taken on the examination in Japan as answers the tests of admissibility in Australia will be admissible at the trial. The applicant asked me to impose a further condition (similar to that imposed in Nadin v. Bassett [1] ) that the evidence taken on the examination ought not to be admitted if the applicant required the witnesses to appear at the trial for examination and cross-examination. I can see no justification for including such a condition, which would negate the letter of request. However, I think it desirable, out of an abundance of caution, to give the Justice at the trial a discretion to exclude any of the material taken on the examination if it seems just to him to do so. In the absence of such a provision, the Justice conducting the trial might be obliged to admit all evidence taken pursuant to the letter of request which answered the tests of admissibility, even though it appeared unfair to receive it.

The order provides that the costs of the application and of the letter of request and the examination should be costs in the cause. This is a common provision, but in my opinion in the present case the costs should be reserved. The examination in Japan may prove to be abortive, and the very considerable costs involved may prove to have been wasted, and for this, or some other reason, the Justice at the trial may think that the respondent should pay the costs of the application, the letter of request and the examination even if the respondent succeeds in the action. Similar considerations lead me to the view that I should impose on the respondent a condition, similar to that in Langen v. Tate [2] , that before proceeding further under the order the respondent should give security for the applicant's costs occasioned by the issue of the letter of request.

I turn now to the letter of request itself. The letter requests the Japanese court to summon the named witnesses "and such other witnesses as the agents of the said plaintiff and the said defendant shall humbly request you in writing so to summon". Form 46 of the 1st Sch. to the Rules contemplates that these words may be included in a letter of request, but in the present case they go beyond the order of the Chief Justice, which was for the examination of the named witnesses and such other officers or employees resident in the empire of Japan of Japan Synthetic Rubber Co. Ltd. and Mitsubishi Shoji Kaisha Ltd., as can give material evidence. However, I see no necessity to order that the letter of request be recalled and a fresh letter of request issued. If on the examination in Japan evidence were taken from persons other than employees of the companies mentioned, the Justice at the trial would have the power, if not the duty, to reject it.

The applicant submitted that the respondent should be required to frame written interrogatories for the examination of the witnesses, but in my opinion it would be undesirable to restrict the examination in that way. In a complicated case such as the present - and indeed in many cases - an examination of witnesses could not properly be conducted except viva voce. The questionnaire which must now be settled will set out the topics on which the witnesses are to be examined and ought to be such as to give the applicant a full and fair opportunity to prepare for the cross-examination of witnesses in Japan, and at the same time should prevent the examination from developing into a mere fishing expedition.

The applicant complained of inaccuracies in the Japanese translation of the letter of request, but it was not established that these were sufficiently substantial to warrant its recall.

I shall order that the order of the Chief Justice be varied accordingly. The costs of and incidental to this application ought in my opinion to be reserved.

In my opinion it was proper for this Court to order that a letter of request should issue as sought by the summons taken out by the respondent and therefore that Gibbs J. was correct in dismissing the motion which the appellant brought to have the order set aside.

I agree with the reasons about to be published by Walsh J. I also agree that the form of order he proposes should be made on the present appeal.

The respondent is the plaintiff in an action for infringement of a patent. The defendant has denied infringement and has alleged that the letters patent to which the action relates and every claim thereof were invalid.

On 5th March 1971 a summons was taken out on behalf of the respondent seeking an order that a letter of request should issue for the examination in Japan before the proper tribunal of certain named persons and such other officers and employees (resident in Japan) of two named companies who might be able, of their own knowledge or from records of those companies, to give evidence material to the proper conduct of the action on behalf of the plaintiff, at Tokyo or such other places in Japan as might be thought proper. The summons was not served. An order was made ex parte in the terms sought in the summons, with the addition of certain further orders.

By notice of motion filed on 10th November 1971, the appellant sought orders setting aside or discharging or alternatively varying or modifying the aforesaid order. This application was contested and, after a lengthy hearing in which further affidavit evidence on behalf of both parties was placed before the Court, Gibbs J. made an order on 17th April 1972, by which he varied the earlier order in certain respects. This is an appeal from the order of Gibbs J.

Before this Court the appellant has advanced detailed reasons for its contention that no order for the issue of a letter of request should have been made or should now be made upon the evidence placed before the Court. These submissions may be stated in general terms in the following propositions: (1) The respondent failed to establish that any of the witnesses, whose evidence it sought to have taken in Japan, would be able to give evidence material to any issue to be tried in the action; (2) The respondent failed to establish that the attendance of the witnesses in this country to give evidence could not be procured; (3) The taking of the evidence in Japan would present such serious difficulties, in relation to the testing of the evidence and otherwise, that it would be unjust to the appellant to make any order providing for the examination in that country of any of the witnesses; and (4) In the ex parte application there was a lack of the full and frank disclosure of relevant matters required in such applications and on that ground the ex parte order should have been discharged.

Some of these submissions for the appellant will need to be stated in more detail. But I do not regard it as necessary or desirable in dealing with this appeal to examine every step in the various submissions made to the Court or to express conclusions upon all the opposing contentions raised respectively by counsel for the appellant and for the respondent as to the meaning, the effect and the weight of various portions of the affidavit evidence.

Before dealing with the grounds upon which the order of Gibbs J. is challenged, it is necessary to refer to one matter which has a bearing upon the manner in which the Court should deal with the appeal. During the hearing and, in particular, when certain practical problems relating to the taking of evidence in Japan were discussed and submissions were put forward as to provisions that the Court might think fit to include in its order, for the purpose of reducing so far as possible the difficulties which the appellant claimed would confront it, it was suggested that the parties might be able to come to some agreement concerning the details of the provisions of the order that should be made, if the Court should decide that the existing letter of request should stand or that a new letter or letters of request should issue. It was suggested, also, that having regard to submissions made on behalf of the appellant that the respondent was not entitled in any event to have an order referring in general terms to the taking of evidence "material to the proper conduct of this action", without having specified the topics to which the examination of each of the witnesses was to be directed, an agreement might be reached as to the terms of questionnaires, which might be annexures to a letter of request. Subsequently, the Court was informed that agreement had been reached by the parties on the form which the order, the letters of request and the attached questionnaires should take, in the event that the Court should decide that there should be a letter of request. In a document dated 13th February 1973, in which learned counsel for the appellant put forward certain further submissions, the following statement was included as part of a paragraph with which learned counsel for the respondent were stated to have agreed:

However, the parties have now agreed that if the Court rejects the appellant's principal submission that no letter of request should stand or issue, the Order to be made and the letters of request to be issued and the questionnaires to be annexed should be in the form of draft documents which have been agreed between the parties. This agreement is without prejudice to the appellant's said principal submission which it maintains and without prejudice to the rights (if any) of the appellant to maintain hereafter whether on appeal or otherwise that no letter of request should have issued and no letter of request should stand.

In the same document counsel for the appellant stressed that the agreement as to matters of form was not intended to prejudice or affect in any way any part of its said principal submission, although the documents, to the form of which the appellant had conditionally agreed, might contain matter logically inconsistent with that principal submission.

The consideration of the first and the third headings of the appellant's argument as set out above will require an account of some of the matters said to be in issue between the parties. But it is possible to dispose of the second and the fourth of the submissions for the appellant before making any further reference to the issues in the action. With those submissions I proceed to deal.

It was argued that the respondent was bound to establish, but had not established, that the proposed witnesses would not come voluntarily to Australia to give evidence at the trial of the action. I accept the submission that as a general rule the applicant for an order for the issue of a letter of request should establish that he cannot procure the attendance of the witnesses: See Willis v. Trequair [1] . But, in my opinion, my brother Gibbs was not in error in making a finding that "on the probabilities" the attendance here of the witnesses and the production of necessary documents could not be procured. As his Honour pointed out, there was no evidence of a direct request to any of the witnesses to come to Australia. But there was evidence that the company which employed most of the proposed witnesses and which (so it is claimed by the respondent) possesses records to which reference will need to be made by the witnesses "would not co-operate" and that another company, employing one named witness, "would not permit him to give evidence". On that material his Honour was entitled, in my opinion, to make the finding to which I have referred.

As to the argument concerning a lack of frankness in making the ex parte application, it is not suggested that there was any deliberate deception or concealment of material facts. Gibbs J. referred to criticisms which were made of the affidavit filed in support of the original application, and he said that some of them were justifiable and that they could not be lightly dismissed. But his Honour concluded that as the parties had availed themselves of the opportunity to place before him all the evidence that appeared to them to be relevant, it would not be just, but would merely conduce to a multiplication of costs, to set aside the ex parte order and to require the respondent to make a fresh application. I agree entirely with that conclusion and I am of opinion that in the circumstances it would be quite wrong to hold on this ground that the appeal should be allowed and that the order as varied by Gibbs J. should be set aside.

I turn to a consideration of the first ground of challenge to the order of Gibbs J. The argument dealt in considerable detail with the descriptive provisions of the complete specification of the invention and with some of the claims therein made. Some parts of the specification, including claim 2 therein, are set out in the judgment of Gibbs J. which contains, also, a statement of facts relating to the question of the materiality of the evidence which the respondent seeks to obtain. I have used his Honour's statement as the basis for the following account of the nature of the case which the respondent asserts that it will seek to make against the appellant at the trial.

The invention was described in the specification as "Manufacture of a plasticised polymerical diolefinic compound suitable for tires". The respondent alleges that the appellant sold in Australia a particular tyre which was made by it in Australia between 1st June 1965 and 12th July 1965 and that in its manufacture there was used a synthetic rubber masterbatch from a range of masterbatches called JSR 1712, bought from a supplier in Australia, named Mitsubishi (Aust.) Pty. Ltd. The respondent believes that the masterbatch was manufactured and marketed by Japan Synthetic Rubber Co. Ltd. In making the masterbatches JSR 1712 a polymerization product was used.

Several of the claims in the specification are claims for a method of making a rubber compound suitable for a rubber tyre in which a polymerization product is mixed with "a compatible plasticizer". In the specification it is asserted that it was found in accordance with the invention that "the tough rubbers which were considered unprocessable and not suitable for making extruded tire treads in production may be mixed with relatively large amounts of one or more compatible oils or plasticizers to provide compounds of exceptional quality". It appears that an important feature of what is claimed is that the methods described for making a rubber compound make possible the use of tougher rubbers than those which could formerly be used, with resultant advantages, both as to quality and as to cost.

I have stated that the various claims referring to a method of making a rubber compound provide for the use of a polymerization product. The claims require that this product must have certain specified characteristics, one of which is (according to claim 2, to which particular attention was directed in the argument, and according also, to other claims) that it must be a polymerization product "having a "computed Mooney" plasticity of at least 90". In certain circumstances the toughness of a polymer may be measured by using a "Mooney Plastometer". But if what is being measured has a substantial gel content, or if it is so tough that it would have a Mooney reading of about 120 or more, the Mooney reading will not be reliable. The specification claims that the inventor developed the term "computed Mooney" in the way explained in the following paragraph, which refers to a fig. 2, attached to the specification. The paragraph reads:

We have found that in any given polymer modified so as to have substantially no gel, the amount of oil required to obtain a given compounded plasticity varies directly with the Mooney plasticity and directly with the intrinsic viscosity. Thus, there is a substantially straight line relationship between the amount of a given oily plasticizer required to obtain a given compounded Mooney and the raw Mooney reading providing a given carbon black such as a fine reinforcing furnace black for example "Philblack O" (a structural type of fine high abrasion furnace black of the Phillips Petroleum Company) is utilized and the amount of the carbon black is equal to a given percentage of the total weight of rubber plus oily plasticizer say 50 per cent of the total of these two materials. We have also found that the compounded Mooney of a given polymer varies in approximately a straight line relationship with the amount of a given oily plasticizer contained therein. If, therefore, the polymers are of a non-gel type, and vary only by molecular weight as indicated by intrinsic viscosity measurements, then the curves obtained by plotting parts of oil necessary to obtain a given compounded Mooney (CML-4′) versus measured raw Mooney of the polymer are approximately parallel lines especially when the accuracy of duplication and measurement is considered. We have made use of this fact as hereinafter further explained to develop the term "computed Mooney" which applies to all synthetic rubbery polymeric materials, regardless of how they are obtained. The "computed Mooney" of a gel-containing polymer is the true Mooney of an equivalent of a gel free polymer. In Figure 2 calculated or "computed Mooney" is plotted versus parts of oil (Sundex 53) required in the various gel free polymers to obtain compounded Mooney values of approximately 40, 60, and 80 as shown by lines C, B, and A with a short mixing cycle of not more than 12 minutes as hereinafter described. The computed Mooney and the measured raw Mooney are the same within accuracy of measurement at the lower values, i.e., below 120 for these gel free polymers. The quoted paragraph is followed in the specification by further details relating to Mooney values and to the manner in which the "computed Mooney" of a given polymer may be ascertained by using the graphs set out in fig. 2. See the extract from the specification quoted in the judgment of Gibbs J. [1] . 1. Ante, pp. 530-531.

It will be part of the case for the respondent that in the manufacture of the masterbatch, bought by the appellant and used in the making of the tyre, a polymerization product was used which had a "computed Mooney" plasticity of at least 90. It is claimed by the respondent that one or more of the witnesses associated with the Japan Synthetic Rubber Co. Ltd. will probably be able to provide evidence (with the aid of records kept by that company) as to the raw Mooney values of the polymer used. Before Gibbs J. and before this Court, it was stated on behalf of the respondent that the primary object of the examination of the witnesses in Japan is to obtain evidence on that subject, together with evidence tracing the history of the compound or oil masterbatch from the time when it was manufactured by the Japan Synthetic Rubber Co. Ltd. to the time when it was received by the appellant. It has not been conceded by the respondent that there are no other matters in dispute in the action upon which material evidence may be obtained from the witnesses in Japan and there has been some debate in this Court as to whether certain issues of fact have or have not been removed from the area of dispute by means of admissions. But assuming that the respondent succeeds in its claim, namely, that evidence of the kind which primarily it seeks to obtain can probably be obtained from one or more of the witnesses and that that evidence is material, there will be no need in the present proceedings to pursue the question whether or not there are other matters in dispute upon which material evidence may be obtained. On the assumption which I have mentioned, a need to decide that question, in order to limit the scope of the examination of the witnesses, would have existed if the Court had decided that the order should be confined specifically to those matters which were in its view shown to be material and if no agreement had been reached as to the form of the order. But that need has been removed by the agreement of the parties to which I referred above.

It was submitted for the appellant that it had not been shown that any evidence of raw Mooney readings relating to the polymerization product used in the manufacture of the JSR masterbatches subsequently sold to the appellant was likely to be obtained from any of the witnesses whom the respondent wants to examine or from any records kept by the Japanese company. This matter is dealt with at considerable length in the judgment of Gibbs J. [1] . Notwithstanding the criticisms to which his Honour's reasons were subjected and notwithstanding the arguments by which the appellant sought to demonstrate the unlikelihood of any relevant raw Mooney measurements having been made, I am not persuaded that his Honour was wrong in concluding that the evidence sufficiently establishes that Japan Synthetic Rubber Co. Ltd. kept records of its compounding procedures and that those records, if available, will probably disclose the raw Mooney values of the polymer used in making the masterbatches JSR 1712; and (2) that it is probable that some officers and employees of the Japan Synthetic Rubber Co. Ltd., who were concerned in the compounding of JSR 1712, could by reference to that company's records give evidence that would serve to establish the raw Mooney values of the polymer.

It must be kept in mind that this is not the appropriate time for the Court to reach positive conclusions as to technical questions of fact involved in the matter now under consideration, for example, the question whether, if the relevant data in the patent are correct, the raw polymer used in the JSR range of masterbatches had a "computed Mooney" viscosity of less than ninety. The Court is concerned only to consider whether or not there is really a question to be tried: See Willis v. Trequair [2] .

It was argued that in an application to examine witnesses abroad it is not sufficient to show that it is probable that the witnesses will give material evidence but it must be shown that this is certain or almost certain. I do not accept that proposition. It was supported by references to a dictum in the case of Lane v. Bagshaw [3] and to the subsequent citation of that dictum in New Zealand Towel Supply and Laundry Ltd. v. N.Z. Tri-Cleaning Co. Ltd. [4] . No reason was given in those cases or in argument for requiring, at this or at any other stage of a civil proceeding, a degree of proof higher than that of probability.

1. (1855) 16 C.B. 576, at p. 579 [139 E.R. 885, at p. 886]. 2. [1935] N.Z.L.R. 204, at p. 223.

I am of opinion that a further submission that a great deal of the hearsay evidence upon which the respondent relied was not admissible in accordance with O. 39, r. 3 of the Rules of this Court or at all should not be accepted. Some of the evidence would have had greater weight if the "sources and grounds" of the deponent's information and belief had been stated more specifically but, in my opinion, the defects in the form of the evidence did not render it inadmissible.

Next it was said that the Court can never be justified in making an order for the taking of evidence abroad unless it is established, in relation to one proposed witness at least, that that witness will be able to give material evidence. It was said that although an applicant who has identified such a witness has been granted in some cases an order permitting the examination of some other witness or witnesses, as well as the witness shown to be able to give material evidence, there is no authority warranting the granting of an order to examine a number of witnesses on the basis that some one or more of them will probably be able to give the required evidence, where the applicant is unable to identify one of them as being likely to be able to do so. On this point I am of opinion that the Court is not bound to act and ought not to act upon a rigid rule. No doubt in many cases where an applicant cannot specify a particular person as one who is likely to be a material witness, the Court will decline to make an order, in accordance with the approach indicated in cases in which it has been stated that the Court will not grant to an applicant "a roving commission". But it would be wrong to lay down an absolute rule applicable in all cases. The circumstances of each case must be considered and the ultimate question is whether having regard to the interests of the parties justice will be better served by granting or by refusing an order: see Coch v. Allcock [1] . I am of opinion that we should not treat as necessarily fatal to the success of the application the inability of the respondent to point specifically to one or more of the employees of Japan Synthetic Rubber Co. Ltd. as being the employee or employees having the requisite knowledge of the facts. I am of opinion, also, that in the circumstances of the case, Gibbs J. was not in error in concluding that it was proper to make an order, notwithstanding that the respondent had not shown which of the employees would be able to give the required evidence.

The appellant has contended that it does not appear that the measured raw Mooney values of the polymer used in the JSR masterbatches, even if evidence of those values could be obtained, would be relevant in an attempt by the respondent to prove that (in terms of claim 2 of the specification) the polymerization product had a "computed Mooney" plasticity of at least ninety. On the other hand, the respondent has submitted that evidence of the raw Mooney values would be relevant to that question. On this matter the respondent relies on the statement in the last sentence of that part of the specification which I have quoted above, that is, the statement that at the lower values, i.e., "below 120 for these gel free polymers", the "computed Mooney" and the measured raw Mooney are the same within accuracy of measurement. If the correctness of that statement can be established at the trial, I think it is plain that evidence of the raw Mooney values will be relevant, provided that these are values below 120 and it is shown that they relate to gel free polymers. The evidence will be relevant, independently of the question of construction discussed in the judgment of Gibbs J., that is, the question whether the statement as to the substantial correspondence, in certain circumstances, between the measured raw Mooney and the "computed Mooney" forms part of the definition, for the purposes of the specification, of the term "computed Mooney". The appellant contends, however, that the statement is in fact erroneous and that there is no evidence that it is correct. As part of that argument it is said that the statement is shown to be erroneous by the contents of an article published by the inventors of the patent (Ex. K12). In developing the argument there was much discussion of technical features of the manufacturing processes involved. It may be that these are matters which will need to be investigated in detail at the trial of the action. But they cannot be investigated in any useful way in the present proceedings. It was argued for the respondent that the "computed Mooney", although it is obtained by the process of calculation explained in the specification and not by a direct measurement on an instrument, is a measure of the actual toughness of the rubber used and it will, therefore, correspond to the Mooney value of the polymer as measured by the Plastometer, in cases in which accurate results are obtainable by the use of that instrument. There was evidence to indicate that in test batches, the measured Mooney was found, in tests made by Japan Synthetic Rubber Co. Ltd., to be always over ninety and it was submitted that this, if established, will indicate that the actual toughness of the rubber was at least ninety. Whilst in my opinion it would be difficult to maintain that as a matter of construction claim 2 (and other like claims) may be read in the sense that the "computed Mooney" plasticity has the same meaning in certain circumstances as "true toughness" as measured by the Plastometer, I do not dissent from the view expressed by Gibbs J. that the question of construction ought not to be determined in an application of this kind. But whether or not the construction suggested by the respondent's argument is regarded as untenable, if there is in fact a correspondence in certain circumstances between the Mooney figures obtained by measurement and the figures obtained by the specified method of calculation of the "computed Mooney" values, the former figures will be relevant, if those circumstances exist, to the proof of the latter figures. It is strongly disputed that this correspondence exists. But its existence is asserted as a fact in the specification of the patent to which the action relates. That being so, I think that we ought not to decide that because it has not yet been established that that assertion is correct, this application has to be determined on the basis that it is not correct. I am of opinion, therefore, that we should not treat the submissions for the appellant now being considered as requiring a decision that no order for the issue of a letter of request should have been made.

It was submitted that justice could not be done to the appellant in its conduct of the action if the proposed examination of witnesses in Japan were to be permitted and that on this ground we should hold that no order should have been made. It was said that in many ways the appellant would have great difficulty in dealing with the evidence and in testing it, both as to the scientific matters to which it would relate and as to the credit of the witnesses. The examination would be conducted in accordance with Japanese law and procedure. To the extent, if any, to which cross-examination would be permitted, there would be a language barrier, creating a problem likely to be accentuated by an inability to obtain translations of the evidence and to have the necessary time and opportunity to obtain adequate instructions from expert advisers for the purposes of cross-examination. Furthermore, it was said, the appellant would have little, if any, chance to exercise in relation to these witnesses the right, which is ordinarily available to a defendant in an infringement action where invalidity has been alleged, to cross-examine upon matters relevant to invalidity the witnesses called by the plaintiff to establish infringement.

The difficulties to which the appellant's detailed submissions referred are not, I think, unreal or trivial, although they may not be so great as the submissions suggested. But having considered them, I cannot accept the ultimate submission that because of them no letter of request ought to be issued. The decision of Gibbs J. on this aspect of the matter was essentially of a discretionary character. It ought not to be set aside except in accordance with the well-established rules as to the circumstances in which an appellate court will interfere with a discretionary judgment. In my opinion, the appellant has not shown any sufficient ground for interfering with it. Furthermore, the difficulties will probably be reduced, although not entirely removed, by the inclusion in the letter of request of particular provisions designed to obtain improved facilities for the conduct on behalf of the appellant of the cross-examination of the witnesses. The provisions having this object, which are contained in the documents upon which the parties had agreed, will probably be of considerable assistance to the appellant. If the parties had not so agreed, it would have been proper, in my opinion, for the Court to include such provisions of this kind as seemed to it to be appropriate. But, in my opinion, it would not have been right to treat the existence of the difficulties to which the appellant referred as requiring the Court to refuse to make any order at all.

For the reasons stated I am of opinion that the submission that there should be no order should be rejected. Having reached that conclusion, I am of opinion that an order should be made in the form that has been proposed by the parties. I think that the Court should act upon the suggestion contained in the joint memorandum submitted to the Court (dated 16th February 1973) that there should be a request for the recall of the existing letter of request and that a new letter of request should be sent, this being a more convenient way of dealing with the matter than would be an attempt to amend the existing letter of request.

I have had the advantage of reading the reasons for judgment of my brother Walsh and I agree that a letter of request should issue in the terms and conforming to the procedure therein proposed.

I have had the advantage of reading the reasons for judgment prepared by Walsh J. I agree that for those reasons the appellant's submission that there should be no order for the issue of letters of request should be rejected. I also agree that an order should be made in the form now proposed by the parties.

In conformity with the judgment and order of the full Court it was ordered that the order of Barwick C.J. dated 9th June 1971 and the order of Gibbs J. dated 17th April 1972 be vacated and that in lieu thereof it be ordered as follows: