Hill & Smith Holdings PLC v Safe Barriers Pty Ltd

Federal Court of Australia|2018-11-27|Before: Robertson J

By 15 February 2019, the applicants give general discovery by providing to the respondent electronic copies of the following documents (except documents over which a claim for privilege is made), limited by the concept of reasonable search in rr 20.14(3)(b) and (c) of the Federal Court Rules 2011 (Cth): Documents supplied by testing laboratories dated before 17 September 2011 that show whether the applicants' Zoneguard crash barrier beams did or did not operate so that, in the event of a vehicle impact, the gradient of the impact wall and the inwardly and outwardly stepped deflections assisted in redirecting an impacting vehicle wheel back towards the road away from the barrier.
The respondent's interlocutory application filed on 6 November 2018 be otherwise dismissed.
Costs reserved.
Liberty to apply on three days' notice. Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.

Introduction 1 These proceedings concern road safety crash barriers the subject of Australian Patent No. 2007323210 (the 210 Patent) entitled "Crash barrier beam". The applicants claim an order restraining the respondent from infringing or threatening to infringe the 210 Patent. It is claimed that the respondent, by its acts in relation to its range of three temporary road safety barrier products (the Defender Barrier Products), threatened to infringe or has infringed each of the essential integers of, at least, claim 1 of the 210 Patent. 2 Claim 1 is in the following terms: 1. A crash barrier beam suitable for use on a road as a temporary road safety barrier, the crash barrier beam comprising: a base for contact with the road, the base being generally flat or inclined at a small angle to the horizontal; an impact wall comprising a lower wall section and an upper wall section; and a top section with a box-like cross section, the impact wall extending generally upwardly at a steep angle from the base to taper towards the top section, wherein the impact wall has an inwardly directed stepped deflection running along the length of the beam between the lower wall section and the upper wall section, and an outwardly directed stepped deflection running along the length of the beam where the impact wall meets the top section, the inwardly and outwardly stepped deflections being shallow with respect to the horizontal, and wherein the base, the impact wall and the top section are formed from a single sheet of material or from a pair of opposing mirror image sheets of material joined at the top section to provide a continuous impact surface to an impacting vehicle and, in the event of a vehicle impact, the gradient of the impact wall and the inwardly and outwardly stepped deflections assist in redirecting an impacting vehicle wheel back towards the road away from the barrier. (Emphasis added.) 3 The respondent has filed a cross-claim in which it claims a declaration that the 210 Patent is invalid or that claim 1 is invalid. The respondent has also filed particulars of invalidity alleging lack of novelty, lack of utility, lack of sufficiency, lack of fair basis and false suggestion or misrepresentation. The particulars of lack of utility and false suggestion are those relevant to the present application.

Application for discovery 4 By an interlocutory application filed on 6 November 2018, the respondent seeks orders that each of the applicants are to: a. give discovery of all documents in their control in the categories set out in 'Annexure A' to this application; and b. provide to each other party electronic copies of all discovered documents (except documents over which a claim for privilege is made). 5 Annexure A, in the narrower form that is MPB-8 to the second affidavit of Mr Burrows (see [7] below), is in the following terms: For the purpose of this order for discovery, the following definitions apply: 210 Patent means Australian Standard Patent No. 2007323210 entitled "Crash Barrier Beam" as referred to in paragraph 4 of the Statement of Claim. Statement of Claim means the Statement of Claim filed by the Applicants dated 6 July 2018. 1. All documents dated, or brought into existence, on or before 16 September 2011 that record or refer to testing, simulations or analysis (including finite element analysis) conducted by or for the Applicants, of crash barrier beams manufactured, sold or offered for sale by the Applicants referred to as "ZoneGuard". This category is limited to: (a) videos of, and data relating to, crash testing of ZoneGuard barriers; (b) reports referring to crash testing of ZoneGuard barriers which were assessed to pass by the testing laboratory, such reports to include: i. only post-impact photographs of the ZoneGuard barriers; and ii. only the finalised technical drawings (no drafts or revisions); and (c) notes, internal memoranda, emails and other documents that record or refer to any crash testing, crash testing simulations, or analysis of same, of ZoneGuard barriers. 2. All documents dated, or brought into existence, on or before 16 September 2011 that record or refer to any analysis, consideration or discussion of whether crash barrier beams manufactured, sold or offered for sale by the Applicants referred to as "ZoneGuard": (a) have the feature or integer that "in the event of a vehicle impact, the gradient of the impact wall and the inwardly and outwardly stepped deflections assist in redirecting an impacting vehicle wheel back towards the road away from the barrier"; or (b) attain this result promised for such crash barrier beams, that "in the event of a vehicle impact, the gradient of the impact wall and the inwardly and outwardly stepped deflections assist in redirecting an impacting vehicle wheel back towards the road away from the barrier". 6 The categories sought were further narrowed at the hearing of the interlocutory application this morning, by a document handed up by the respondent. The further narrowed grounds are as follows, marked up: 1. All documents dated, or brought into existence, on or before 16 September 2011 7 November 2013 that record or refer to testing, simulations or analysis (including finite element analysis) conducted by or for the Applicants, of crash barrier beams manufactured, sold or offered for sale by the Applicants referred to as "ZoneGuard". This category is limited to: (a) videos of, and data relating to, crash testing of ZoneGuard barriers; and (b) reports supplied by testing laboratories referring to crash testing of ZoneGuard barriers which were assessed to pass by the testing laboratory, such reports to include: i. only post-impact photographs of the ZoneGuard barriers; and ii. only the finalised technical drawings of the test setup (no drafts or revisions).; and (c) notes, internal memoranda, emails and other documents that record or refer to any crash testing, crash testing simulations, or analysis of same, of ZoneGuard barriers. 2. All documents emails and attachments thereto dated, or brought into existence, on or before 16 September 2011 that record or refer to any analysis, consideration or discussion of whether crash barrier beams manufactured, sold or offered for sale by the Applicants referred to as "ZoneGuard": (a) have the feature or integer that "in the event of a vehicle impact, the gradient of the impact wall and the inwardly and outwardly stepped deflections assist in redirecting an impacting vehicle wheel back towards the road away from the barrier"; or (b) attain this result promised for such crash barrier beams, that "in the event of a vehicle impact, the gradient of the impact wall and the inwardly and outwardly stepped deflections assist in redirecting an impacting vehicle wheel back towards the road away from the barrier". 7 The respondent relies on three affidavits sworn on 6, 16 and 26 November 2018, each by Mr Malcolm Peter Burrows. I took as read each of those affidavits, with the exception that I admitted paragraphs [5]-[7] of the third affidavit subject to relevance. 8 The first of those affidavits annexes correspondence between the solicitors for the parties between 12 October 2018 and 5 November 2018. In the course of that correspondence, certain categories of documents to be discovered by the applicants were agreed. On 6 November 2018, I made orders by consent in chambers requiring the applicants give discovery of those two categories as follows: 1. All documents that record or relate to the terms upon which the First Applicant licenses the Second Applicant to exploit the 210 Patent, including any exclusive licence granted by the First Applicant to the Second Applicant. 2. All documents that record or relate to communications between the Applicants (or either of them) or a representative or agent thereof, and the Commissioner of Patents, in relation to the application for and subsequent granting of the 210 Patent, including but not limited to: (i) written communications; (ii) notes of verbal communications; and (iii) recording of verbal communications. 9 In his second affidavit, Mr Burrows deposes to information provided to him by Mr Russell Hood, a director of the respondent who has held senior positions with subsidiaries of the first applicant, including the second applicant, and who was responsible for the certification of the applicants' barriers (including Zoneguard barriers) in Australia. Subsequently, he has been responsible for the certification of the respondent's barriers the subject of this proceeding. Mr Burrows deposes that Mr Hood has experience in obtaining crash testing reports and understands the documents that are prepared and received by a crash barrier company when it completes its testing. 10 Mr Burrows deposes, on information and belief, that: (a) The applicants do not conduct, and have not conducted, crash barrier testing internally, but outsource this work to third parties. (b) The ZoneGuard barrier is the applicants' barrier product which embodies all the features of claim 1 of [the 210 Patent]. (c) The crash tests conducted on the applicants' products, including the ZoneGuard barrier, are conducted externally and the applicants are typically provided with a test report containing: i. videos of the crash test (often showing multiple angles and different video speeds); ii. photographs relevant to the crash test; and iii. final drawings of the crash test. (d) These reports and associated documents are provided to the applicants in electronic format, sorted and catalogued. The applicants keep all reports and associated documents on a central repository controlled by the first applicant. It would not be an onerous task for the first applicant to collate the relevant reports and associated documents (relating to the ZoneGuard barrier) from this central repository. (e) These reports and associated documents are often used by the applicants to prepare submissions to certification bodies throughout the world, including Australia, to demonstrate the ability of the barrier to meet the relevant standard. (f) Through a Freedom of Information request in the United States of America, Mr Hood has received three test reports relating to the applicants' testing of the ZoneGuard barrier. These test reports had been submitted by a subsidiary of the first applicant to the relevant certifying authority in the U.S.A. The documents accompanying these reports substantially comprised (in respect of each report): i. up to five (5) videos; ii. up to one hundred and twenty (120) photographs; and iii. one (1) technical drawing (There are no 'draft' drawings included in these reports as these are prepared by the applicants and the finalised drawing provided to the test laboratory). (g) Testing of crash barrier beams is essential to understanding how a barrier and an impacting vehicle behave in the event of a vehicle impact. It is mandatory for crash barrier beams to be crash tested prior to receiving approval in, at least, Australia, the United States of America and the United Kingdom. (h) The testing conducted by the applicants on the ZoneGuard barrier would (inter alia) demonstrate the presence (or otherwise) of features claimed by the applicants in claim 1 of the 210 Patent. Specifically, the testing would provide videos, photographs and analytics (descriptive, diagnostic and predictive) which would demonstrate whether the applicants' barrier which embodies the 210 Patent, contains the feature identified at paragraph 12(h) of the Statement of Claim. (i) The applicants' crash testing reports and associated documents relating to the ZoneGuard barrier, held as at 16 September 2011, are therefore directly relevant to the basis on which representations were made by the first applicant to the Commissioner of Patents in the course of the application for the 210 Patent. (j) Further, the cost of conducting a crash test is significant, generally costing between $40,000 and $50,000 to conduct, plus the cost of the vehicle required to impact the barrier. (k) Without access to copies of the applicants' crash testing reports and associated documents, the respondent may be required to expend significant amounts of money to conduct testing to obtain relevant visual and analytical data. 11 Mr Burrows also deposes that he has been informed by Mr Hood and believes that: (a) The tests (including videos and photos), to which Mr Hood had access while working for the second applicant and a subsidiary of the first applicant did not disclose that the ZoneGuard barrier demonstrated the feature identified at paragraph 12(h) of the Statement of Claim. Mr Hood does not presently recall the exact dates on which these tests occurred, but recalls that he had access to tests which occurred throughout the time of his employment from about May 2011 to about November 2016, as well as tests which occurred prior to his employment. (b) The tests that Mr Hood has reviewed which were obtained through a Freedom of Information request… do not disclose that the ZoneGuard barrier demonstrated the feature identified at paragraph 12(h) of the Statement of Claim. (c) Based on Mr Hood's knowledge and understanding of road barriers, the ZoneGuard barrier could not achieve the feature identified at paragraph 12(h) of the Statement of Claim. I set out paragraph 12(h) below, at [34]. 12 Mr Burrows deposes that, having regard to the affidavit of Mr Gerakiteys sworn on 6 November 2018, the respondent has further confined the categories of discovery now sought from the applicants. 13 In his third affidavit, Mr Burrows deposes to further information provided to him by Mr Hood, as well as to information provided to him by Mr Clinton Priddle, the respondent's patent attorney. 14 Mr Burrows deposes, on information and belief, that Mr Priddle informed him that by downloading from IP Australia's website a copy of the prosecution file for the 210 Patent, Mr Priddle obtained a copy of the letter from Griffith Hack to the Commissioner of Patents dated 16 September 2011 which is referred to at [E5] of the particulars of invalidity. Mr Burrows annexed a copy of that letter to this affidavit. Relevant parts of that letter are extracted at [24] below. 15 Mr Burrows also annexed to this affidavit photographs, admitted subject to relevance, that he was informed by Mr Hood, and believed, to be photographs of the Zoneguard barrier. 16 The applicants rely on two affidavits sworn by Mr Dean Gerakiteys, solicitor, on information and belief. His first affidavit is dated 6 November 2018. His second affidavit is dated 22 November 2018, after the date of Mr Burrows' second affidavit. 17 In Mr Gerakiteys' first affidavit, the source of his information is Mr Richard Endersby, a senior employee of the first applicant. This affidavit goes to oppression. It relates to the form of the application for discovery as originally filed. Mr Gerakiteys deposes: (a) the Applicants conduct, or arrange for third party organisations to conduct crash testing on the Applicants' temporary road safety barriers (Applicants' Products); (b) there are over 30 different tests that have been conducted on one of the products in the Applicants' range of temporary road safety barriers; (c) a test report (including drawings) is prepared in respect of each of these tests; (d) each test includes: (i) a minimum of 5 videos (each video being a minimum of 0.5 to 2 Gigabytes in size); (ii) a minimum of 50 to 100 photographs; and (iii) drafts and final drawings comprising approximately 1,000 drawings per test; (e) to conduct and analyse the results of these tests, the Applicants' personnel engage in internal correspondence and discussions and external correspondence with third party organisations and personnel via email, telephone and face-to-face discussions. 18 The affidavit is to the effect that to review and locate documents related to these tests as required by paragraphs 1 and 2 of the categories of discovery sought by the respondent (before the amendments) would require the applicants to undertake searches of the email databases of all of the applicants' personnel involved in the testing process for each of the applicants' products, together with the personnel involved in deliberations regarding the applicants' products before and after testing had been completed. Given the large volume of documents and information that may be required to be searched and reviewed, the labour required to conduct these searches would be significant and would have a negative impact on the applicants' business functions. 19 Mr Gerakiteys' second affidavit is to the effect that he has been informed by Mr Michael Shires, head of legal of the first applicant, and by Mr Endersby, that the revisions to the respondent's proposed categories of discovery do not materially assist in narrowing the scope of searches required to be undertaken, and the volume of material that is required to be reviewed by the applicants. 20 Mr Gerakiteys deposes, on information and belief, in relation to categories 1(a) and 1(b) in the form they then took: (a) over 30 different tests have been conducted for the Zoneguard product; (b) as noted in paragraph 4(d) of [Mr Gerakiteys' first affidavit]: (i) for each test, a test report (including drawings) is prepared; (ii) each test includes: A. a minimum of 5 videos (each video being a minimum of 0.5 to 2 Gigabytes in size); B. a minimum of 50 to 100 photographs; and C. approximately 1,000 final drawings; and (c) to review these reports and discover documents within the scope of categories 1(a) and 1(b)… would require that Mr Endersby consider each test report and accompanying materials carefully to determine whether the test includes information within the scope of these categories. 21 In relation to categories 1(c), 2(a) and 2(b) in the form they then took, Mr Gerakiteys deposes on information and belief that: (a) to locate documents that may be relevant to these categories would require searches of over one million emails on the Applicants' electronic servers; (b) even if the Applicants were to undertake key word searches of their servers, for example using words including "Zoneguard", "test", "result" and "impact" these searches will be of limited utility in reducing the volume of emails retrieved due to the common usage of these terms by the Applicants' employees throughout the Applicants' business globally. This is because Zoneguard is the name of the Applicants' core business product and is relevant to its global operations. The term is therefore used frequently in both internal correspondence between the Applicants' employees and in third party correspondence. It is used in a large number of materials that are not at all relevant to the proceedings; (c) there are only three individuals employed by the Applicants (being two senior engineers, Mr Endersby and Mr Mark Reynolds and the managing director of one of the First Applicant's key divisions, Mr Peter Wilkinson) who would have the requisite knowledge to review the documents that would be located by any such search for the purposes of determining their relevance to these categories; (d) the labour required to conduct these searches and subsequently review this information would be significant and would have a negative impact on the Applicants' business functions as the persons involved in the review of the documents located by the searches would need to be undertaken by senior executives including the managing director of one of the First Applicant's key divisions, Mr Peter Wilkinson; (e) it is not feasible let alone achievable for the Applicants to undertake the required searches and review the documents and information within a matter of months, let alone the time stipulated.

The parties' submissions 22 The respondent submits that categories 1 and 2 identify documents that are directly relevant to issues in the proceeding - first, false suggestion; and secondly, inutility. These submissions apply equally to both categories. The respondent submits the discovery sought is limited and targeted, and it would not be onerous or oppressive for the applicants to produce such documents. It is appropriate that such discovery be provided now, and it may effectively facilitate a mediation, which has been raised by the Court and is not objected to by the parties. 23 Turning first to false suggestion, the respondent submits that as set out in the particulars of invalidity, it alleges that the first applicant obtained the 210 Patent by misrepresentation or false suggestion to the Commissioner of Patents. 24 The false representations relied upon were the statements of fact made in the 16 September 2011 letter from Griffith Hack to the Commissioner of Patents, as follows: iii. "The claimed combination of features provides a barrier that is ...capable of urging an impacting vehicle wheel back towards the road away from the barrier."; iv. "Moreover, the deflections 14c and 15 of the present invention are at an angle that is shallow with respect to the horizontal. This has the very important effect of...effectively helping to redirect a vehicle back to the carriageway in the event of an impact."; and v. "...the gradient of the wall and combined action of the inwardly and outwardly stepped deflections acting together to redirect a vehicle wheel back to the carriageway." (italics added) 25 The relevant allegations in the statement of cross-claim are denied by the applicants. 26 The respondent submits that relevant false suggestion or misrepresentation at least includes "statements of fact about which the applicant has knowledge and about which the Patent Office would not normally have any information": ICI Chemicals & Polymers Ltd v Lubrizol Corp Inc [1999] FCA 345; 45 IPR 577 at [184] per Emmett J. 27 The respondent submits that this ground at least encompasses "conduct of the patentee during the process of application for grant" (Prestige Group (Australia) Pty Ltd v Dart Industries Inc (1990) 26 FCR 197 at 199), which involves a false representation about the features of the invention as claimed, which materially contributed to the decision of the Commissioner to grant the patent. 28 The respondent submits that the documents sought are clearly directly relevant to the issue of whether the relevant statements made in the 16 September 2011 letter were false, and relevant facts in that regard were known to the first applicant. 29 As to the objection to discovery that it would be oppressive, the respondent submits it has substantially confined the categories and the documents would be all kept in a central repository controlled by the first applicant, referring to Mr Burrows' 16 November 2018 affidavit on information and belief from Mr Hood, who worked for the applicants for over five years. 30 The respondent submits that the documents sought in category 2 (before the most recent amendment) are slightly different to those sought in category 1, and relate to "analysis, consideration or discussion" of whether or not the Zoneguard crash barrier beam attains the redirection ability. This category has also been limited to documents in a certain period, so as to specifically target documents supporting the pleaded statements made to the Commissioner in the 16 September 2011 letter, being the focus of the false suggestion case. Accordingly, it would not be oppressive for the applicants to produce such documents. 31 Secondly, the respondent submits, it may be asserted that the ability of the barrier's gradient of the impact wall and the inwardly and outwardly stepped deflections, in the event of a vehicle impact, to redirect the impacting vehicle wheel back towards the road away from the barrier (the redirection ability) is not a promise of the invention but merely a claim integer. Even if this were the case, which it is not, the respondent submits, it is not relevant to the false suggestion case advanced by the respondent. This is not that sort of false suggestion case where it is asserted that the patentee has falsely represented in the specification an inventive merit of the invention or beneficial result which it does not have. 32 The respondent submits that this false suggestion case relies simply upon the applicants' written statements of fact about aspects of the invention, which were false. This conduct is quite separate from, and does not involve, determination of what promises are made by the patentee in the specification itself as to the results which it asserts are obtainable by the invention. The latter is, however, relevant to utility. This is not a basis for refusing discovery of directly relevant documents. 33 The respondent submits that its false suggestion case is sufficient to warrant discovery in the categories claimed (as amended). 34 In relation to inutility, the respondent submits that, as set out in [B2] of the particulars of invalidity, it alleges that the invention as claimed in claim 1 of the 210 Patent does not do what the patentee intended it to do, and does not attain the result promised for it, because it does not have the redirection ability feature identified at [12(h)] of the statement of claim, which reads: in the event of a vehicle impact, the gradient of the impact wall and the inwardly and outwardly stepped deflections assist in redirecting an impacting vehicle wheel back towards the road away from the barrier. 35 The respondent relies on Advanced Building Systems Pty Ltd v Ramset Fasteners (Aust) Pty Ltd [1998] HCA 19; 194 CLR 171 especially at [24], referring to Lane Fox v Kensington and Knightsbridge Electric Lighting Company [1892] 3 Ch 424 especially at 430-431, and to Halcon International Inc v Shell Transport and Trading Co Ltd [1979] RPC 459 at 465-466. 36 The respondent submits that the passages in the specification identified in the particulars to [B2] of the particulars of invalidity (page 1 line 28 to page 2a line 2, page 23 lines 20-29 and page 25 lines 1-19) support the respondent's position that the redirection ability was not merely a claim integer, but this redirection ability was also intended by the patentee and it was a promised result. This is not a flawed, but rather, a compelling, allegation, the respondent submits. And it should not be criticised for lack of particularity. Particulars relating to tests or reports are not required at this stage (under Div 34.3 of the Federal Court Rules 2011 (Cth) or otherwise), and would be improperly pleading evidence, the respondent submits. 37 Secondly, the respondent submits, the categories of documents sought do not require the applicants to promote a claim construction at this time, before their evidence is filed. The pleaded position of the respondent is clearly that (inter alia), on the proper construction of the specification, it was a promise of the invention that it would have the redirection ability. That is in issue, on the pleadings. Discovery from the applicants in relation to that issue does not require them to agree with the respondent's construction of the claims or specification, or accept that the redirection ability is a promise of the invention to be found in the whole specification, upon its proper construction. This is simply seeking discovery in relation to a matter in issue. Documents in the applicants' control which go to the redirection ability of the claimed invention are clearly directly relevant to the inutility issue. 38 The respondent submits that, with reference to [10.6] of the Central Practice Note (CPN-1), the discovery sought: a. facilitates the just resolution of the proceedings as quickly, inexpensively and efficiently as possible. Provision of copies of the documents that are discoverable within these categories would facilitate the cost-efficient and expeditious resolution of the aforementioned issues raised in the proceeding. The substantial additional cost for the respondent if it has to commission further crash testing should be noted: [referring to Mr Burrows' 16 November 2018 affidavit at [5j], [5k]]. b. would facilitate any mediation that may be in contemplation of the parties and the Court. Provision of discovery in these categories may assist in early identification of key documents relevant to the issues, and confining the issues in dispute. c. is proportionate to the nature, size and complexity of the proceeding. The Respondent has confined categories 1 and 2 as mentioned above, so that [sic] is only limited and targeted discovery being sought. 39 The applicants submit that the documents sought on discovery by the respondent are irrelevant and that the discovery sought is oppressive. 40 As to lack of relevance, the applicants submit that in its utility case, the respondent says the patent in suit makes this promise for the claimed invention: "In the event of a vehicle impact, the gradient of the impact wall and the inwardly and outwardly stepped deflections assist in redirecting an impacting vehicle wheel back towards the road away from the barrier" (the promise). The respondent hopes to prove that the claimed invention does not meet the promise because the applicants' products do not. 41 The applicants submit there are two problems with this. Claim 1 includes the exact words of the promise (the promise integer). A product will not fall within the scope of the claims unless it has the promise integer. Put another way, it is not possible for a product falling within the claims to fail to fulfil the promise. For that reason, claims limited by result are necessarily useful: Interlego AG v Toltoys Pty Ltd (1973) 130 CLR 461 at 472 per Stephen J, and, on appeal, per Barwick CJ and Mason J at 479-480. The applicants also referred to Bodkin's Patent law in Australia (3rd edition, Lawbook Co, 2019) at [26200]. The applicants submit the respondent accepts that the promise is an integer of the claim, referring to the respondent's written submissions at [20]. 42 The applicants submit the second problem with the application is related to the first. The respondent seeks documents showing whether one of the applicants' products (the Zoneguard barrier) fulfils the promise. That is not a fact in issue. Products dealt with by the applicants do not necessarily fall within the claims of the patent. They fall within the claims only if they have all of the integers of the claims - including the promise integer. 43 The applicants submit that if discovery is granted, the documents will show either that the Zoneguard barrier has the promise integer, or that it does not. If the documents show the Zoneguard barrier does have the promise integer, the documents will not assist the respondent in making out its cross-claim, because they will prove that that product does fulfil the promise. On the other hand, if the documents show the Zoneguard barrier does not have the promise integer, those documents will demonstrate nothing more than that the Zoneguard barrier does not fall within the claims - and so the documents will still not assist the respondent in making out its cross-claim. Either way, there can be no use in the discovery the respondent seeks. 44 For the same reason, the applicants submit, the Court can disregard the respondent's evidence that its director thinks the Zoneguard barrier could not fulfil the promise. It does not matter whether it does or not. The Court can also disregard the respondent's evidence that it would be expensive for it to do its own testing on the Zoneguard barrier. The respondent does not need to test the applicants' products. 45 As for the false suggestion case, the applicants submit, the respondent says that argument relies not on a promise made in the specification, but on certain statements by the patentee to the Commissioner. Those statements are, effectively, that the claimed invention fulfils the promise. Thus, the same logic applies: the statements cannot have been false, because the claimed invention must fulfil the promise, because the claims are limited by the promise. 46 As to oppression, the applicants submit that in order to produce documents in categories 1(a) and (b), Mr Endersby would need to consider each test report to determine whether it includes information in the scope of those categories. 47 As for categories 1(c) and 2 (before the most recent amendment), the applicants submit that they engage in internal and external correspondence analysing the test results. To execute a reasonable search for the documents sought in those categories, the applicants would have to search the email databases of all of the applicants' employees involved in the testing process, and all of the applicants' employees who might have been involved in analysis, consideration, or discussion of the testing. That would require the applicants to search through more than one million emails. Even using keywords such as "Zoneguard", "test", "result", and "impact" would not materially help, because those words are used so commonly in the applicants' business, including in documents not at all relevant to this case (the Zoneguard barrier is the applicants' flagship product). 48 The applicants submit that the labour required to do the searches needed to comply with the respondent's proposed orders would be significant. Diverting from their usual work the three people who were competent to search would have a negative impact on the applicants' business. Mr Endersby estimates that it would be more than a matter of months for the applicants to do the searching and review that would be necessary to comply with the discovery orders sought by the respondent. 49 The applicants submit that to the extent Mr Hood contradicts Mr Endersby, the statements of Mr Endersby, a current employee of the applicants, should be preferred. 50 The applicants also submit that the categories (before the most recent amendment) are too broad. The applicants submit that category 1(a) seeks documents including "data relating to crash testing" of the Zoneguard barriers (before a certain date). That is broad and unclear. For example, if emails are data, category 1(a) could thereby include most of the documents in categories 1(c) and 2. The term "relating to" is also unclear. Assessing documents against that standard would require the applicants to exercise judgment about what kind and degree of relation was sufficient to make a document discoverable. It extends far beyond whether the applicants' products possess the promise integer. 51 The applicants submit that category 1(b) seeks "reports referring to crash testing" of the Zoneguard barriers (before a certain date). This category is broad and unclear. For example, (before the most recent amendment) it does not specify that the reports are to be reports of the testing laboratory. I note that the most recent amendment to the category would include that limitation. Internal reports on a different topic (such as sales reports) including a reference to the crash testing (such as might be seen in marketing material) would also be caught. Again, this goes well beyond the presence of the promise integer. 52 The applicants submit that category 1(c) is too broad. For example, (before the most recent amendment) it covers all "documents that…refer to any crash testing…or analysis of same", of the Zoneguard barriers (before a certain date). There is no limitation as to document type, and no limitation as to the type of reference that would be sufficient. For example, marketing and sales documents referring to crash testing would be captured, as would any emails about arranging or paying for the testing. The words "analysis of same" take the question to another level of abstraction: even a document that does not refer to crash testing would be caught, if it refers to analysis of crash testing (it is not clear how that could be done, but it must be assumed that the respondent intends by those words to capture something extra). This, too, is not confined to the promise integer. I note that the most recent amendment to the categories would delete category 1(c). 53 The applicants submit that category 2 (before the most recent amendment) is also too broad. For example, it seeks "documents…that…refer to any analysis, consideration or discussion of whether" the Zoneguard barriers meet the promise (before a certain date). There is no limitation as to document type, no limitation as to the type of reference that would be sufficient, and no limitation as to the type of consideration or discussion that would be caught. This category would require the applicants' employees to understand the promise, and then to review all of the applicants' documents looking for any references to any consideration of whether the Zoneguard barriers meet that promise. That is a level of abstraction that is too difficult to apply, and a level of inconvenience and expense that is too much to ask, the applicants submit. 54 The applicants submit that what the respondent really appears to be hoping to find, in the documents in categories 1(c) and 2, are emails indicating that the applicants knew the Zoneguard barriers did not meet the promise. It is not necessary for the applicants to be put to so much trouble for that purpose. If the Court orders discovery of categories 1(a) and (b) over the applicants' submissions as to irrelevance and oppression, knowledge of the information in the test reports commissioned and sent to the applicants can be attributed to the applicants. 55 In oral reply, the respondent distinguished the false suggestion case from the inutility cases so far as concern a claim by result, such as Interlego.

Consideration 56 In my opinion, it is not appropriate to decide this application for discovery by reference to disputed and contestable issues of substantive law. I seek to avoid as far as possible claim construction as referable to utility. 57 It is appropriate that the application be tested by reference to r 20.14 of the Federal Court Rules, that is, whether the documents sought are documents: (1) … (a) that are directly relevant to the issues raised by the pleadings or in the affidavits; and (b) of which, after a reasonable search, the party is aware; and (c) that are, or have been, in the party's control. For the purposes of r (1)(a) the documents must meet at least one of the following criteria, by r 20.14(2): (a) the documents are those on which the party intends to rely; (b) the documents adversely affect the party's own case; (c) the documents support another party's case; (d) the documents adversely affect another party's case. And also for the purposes of r (1)(b), by r 20.14(3): … in making a reasonable search, a party may take into account the following: (a) the nature and complexity of the proceeding; (b) the number of documents involved; (c) the ease and cost of retrieving a document; (d) the significance of any document likely to be found; (e) any other relevant matter. 58 In my view, there is a substantial gap between the categories the respondent seeks and whether those categories will facilitate the just resolution of the proceeding as quickly, inexpensively and efficiently as possible: see r 20.11. 59 I am not persuaded that at this stage of the proceeding and against the background of the evidence on behalf of the applicants of the amount of work that would be required to be done that an order in terms of category 1, as amended, is appropriate. 60 Even paring back that category, it proceeds by reference to documents before 8 November 2013 recording or referring to testing, simulations or analysis, by or on behalf of the applicants, of Zoneguard beams. To my mind this category is far too general. Also I am not persuaded what it is that the items by reference to which the category is limited would or might show referable to the particular issues of inutility and false suggestion. For example, I am not persuaded of the relationship between what a video of crash testing of Zoneguard barriers would or might show and those particular issues. As well, the generality of those barriers which were "assessed to pass by the testing laboratory" is not sufficiently related to those particular issues. These are no more than examples of the lack of fit between the particular issues and category 1. In my view it is insufficient as too general that the documents would show what testing was done. 61 For these reasons I decline to order discovery of category 1. 62 In relation to category 2, despite present misgivings as to how the respondent will be able ultimately to prove the particular issues of inutility and false suggestion by reference to a claimed embodiment of the claim rather than the claim itself, but proceeding on the basis of interlocutory or adjectival, albeit direct, relevance rather than ultimate relevance, I am prepared to order discovery of a more limited category. But I would not proceed by reference to emails and attachments "that record any discussion". I am prepared to order discovery of documents being documents limited by date showing that Zoneguard crash barrier beams did or did not operate so that, in the event of a vehicle impact, the gradient of the impact wall and the inwardly and outwardly stepped deflections assisted in redirecting an impacting vehicle wheel back towards the road away from the barrier: see claim 1 at page 25 lines 17-19. I take into account the reference to Zoneguard at page 9 of the patent and the references there to figures 1a and 1b. 63 It might be thought that there is some support for the respondent's approach in Halcon International but I note not only the difference between the patents under consideration but also that Whitford J was there proceeding by reference to the then orthodox test of possible relevance being applied to issues of discovery rather than the narrower test in r 20.14. 64 As to the applicants' evidence of oppression, which I take to be similar in concept to making a reasonable search as provided in r 20.14(3), I would permit the applicants to limit their search if it turns out that the number of documents involved and the ease and cost of retrieving a document show that a reasonable search does not extend to any or all of the documents which I propose to order be discovered. I take this course because of the substantial amendments to the respondent's proposed categories, as handed up this morning, since the applicants' evidence was filed.

Conclusion and orders 65 I therefore propose to order the applicants give general discovery as follows, by 15 February 2019, limited by the concept of reasonable search in rr 20.14(3)(b) and (c): Documents supplied by testing laboratories dated before 17 September 2011 that show whether the applicants' Zoneguard crash barrier beams did or did not operate so that, in the event of a vehicle impact, the gradient of the impact wall and the inwardly and outwardly stepped deflections assisted in redirecting an impacting vehicle wheel back towards the road away from the barrier. 66 I will hear the counsel on the precise form of the order and on costs. There will be liberty to apply. Counsel should also confer on a timetable for the filing of evidence in the substantive proceeding. I certify that the preceding sixty-six (66) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Robertson.

SCHEDULE OF PARTIES NSD 1212 of 2018 Cross-Respondents Second Cross-Respondent HILL & SMITH PTY LIMITED (ACN 153 144 364)

Patents Act 1990(Cth)ss 18, 138

Federal Court Rules 2011(Cth)rr 20.11, 20.14

At a glance

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Judgment (7 paragraphs)

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Legislation Cited (2)

Cases Cited (4)

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