Lynx Engineering Consultants Pty Ltd v The ANI Corporation Limited trading as ANI Bradken Rail Transportation Group

Federal Court of Australia|2011-03-11|Before: McKerracher J

Number of paragraphs: 60

Counsel for the Applicant: JJ Garnsey QC

Solicitor for the Applicant: Karp Steedman Ross-Adjie

Solicitor for the First Respondent: DLA Phillips Fox

Counsel for the Second and Third Respondents: P Clay

Solicitor for the Second and Third Respondents: Corrs Chambers Westgarth

Counsel for the Fourth Respondent: DJ Pratt

Solicitor for the Fourth Respondent: Jackson McDonald

IN THE FEDERAL COURT OF AUSTRALIA WESTERN AUSTRALIA DISTRICT REGISTRY GENERAL DIVISION WAD 219 of 2006

AND: THE ANI CORPORATION LIMITED TRADING AS ANI BRADKEN RAIL TRANSPORTATION GROUP

JUDGE: MCKERRACHER J DATE OF ORDER: 11 MARCH 2011 WHERE MADE: PERTH

Leave is granted to the fourth respondent to administer interrogatories to the applicant in the form annexed to the fourth respondent's minute of proposed orders dated 17 November 2010 with the exception of: (a) the words '… and where …' in interrogatory 1(b); and (b) interrogatory 4; and (c) interrogatory 5(a). 2. Unless submissions to the contrary are filed within 10 days, the applicant is to pay the fourth respondent's costs of the motion for leave to administer interrogatories, to be taxed if not agreed. Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules. The text of entered orders can be located using Federal Law Search on the Court's website.

IN THE FEDERAL COURT OF AUSTRALIA WESTERN AUSTRALIA DISTRICT REGISTRY GENERAL DIVISION WAD 219 of 2006

AND: THE ANI CORPORATION LIMITED TRADING AS ANI BRADKEN RAIL TRANSPORTATION GROUP

JUDGE: MCKERRACHER J DATE: 11 MARCH 2011 PLACE: PERTH

INTRODUCTION 1 The fourth respondent (WorleyParsons) seeks leave to interrogate the applicant (Lynx). Lynx opposes leave. Each of the parties has filed written submissions on the topic. 2 On 21 September 2010, WorleyParsons served a notice to admit facts on Lynx pursuant to O 18 r 2 of the Federal Court Rules (FCR) which provides as follows: Order 18 Admissions … 2 Notice to admit facts - Form 25 (1) A party to a proceeding may, by notice in accordance with Form 25 served on another party, require him to admit, for the purpose of the proceeding only, the facts or documents specified in the notice. … 3 By letter of 24 September 2010, Lynx gave notice to WorleyParsons that it would not admit the facts in the WorleyParsons' notice. 4 The proposed interrogatories substantially overlap with the matters the subject of each of the notices to admit facts served by WorleyParsons on Lynx. 5 WorleyParsons makes the point, correctly, that the interrogatories are of narrow compass. Admissions are sought in the interrogatories to support WorleyParsons' defence and to damage Lynx's case against it. 6 For reasons that follow, leave will be granted for most of the interrogatories.

BACKGROUND 7 It is desirable to say something about the history of these and related proceedings to put the interrogatories issue in context. Several judgments have been delivered in different proceedings essentially dealing with the same subject matter. 8 Lynx commenced proceedings numbers WAD 219 of 2006 and WAD 217 of 2007 in this Registry of the Court. On 13 February 2008, those proceedings were consolidated by order of the Court (the Confidential Information Proceeding). There are also proceedings which were originally filed in the New South Wales Registry. The third respondent (Bradken) is the applicant in those proceedings and Lynx is the respondent in both. Both proceedings are concerned with Australian Patent Application Number 749848 for an invention titled 'Side Reinforced Bulk Material Transport Container' (the Patent Application). Those proceedings are now in my docket in the Western Australia District Registry: see Bradken Resources Pty Ltd v Lynx Engineering Consultants Pty Ltd (2010) 187 FCR 476. The Patent Application was lodged by Lynx. Proceeding NSD 439 of 2007 is an appeal (the Appeal Proceeding) by Bradken from part of a decision of a delegate of the Commissioner of Patents to reject the opposition to the Patent Application filed by Bradken. Lynx filed a crossappeal in the Appeal Proceeding. Proceeding NSD 2461 of 2007 is a claim by Bradken that a letter to BHP Billiton Iron Ore Pty Limited (BHP) constitutes unjustifiable threats by Lynx within s 128 of the Patents Act 1990 (Cth). 9 In this Confidential Information Proceeding, Lynx claims that ANI, Bradken and Bradken Limited have infringed the copyright of Lynx in various drawings and materials containing technical specifications and other manufacturing details. Lynx also claims that the respondents have breached a duty of confidence owed to Lynx in respect of the Lynx Copyright Works. Lynx states that the information contained in the Lynx Copyright Works is unpublished confidential information of Lynx (the Lynx Confidential Information). Lynx alleges that Bradken knowingly used and procured the Lynx Confidential Information to manufacture, join in and procure the manufacture of, market, sell or offer for sale the railway wagons that are the subject of the claimed invention of the Patent Application. Lynx asserts that, by doing those acts, Bradken achieved a head start because it avoided the need for independent design, development, marketing and manufacturing of such wagons. Lynx alleges that products designed, developed, marketed and manufactured by Bradken involving the use of the Lynx Confidential Information is in breach of contractual and equitable obligations of confidence. Lynx further claims that the respondents have engaged in misleading and deceptive conduct under s 52 and s 53 of the Trade Practices Act 1974 (Cth) (the Trade Practices Act). 10 A more comprehensive discussion of the factual aspects underlying the contentions appears in Lynx Engineering Consultants Pty Ltd v The ANI Corporation Limited trading as ANI Bradken Rail Transportation Group (No 2) [2009] FCA 363 (at [12]-[15]) where, relevantly to this motion, I noted: 12 The applicant (Lynx) designs, manufactures and supplies railway wagons for carrying freight and bulk materials. In or around 1996, Lynx together with the first respondent (ANI) responded to an invitation to tender from BHP Iron Ore Ltd (BHP) for the design, manufacture and supply of gondola ore cars. The tender was unsuccessful. In early 1997, the process was repeated in a subsequent proposed tender to another company, Hamersley Iron Ore Limited (Hamersley) for the design of such wagons. For that purpose Lynx supplied ANI with drawings and technical information. That tender was unsuccessful. 13 In 2000 there was a further tender to Hamersley. That tender also did not succeed. 14 The essence of the complaint arises from the circumstance that some time later ANI and Bradken manufactured and supplied both BHP and Hamersley with railway wagons known, respectively, as the Bradken 9100 Wagon and the Rio Tinto Pilbara Iron Ore Car. Lynx says that in doing so ANI and Bradken used information contained in the drawings supplied from Lynx to ANI. It says that ANI thereby breached a duty of confidentiality that it owed Lynx as to the drawings and technical information or, alternatively, that it infringed the copyright held by Lynx in the designs and drawings. 15 WorleyParsons is joined in the proceedings because the wagons which were supplied were designed by a WorleyParsons subsidiary. Lynx alleges that such design, it is said, was at the instruction or direction of, or otherwise materially involved ANI and Bradken. 11 The interrogatories in respect of which WorleyParsons seeks leave are of narrow compass. They are as follows: 1. As to the article titled "R&D optimises stainless steel ore car bodies" at pp.643-646 which is Attachment A to [the Notice to Applicant to Answer Interrogatories], state: (a) whether Krystzof Killian is one of the authors of that article; and (b) when and where the said article was published. 2. State whether any and if so which of the following features was a feature of railway ore wagon designs that were in the public domain or was otherwise known to the railway ore wagon designers prior to the year 2000: (a) the use of an external continuous horizontal reinforcement member; (b) the use of 5 or less vertical reinforcement members on the ore wagon side wall; (c) the use of a combination of an external continuous horizontal reinforcement member or a plurality of such members and a plurality of vertical reinforcement members; (d) the use of chamfered corners of the ore wagon body at the intersection of the wagon side and end walls; (e) the use of chamfered corners on external continuous horizontal reinforcement members at the intersection of the side and end walls; (f) the use of vertical end walls; and (g) the use of a combination of 3CR12 stainless steel wall and floor plates with a framework made of carbon steel. 3. As to General Arrangement Drawing No 7122-01-01 (Drawing 1) which is Attachment B to [the Notice to Applicant to Answer Interrogatories], state: (a) whether Drawing 1 was prepared by or on behalf of [Lynx]; (b) when, by whom and for what purpose Drawing 1 was prepared; (c) whether a copy of the Drawing was ever provided to BHP Billiton Iron Ore Pty Ltd or any related entity of that company and, if so, state when, by whom and for what purpose; and (d) whether any and if so which of the 2000 Confidential Features Information pleaded in paragraph 37 of [Lynx's] Further Amended Consolidated Substituted Statement of Claim dated 1 December 2009 is disclosed in Drawing 1. 4. As to the Rio Tinto Pilbara Iron Ore Wagon pleaded in paragraph 53 of [Lynx's] Further Amended Consolidated Substituted Statement of Claim dated 1 December 2009, sate when and how [Lynx] first became aware of: (a) the manufacture and sale of wagons of such design; and (b) the involvement of [WorleyParsons] in the design of such wagons. 5. As to the General Arrangement Drawing No 5122-01-01 (Drawing 2) which is Attachment C to [the Notice to Applicant to Answer Interrogatories], state whether: (a) railway wagons of the design disclosed in Drawing 2 have been the subject of public use in Australia and, if so, when and where; (b) railway wagons of the design disclosed in Drawing 2 have been manufactured in Australia by or with the consent of [Lynx] and, if so, state how many wagons have been manufactured and state when and where; (c) railway wagons of the designed disclosed in Drawing 2 have been sold or offered or exposed for sale in Australia by or with the consent of [Lynx] and, if so, state when and where the wagons were sold or offered or exposed for sale and state how many wagons have been sold; and (d) if the railway wagon design disclosed in Drawing 2 is or has ever been registered under the Designs Act 1906 (Cth) or the Designs Act 2003 (Cth).

RELEVANT PRINCIPLES 12 By O 16 r 1(1) FCR the Court may, in its discretion, give leave to any party to file and serve on any other party a notice requiring the party served to answer interrogatories relating to any matter in question between the interrogating party and the party served. Interrogatories may be sought as to matters which enable a party to maintain that party's case or to destroy the case of the adversary. 13 In Austal Ships Pty Ltd v Incat Australia Pty Ltd (No 3) (2010) 272 ALR 177 (Austral Ships No 3) I summarised the authorities dealing with leave to administer interrogatories. To the extent the summary may be relevant to the motion, I noted (at [6]-[10]): 6 As will be apparent from r 6, an interrogatory may be objected to by a party when it is too wide, fishing or immaterial: Aspar Autobarn Co-operative Society v Dovala Pty Ltd (1987) 16 FCR 284. It may be objected to as being vexatious when it is fishing Aspar at 287. It can be objected to on grounds of being oppressive if it is unfair or unreasonable in the sense that the burden of answering it far outweighs the likely benefit which may be adduced from the answer. 7 The administering and answering of interrogatories is a form of discovery. Just as this Court has now substantially limited the scope for wide ranging discovery, the circumstances on which leave to administer interrogatories will be granted is increasingly rare. That is not to say that interrogatories and discovery of documents are mutually exclusive. It is clear that they may overlap on occasions. In this Court it will be unlikely that interrogatories will be permitted as a substitute for discovery of documents. 8 Interrogatories which are directed towards ascertaining the contents of documents may be an exercise in fishing and are not generally permissible: WA Pines Pty Ltd v Bannerman (1980) 41 FLR 175 at 181-182 per Brennan J, and at 191-191 per Lockhart J. … … 9 … [I]n WA Pines 41 FLR 175 … Lockhart J said (at 190-191) (footnotes omitted): There are four objects of interrogatories: 1. To obtain admissions as to facts which will support the case of the interrogating party. 2. To obtain admissions which will destroy or damage the case of the party interrogated. 3. Interrogatories which are in the nature of a request for further and better particulars. 4. Interrogatories which seek to obtain accounts from a party occupying a fiduciary position. However, among the well-established limitations upon the power to interrogate and to discovery of documents is the rule that this power cannot be used for the purpose of "fishing". In Hennessy v. Wright (No. 2) (1888) 24 Q.B.D. 445 (reported as a note to Parnell v. Walter (1890) 24 Q.B.D. 441) Lord Esher M.R. said: "In other words, the plaintiff wishes to maintain his questions, and to insist upon answers to them, in order that he may find out something of which he knows nothing now, which might enable him to make a case of which he has no knowledge at present. If that is the effect of the interrogatories, it seems to me that they come within the description of fishing' interrogatories, and on that ground cannot be allowed. The moment it appears that questions are asked and answers insisted upon in order to enable the party to see if he can find a case, either of complaint or defence, of which at present he knows nothing, and which will be a different case from that which he now makes, the rule against fishing' interrogatories applies". In Lane v. Gray (1873) L.R. 16 Eq. Cas. 552 Sir Richard Malins V.C. held that the court's power to make an order for discovery was a discretionary power to order production when it shall appear to the court to be right to do so. His Lordship refused the application until the case had proceeded further and the plaintiff made out a prima facie case in support of her claim. The plaintiff had brought a suit claiming to be entitled to a share in the estate of an intestate as an alleged next of kin. It appears that discovery was refused because all that the plaintiff had done at that stage of the case was to allege that she was next of kin of the intestate and there was no evidence to support her assertion. The estate of intestates were frequently claimed by persons of whom many had no foundation for their claims; but by obtaining on discovery production of documents belonging to the intestate they obtained information by means of which fresh fictitious cases were in many instances manufactured. In Associated Dominions Assurance Society Pty. Ltd. v. John Fairfax & Sons Pty. Ltd. (1952) 72 W.N. (N.S.W.) 2, Owen J. said: "A `fishing expedition', in the sense in which the phrase has been used in the law, means, as I understand it, that a person who has no evidence that fish of a particular kind are in a pool desires to be at liberty to drag it for the purpose of finding out whether there are any there or not". See also Bray on Discovery (1885), pp. 13, 16, 98 and 461. … 10 In circumstances where a party makes allegations in a pleading based on suspicion, it is not entitled to interrogate on those suspicions, for to do so is the clearest example of fishing by making a case where none exists: WA Pines Pty Ltd v Bannerman (1980) 41 FLR 169 at 173-174 per Toohey J; WA Pines 41 FLR 175 at 181-182 per Brennan J; and 190-191 per Lockhart. More recently see Minister for Immigration & Multicultural & Indigenous Affairs v Wong [2002] FCAFC 327 at [28]-[36]). … 14 In an earlier ruling in this proceeding (Lynx Engineering Consultants Pty Ltd v The ANI Corporation Limited trading as ANI Bradken Rail Transportation Group (No 4) [2010] FCA 1114) (Lynx No 4) I distinguished the extent of interrogatories in respect of which leave was sought in Austal Ships No 3 with those sought by Lynx in these proceedings (in Lynx No 4 at [7][10]).

CONSIDERATION 15 Lynx argues that the motion for leave to administer interrogatories is premature and fishing. The need for WorleyParsons to administer interrogatories could not be determined, Lynx says, until its evidence had been filed. In addition, Lynx considered that there were further specific grounds to oppose interrogatories 2, 3(d), 4 and 5 which I will address. 16 As to the prematurity argument, O 16 r 5 FCR, provides as follows: Order 16 Interrogatories … 5 Order to answer The Court may, at any stage of the proceeding, order any party to answer interrogatories either in accordance with rule 2 or in accordance with such directions as the Court may give. … 17 As to this generally, there are three points. First, it is to be noted that such a view was not taken in relation to a similar application by Lynx. In these Confidential Information Proceedings Lynx sought and was granted leave to interrogate (on a limited and relevant basis) at a date prior to the date on which it was to file its evidence. There is no obvious reason why a consistent approach should not be taken to this application. 18 Secondly, the question of whether or not a motion is premature must be examined together with the substance of the interrogatories. Looking at these interrogatories, it may generally be said that they are reasonably precise and in point. They appear to raise the very matters in dispute going to both the Lynx claim and the WorleyParsons' defence but in a manner sufficiently precise to make a 'fishing' argument hard to establish. The proceedings are well advanced.

Certification of a pleading 19 There is a third consideration. By an amendment to the Rules of this Court (O 11 r 1B(1) FCR), operative since 2003, a requirement was introduced that if a pleading is prepared by a lawyer representing a party, the pleading must, when filed, be accompanied by a certificate in accordance with Form 15B signed by the lawyer. 20 Form 15B requires the lawyer to certify to the Court that, in relation to the particular pleading, the factual and legal material available to the lawyer provides a proper basis for: (a) each allegation in the pleading; and (b) each denial in the pleading; and (c) each non-admission in the pleading. 21 Certifying those matters to the Court is not a mere formality and would have serious consequences if given wrongly (see BioOne Pty Ltd v Australian Biodiesel Group Ltd [2008] FCA 709 per Lindgen J (at [27]). As the Full Court (Heerey, Gyles and Middleton JJ) observed in Optiver Australia Pty Ltd v Tibra Trading Pty Ltd (2008) 169 FCR 435 (at [33]-[36]), the pleading must be proper, adequate and supported by factual and legal material available to the practitioner providing a proper basis for each allegation. However, the practitioner is not required to make some qualitative assessment of the prospects of success. Their Honours said: 33 True it is that the combined effect of O 11 r 1B and Form 15B in the Federal Court Rules, inserted in 2004, is that a legal practitioner filing a statement of claim must certify that the "factual and legal material available to (the practitioner) at present provides a proper basis for each allegation in the pleading". Nevertheless, even with this new obligation, a practitioner is not required to make some qualitative assessment of the prospects of success. Providing there is some evidence, and the gist of that evidence is properly pleaded and particularised, the pleading will be not merely "bare", but proper and adequate. 34 As the classic text on the subject, Bullen and Leake and Jacob's Precedents of Pleading (12th ed), states at the outset (p 3): Pleadings are the written statements of the parties in actions begun by writ which are served by each party in turn on the other, setting forth in a summary form the material facts on which each relies in support of his claim or defence, as the case may be. They are the means by which the parties are enabled to state and frame the issues which are in dispute between them, without embarking at that stage on the evidence which each party may adduce at the trial. The system of pleadings operates to define and delimit with clarity and precision the real matters in controversy between the parties upon which they can prepare and present their respective cases and upon which the court will be called upon to adjudicate between them. It thus serves the two-fold purpose of informing each party what is the case of the opposite party which he will have to meet before and at trial, and at the same time informing the court what are the issues between the parties which will govern the interlocutory proceedings before the trial and which the court will have to determine at the trial. 35 A case may be pleadable, and not merely barely so, even if the evidence supporting the pleaded case is dubious, or vulnerable to contradiction. Section 165 of the Evidence Act 1995 (Cth), although concerned with jury trials, provides some examples of categories of evidence which experience has shown to be likely to be unreliable: hearsay, identification evidence, evidence of witnesses affected by age, ill health or injury, evidence of prison informers, etc etc. Quite apart from these categories, the pleader may have evidence of a reputable person which sufficiently supports the pleaded cause of action but, to the pleader's knowledge, there may be equally reputable witnesses who will swear to the contrary. Or there may be a perfectly good plaintiff's pleadable case but potential defences, such as under a contractual provision or problematic or unpredictable issues such as waiver, estoppel or unconscionable conduct. Or there may be real uncertainty as to the quantum of provable damage, such as to throw doubt on the practical wisdom of issuing proceedings. (See, for example, Hughes Aircraft Systems International v Civil Aviation Authority (1995) 217 ALR 303 at 307-308; Western Bulk Carriers (Australia) Pty Ltd v Cosco Bulk Carrier Co Ltd [2002] FCA 1520 at [15]-[22]; Minister for Health and Aged Care v Harrington Associates Ltd [1999] FCA 549.) 36 The concept of a "bare pleadable case" is not only a gloss on the text of the rule but is fundamentally inconsistent with its purpose. The policy behind the rule is that even where there is a reasonable cause to believe that a person may have a right to relief, nevertheless that person may need information to know whether the cost and risk of litigation is worthwhile. As Hely J pointed out in St George Bank Ltd v Rabo Australia Ltd (2004) 211 ALR 147 at [26], the question does not concern the right to relief but rather "whether to commence proceedings". Inspection of documents in the possession of the proposed defendant may enable a properly informed decision to be made whether to commence a proceeding to obtain the relief. The "bare pleadable case" approach diverts attention from the true purpose of the rule. A person may have a pleadable case, but still not sufficient information upon which to decide whether to embark upon litigation. We are satisfied that his Honour asked himself the wrong question on this ground and that his conclusion cannot stand. There is ample material upon which this Court can consider the ground for itself. 22 The older interrogatory cases precede the certification regime. In the pleadings, each of the parties expressly puts into issue the question of whether or not the confidential information was in the public domain, not in general terms only but in reasonably specific terms. 23 As observed by Gibbs J in Sharpe v Smail (1975) 5 ALR 377 (at 381), an interrogatory cannot be described as 'fishing' if it is directed to obtaining information as to a fact relevant to an issue raised by the pleadings. The facts to which these interrogatories are directed go directly to the issue in the pleadings. They do not go to other issues such as credit as discussed in Sharpe. 24 More importantly, given the narrow compass of these interrogatories which focus directly on a primary issue, the certification by Form 15B means that for the purposes of the defence, WorleyParsons is not merely putting Lynx to proof of its claim. The certification given to the pleading must be taken as an assurance that there is factual and legal material upon which the positive assertions raised by WorleyParsons can be pleaded. The certification is relevant to much of the substantive objection raised by Lynx both as to the prematurity of the interrogatories and that the interrogatories are merely 'fishing' - concepts which are inextricably connected. 25 Although the grant of leave to administer interrogatories will be substantially more limited in modern practice than in times gone past, the certification by Form 15B at least on its face is relevant to the underlying contention to the argument advanced by Lynx. The old authorities on which the contention is based, rest on the assertion that a party may rely upon pleaded allegations as to which there is no basis. 26 Fourthly and added to those considerations, while I accept that WorleyParsons has not filed all its evidence, it has done everything but file its evidence. It has certainly made sufficiently clear, the (certified) case on which it proposes to rely. The interrogatories, more specifically the answers to them, may assist in proving that case or disproving the Lynx case. The motion therefore is not, in my view, premature or, in a general sense, one which invites fishing. 27 Dealing with the balance of the specific objections, I will address each of the interrogatories in turn.

Interrogatory 1 28 I accept the submission from WorleyParsons that this interrogatory is of narrow compass. It concerns a journal article which purports to list Mr Krystzof Killian as an author and refers to the production and testing of prototype GoLynx Ore Cars. Admission as to the authorship is relevant to WorleyParsons' amended defence and cross-claim. In light of the content of the article, I do not presently accept the submission from Lynx that admission of the authorship 'is irrelevant and leads nowhere'. 29 As to the interrogatory as to when and where the article was published, Lynx complains that the interrogatory is oppressive in its terms and fishing. The publisher of the relevant magazine would know when and where it was published rather than Mr Killian. I accept this ground of objection insofar as 'where' the article was published but I would permit the interrogatory as to 'when' the magazine was published, assuming that it was published. Leave will not be granted as to the words '… and where …'.

Interrogatory 2 30 Lynx objects to interrogatory 2 on the basis that the phrase 'in the public domain' and 'otherwise known to railway ore wagon designers' are undefined, oppressive and involve legal and factual considerations. Further, that '[t]he description of each of the "features" is not exhaustive and lacks precision'. 31 WorleyParsons, however, contends that the expression 'in the public domain' is widely used and well understood. By that, WorleyParsons means that information is 'in the public domain' when: (a) it does not have the necessary quality of confidence for purposes of establishing a breach of confidence claim: Coco v AM Clark (Engineers) Ltd [1969] RPC 41 (at 47-48) per Megarry J; (b) it has been sufficiently widely published or disseminated so that it no longer has the necessary quality of confidence about it to qualify as confidential information: Attorney-General (UK) v Heinemann Publishers Australia Pty Ltd (No 2) (1987) 8 NSWLR 341 at 368G and 374D; (c) the information is no longer confidential: The Commonwealth v Walsh (1980) 147 CLR 61 at 62; (d) the information is common knowledge: O Mustod & Son v S. Allcock & Co Ltd and Dosen [1963] 3 All ER 416 at 418; and (e) the information is available from public sources: Maggbury Pty Ltd v Hafele Australia Pty Ltd (2001) 210 CLR 181 and Kruger Transport Equipment Pty Ltd v Glen Cameron Storage & Distribution Pty Ltd (2008) 78 RPR 262. 32 WorleyParsons also points to the fact that while Lynx now asserts that the phrase 'in the public domain' is undefined, oppressive and involves legal and factual considerations, on 18 October 2010, Lynx briefed its expert, Dr Cheng, in the following terms: In our letter of instructions, in relation to "In the public domain", you were instructed as follows: 'Please understand a reference to "in the public domain" to mean whether, irrespective of an apart from the disclosure of the Lynx 1996 Confidential Information, the Lynx 1997 Confidential Information and the Lynx 2000 Confidential Information by Lynx Engineering Consultants Pty Limited pursuant to the relevant agreements with the respondents, the information (or relevant feature or features) was publicly or generally known (without research, investigation, or dissention or analysis) to persons involved in the design and manufacture of wagons such as those shown in the Original Lynx 3CR12 Car design. Information contained in the Complete Specifications of the Lynx Patent AU749848 should be taken to be in the public domain on and from its International Publication dated, namely 7 October 1999.' 33 WorleyParsons submits that in the context of this matter, the interrogatory is reasonable. As noted above, the meaning of the phrases 'in the public domain' and 'otherwise known to railway car designers' are well known to Lynx. 34 There is no oppression in requiring Mr Killian to answer interrogatories relating to whether or not information was in the public domain or otherwise known to railway car designers in circumstances where Lynx seeks to establish that Mr Killian is the designer of Lynx's railway cars and claims that various features of these car designs are confidential. 35 Lynx, however, further contends that the interrogatory, generally speaking, is vexatious, oppressive and fishing as it is not directed to matters in issue on the pleadings. By this submission it contends that it is vexatious because it 'seeks to interrogate in substance as to Lynx's pleading rather than to obtain admissions as to the truth of the facts alleged in WorleyParsons' pleading. 36 I disagree. The particular features in respect of which admissions are sought (as to their being 'in the public domain' or 'otherwise known to railway ore wagon designers') are the same features of the 2000 confidential information listed in the further amended consolidated substituted statement of claim for Lynx. 37 WorleyParsons, for its part in its amended defence, denied that the 2000 confidential information was confidential as: (i) consisting of 'a prosaic or mundane arrangement of known integers for railway ore car design, and/or (ii) differing 'from other railway ore car designs or arrangements in the public domain or generally known in the railway ore car design and manufacturing industry in ways that are obvious, trivial or insignificant', and/or (iii) a major part of the dispute has always been whether this technical material upon which Lynx's case rests had entered 'the public domain' or whether it was 'otherwise known to railway car designers' not containing 'any improvement evolved by Lynx and capable of giving rise to a claim for relief for breach of confidence'. 38 There can be no oppression in requiring Mr Killian to answer interrogatories relating to whether information was 'in the public domain' or 'otherwise known to railway car designers' in circumstances where Lynx seeks to establish that Mr Killian was the actual designer of Lynx's railway cars and contends that the various features on which the interrogatories are sought are the very features giving rise to confidential design by Mr Killian. 39 The narrow ambit of questions is directed specifically to the actual complaints by Lynx and the actual defence of WorleyParsons. As to the list of features, this appears to be derived from Lynx's own further amended consolidated substituted statement of claim and its various particulars. Lynx will be well aware that an issue in dispute is whether the design features were 'in the public domain'. It has been a feature of the debate now for a considerable period of time in this litigation. In those circumstances, it appears to me that Lynx is both capable of answering the questions and that answers given have the capacity to be relevant to the strength of the respective party's cases in the manner contemplated by the authorities. 40 I would grant leave to administer interrogatory 2.

Interrogatory 3 41 In relation to interrogatory 3, Lynx argues that if WorleyParsons obtained the document the subject of the proposed interrogatory directly or indirectly from BHP Billiton Iron Ore Pty Ltd (BHP), then Lynx should be entitled to see evidence in relation to the acquisition of that document before it is determined whether Lynx should be obliged to answer the interrogatory in the present form. It is not apparent to me why this should be so. 42 Once again, it seems to me that these objections are not compelling. In the latest version of the statement of claim by Lynx it defines the term 2000 Confidential Features Information by reference in part to the Drawing under question as designated in the particulars to para 37(j) of the pleading. WorleyParsons, by its defence and cross-claim at para 37(d)(v)-(x), refers to Drawing No 7122-01-01 and the circumstances in which it was disclosed to WorleyParsons. The purpose of interrogatory 3 is to identify or seek to identify which of the 2000 Confidential Features Information were disclosed in that Drawing. In my view that is a legitimate interrogatory. 43 I will give leave for interrogatory 3.

Interrogatory 4 44 As to interrogatory 4, Lynx argues that it is vexatious for the same reasons advanced in relation to interrogatory 2, that is to say, it is not an interrogatory in substance as to pleadings of Lynx but rather as to the truth of the matters raised in WorleyParsons' own defence. 45 WorleyParsons contends that this is directed to the defence of laches which is pleaded in WorleyParsons' defence and cross-claim. It is argued that it is also relevant to para 30 of Lynx's reply. 46 I agree with Lynx. In my view the interrogatory is simply fishing as to the date so as to support the defence. I would not give leave to administer interrogatory 4.

Interrogatory 5 47 Interrogatory 5(a) relates to the extent to which the claimed confidential information was in the public domain as a result of the public use of wagons. This is a feature which is central to the WorleyParsons' defence and cross-claim. Interrogatories (b)-(d) relate to the defence under s 77(2)(a) of the Copyright Act 1968 (Cth) which provides as follows: 77 Application of artistic works as industrial designs without registration of the designs … (2) It is not an infringement of the copyright in the artistic work to reproduce the work, on or after the day on which: (a) products made to the corresponding design are first sold, let for hire or offered or exposed for sale or hire; or … 48 Lynx argues that interrogatories 5(a) to 5(d) are vexatious as they do not relate to any specific matter pleaded or particularised by WorleyParsons to destroy the Lynx claim of confidentiality. 49 In relation to those same sub-interrogatories (5(a) to 5(d)), it is argued that they are oppressive, first, because it requires Lynx to speculate upon what is a design and accept that there is a 'design disclosed in Drawing No 5122-01-01'. Lynx makes the point that in the Designs Act 2003, 'design' is defined as 'the overall appearance of a product resulting from one or more visual features of the product'. 50 The Drawing of concern, according to Lynx, is not a design as such but rather a General Arrangement Drawing of a wagon. Lynx says that it would require expert evidence to say whether and, if so, what 'design' was disclosed in the Drawing and whether railway wagons 'of the design disclosed' had been the subject of 'public use' (wherever or by whom that may be) or manufactured or sold or exposed in Australia. 51 The second ground of objection in relation to interrogatories 5(a), (b) and (c) is that they require Lynx to answer and speculate as to the actions of third parties to matters of which it may be ignorant of its own knowledge. 52 The response from WorleyParsons to the objections raised by Lynx is somewhat confined. It is in the following terms: Interrogatory 5(a) relates to the extent to which the claimed confidential information was in the public domain as a result of the public use of wagons as pleaded in WorleyParsons' defence and counter-claim (at [37(d)(i)])) and Lynx's amended reply (at [6], [13] and [18]); Interrogatories 5(b)-(d) relate to the defence under s 77(2)(a) of the Copyright Act 1968 (Cth) pleaded in WorleyParsons' defence and counter-claim (at [102(b)(vii)] and at [104(b)(vii)]) and Lynx's reply (at [56(ii)]). 53 There is no doubt that the subject matter on which the interrogatory is pressed is relevant in the sense that it is factual material on which evidence could be adduced in accordance with the pleaded issues. However, that does not address all of the objections raised by Lynx. 54 I am not persuaded by the design argument advanced by Lynx. The entire proceeding (or several proceedings) turn on expert evidence of a highly technical nature. Such evidence underlies the claim advanced by Lynx. 55 However, I accept the submission that it requires Lynx to answer and speculate as to the actions of third parties in matters of which it may be ignorant of its own knowledge. 56 It appears to me that interrogatories 5(b) and 5(c) do not suffer from this deficiency because they relate expressly to use with the consent of Lynx. I allow those interrogatories. 57 As to 5(d), I am not persuaded that the interrogatory is vexatious because it does not relate to any specific matter pleaded or particularised by WorleyParsons to destroy Lynx's alleged confidentiality. The exchanged pleadings are capable, it appears to me at this stage, of embracing reference to that drawing. I have already rejected the design argument by Lynx (at least for the present purposes). No objection has been raised on the basis of speculation as to the actions of third parties. 58 Accordingly, I would allow interrogatory 5(d).

CONCLUSION 59 Accordingly, for those reasons, with the exception of the words '… and where …' in interrogatory 1(b) and with the exception of interrogatory 4 and interrogatory 5(a), leave is granted to the fourth respondent to administer interrogatories to the applicant in the form annexed to the fourth respondent's minute of proposed orders dated 17 November 2010. 60 WorleyParsons has been largely successful in its motion. In addition to granting leave to administer the interrogatories, I will provide that unless submissions to the contrary are filed within 10 days, Lynx is to pay WorleyParsons' costs of the motion, to be taxed if not agreed. I certify that the preceding sixty (60) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice McKerracher.

Trade Practices Act 1974(Cth)

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Judgment (27 paragraphs)

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Cases Cited (18)

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