procedural. The Court granted leave to issue subpoenas to Jim Ellison and Max Rudman, appointed James Emmett as examiner under r 24.3 of the Uniform Civil Procedure Rules 2005 (NSW), required compliance with...
Key principles
Under ss 32 and 33 of the Evidence on Commission Act 1995 (NSW), the Court could make provision for examination of people in Australia and production of documents for proceedings...
The Court identified the requirements as an application pursuant to letters of request issued outside New South Wales, evidence sought for proceedings instituted outside New...
Having found that the New Jersey proceedings were civil, that the letters of request came from the New Jersey Court, and that the evidence was sought for use in those...
Issues before the court
Whether the Court had a statutory basis to facilitate witness examinations and document production in aid of the US proceedings.
Whether and on what terms the witnesses could be examined for use in the US proceedings.
How documents produced under the subpoenas could be accessed, copied and protected as confidential.
Plain English Summary
Nanotech asked the NSW Supreme Court to help obtain evidence in Australia for a civil case in New Jersey. The Court accepted that the required foreign letters of request existed, that the evidence was for the US case, and that the case was civil. It therefore allowed subpoenas for two witnesses, set conditions for their examination and the handling of documents, and protected material marked confidential through limits on disclosure. The decision concerned evidence-gathering procedure, not whether either party was right about the underlying distribution dispute.
AI-generated legal information, not legal advice. Zoe can make mistakes. Check the cited source, and for advice about your situation consult a qualified Australian lawyer.
Deep Dive
1,790 words · generated 30/09/2026
What happened
In Nanotech Industrial Solutions Inc v Nanoteko Pty Ltd [2020] NSWSC 1285, the Supreme Court of New South Wales considered an ex parte application for assistance in obtaining evidence for civil proceedings in the United States District Court for the District of New Jersey. Rothman J’s reasons explain orders made on 3 September 2020, with the decision published on 22 September 2020.
Cited legislation
2 cited instruments linked from this judgment.
Nanotech, a US-based company trading in petroleum additives, had entered into a distribution agreement with Nanoteko on 13 March 2017. The agreement gave Nanoteko exclusive rights to distribute NanoLub products in Australia, New Zealand and Papua New Guinea. The judgment records that Nanotech relied on testing by the Southwest Research Institute and Singleton Council, which it said demonstrated the additives’ effectiveness in reducing fuel consumption and emissions. Nanoteko later commissioned testing by Test Safe Australia and Orbital Australia, and claimed those results differed from the earlier results.
In 2018, Nanoteko commenced proceedings in New Jersey, alleging that Nanotech breached the distribution agreement by making false representations about the products’ effectiveness. Nanotech denied acting fraudulently and counterclaimed against Nanoteko. Those allegations and counterclaims were background to the NSW application, not matters Rothman J decided.
The NSW application sought permission to subpoena Jim Ellison and Max Rudman to give evidence and produce documents. Ellison had been employed by Techonomics, described in the judgment as a company that marketed and distributed Nanotech’s products. Rudman was a director and shareholder of Nanoteko and was believed to have had an earlier relationship with Nanotech through Turbo Best (Asia) Ltd.
The orders allowed examination of both witnesses on specified topics, appointed James Emmett of the NSW Bar as examiner, and permitted US counsel for the parties in the New Jersey action to conduct oral examination, cross-examination and re-examination, either in person or by video conference. The Court also made orders governing document inspection and confidentiality. It did not determine the merits of the US claims or counterclaims.
Why the court decided this way
The central issue was whether the statutory requirements for evidence to be taken in New South Wales for use in foreign proceedings were satisfied. Rothman J identified ss 32 and 33 of the Evidence on Commission Act 1995 (NSW) as the source of power to make provision for examination of Australian citizens and to compel document production for proceedings outside Australia.
The judgment drew on Application by the Attorney-General for the State of New South Wales under the Evidence on Commission Act 1995 [2016] NSWSC 862 for three criteria: an application pursuant to letters of request issued outside New South Wales; evidence sought for proceedings instituted outside New South Wales; and proceedings in the foreign court that are civil rather than criminal. These are set out in the judgment’s consideration of s 32.
Rothman J made an express finding on each requirement. First, letters of request had been issued by the New Jersey Court. Second, the evidence Nanotech sought was for use in the US proceedings. Third, those proceedings were civil, not criminal. On that basis, the Court concluded the statutory threshold was met.
The judgment then addressed the arrangements for obtaining the evidence. It appointed an examiner under r 24.3 of the Uniform Civil Procedure Rules 2005 (NSW) and directed Nanotech to comply with r 24.7. It also referred to Jonathan Paul Eyewear, Inc [2015] NSWSC 134, where an examiner had been appointed and the participation of US attorneys by video call was accepted. Rothman J noted that Nanotech’s US attorneys wished to participate and that the proposed adjournment to 2021 would allow the COVID-19 situation and travel issues to be monitored.
The resulting orders were detailed. They specified examination topics for Rudman and Ellison, including product testing, sales and marketing, the witnesses’ industry experience and relevant communications. They permitted oral examination, including cross-examination and re-examination. The orders also allowed Brenden Miller to access, inspect and copy documents produced to the Court for forwarding to Nanotech’s US counsel. Documents claimed as confidential had to be prominently marked, and disclosure of marked material was restricted to the examiner, Nanotech and its legal representatives, and the witnesses and their legal representatives.
Before and after state of the law
This judgment does not announce a general change in the law. Its function is procedural: it applies statutory and procedural provisions to a particular request for assistance with evidence in foreign civil proceedings.
The legal framework described by Rothman J was already set out in ss 32 and 33 of the Evidence on Commission Act 1995 (NSW), and the criteria were taken from the 2016 NSW Supreme Court decision cited in the reasons. The judgment’s contribution is its application of that framework to the letters of request and evidence sought for the New Jersey proceedings.
The reasons also refer to Jonathan Paul Eyewear, Inc [2015] NSWSC 134 in connection with appointing a member of the NSW Bar as examiner and allowing US lawyers to participate by video call. Rothman J used that earlier decision as a procedural reference point. The decision does not suggest that a new test for video participation was created, nor does it make a broad statement about when such participation must be permitted.
After the orders, the practical position in this case was that the parties could pursue the specified evidence-gathering process in New South Wales, subject to the stated conditions. The orders did not resolve the substantive dispute about alleged representations, test results, breach of contract or damages. They also did not decide whether any particular evidence would ultimately be admissible or persuasive in the US proceedings.
Key passages with plain-English translation
The judgment states: “This Court has the power under sections 32 and 33 of the Evidence on Commission Act 1995 (NSW) to make provision for the examination of Australian citizens and to compel them to produce documents for the purposes of proceedings outside of Australia.” In plain English, the NSW Court identified state legislation as the basis for helping a foreign court obtain testimony and documents from people in New South Wales.
Rothman J then stated that he was satisfied there were letters of request from the New Jersey Court, that the evidence was sought for the US proceedings, and that those proceedings were civil rather than criminal. This is the key application of the statutory criteria: the Court did not rely solely on the existence of a foreign dispute, but recorded findings on each of the requirements it had identified.
The order appointing James Emmett as examiner under UCPR r 24.3 established the person responsible for conducting the examination in the NSW process. The direction that Nanotech comply with r 24.7 made compliance with that rule part of the ordered procedure. The reasons do not explain the detailed content of r 24.7, so the judgment should not be read as supplying any additional description of that rule.
The examination topics show the connection the Court accepted between the requested evidence and the US proceedings. For Rudman, the subjects included the earlier Turbo Best agency agreement, communications about Nanotech’s products, the reasons for entering into the distribution agreement, alleged representations about emissions and fuel consumption, and his role and experience. For Ellison, the topics included employment responsibilities, product development and marketing, product testing and industry experience.
Finally, the confidentiality orders drew a distinction between documents claimed as confidential and other material. Marked documents could not be disclosed beyond the specified group. These were case-specific controls imposed alongside the permission to inspect and copy produced documents; they did not amount to a general ruling about confidentiality in other cases.
What fact patterns trigger this precedent
The decision is relevant to a procedural situation in which a party seeks assistance from a NSW court to obtain evidence in NSW for use in proceedings outside Australia. The factual features that mattered here were that the foreign proceedings had been instituted, the request was supported by letters of request issued by the foreign court, and the proceedings were civil.
The judgment may be useful as a comparison where a party seeks witness examination and document production for a foreign civil case, and needs orders addressing who will conduct the examination, the topics to be covered, the participation of foreign counsel, and how produced documents will be accessed. The decision’s orders provide an example of those procedural matters being dealt with together.
Its relevance is narrower if the proposed request lacks one of the statutory features identified by Rothman J. The reasons do not decide how the Court would respond if there were no letters of request, if the evidence were not sought for instituted proceedings, or if the foreign matter were criminal. Nor does the judgment set out a general approach to disputes about the scope or burden of particular subpoenas. Those questions would require examination of the applicable provisions and any further relevant authority.
How later courts have treated it
The supplied judgment does not discuss any later judicial treatment of Nanotech Industrial Solutions Inc v Nanoteko Pty Ltd. It was decided in September 2020, and the reasons identify only two earlier decisions: the 2016 Application by the Attorney-General decision, used for the statutory criteria, and Jonathan Paul Eyewear, Inc [2015] NSWSC 134, referred to in relation to examiner appointment and US counsel participation.
Accordingly, this judgment alone cannot establish whether later courts have followed, distinguished, questioned or otherwise treated it. Any assessment of subsequent treatment would require later judgments or a reliable case-law database, neither of which forms part of the material considered here. The safe source-grounded point is that Rothman J applied the cited statutory criteria and made procedural orders on the facts before the Court.
Still-open questions
The reasons are brief and focused on the statutory threshold and orders. They do not explain in detail how the proposed scope of each subpoena was assessed, or whether any particular category of requested documents was contested. The defendant was absent, and the application was ex parte, so the judgment does not record an adversarial challenge to the request.
The judgment also does not decide questions about the eventual admissibility, weight or use of the evidence in the New Jersey proceedings. Nor does it determine the underlying contractual or alleged misrepresentation dispute. Those matters remained for the US proceedings.
The orders anticipated examination on a date to be allocated in 2021 and provided for possible participation by video conference. The reasons refer to the COVID-19 situation and travel issues as relevant to timing, but do not record what examination arrangements were ultimately made.
This is general legal information, not legal advice. Zoe can make mistakes. Before acting on or relying on this analysis, have it checked by a qualified Australian lawyer.
Judgment (5 paragraphs)
[1]
ed "CONFIDENTIAL".
(9) The plaintiff not disclose or allow to be disclosed any such document marked "CONFIDENTIAL" or its contents or substance or any copies or extracts thereof to any other person other than:
(a) The examiner
(b) The plaintiff and its legal representatives; and
(c) The witnesses and their legal representatives.
(10) Matter be re-listed on 8 March 2021 for allocation of a date or dates for the examination.
Catchwords: EVIDENCE - evidence on commission - letters of request issued from New Jersey court in USA - evidence for use in USA proceedings - foreign proceedings are civil - examiner appointed - documents to be produced and deposition evidence obtained by subpoena
Legislation Cited: Evidence on Commission Act 1995 (NSW), ss 32, 33
Uniform Civil Procedure Rules 2005 (NSW), rr 24.3, 24.7
Cases Cited: Application by the Attorney-General for the State of New South Wales under the Evidence on Commission Act 1995 [2016] NSWSC 862
Jonathan Paul Eyewear, Inc [2015] NSWSC 134
Category: Procedural and other rulings
Parties: Nanotech Industrial Solution Inc (Plaintiff)
Nanoteko Pty Ltd (Defendant)
Representation: Garland Hawthorne Brahe Solicitors (Plaintiff)
Ex parte (Defendant)
File Number(s): 2020/00234708
[2]
Judgment
HIS HONOUR: Before the Court is an ex parte application brought by the plaintiff, Nanotech Industrial Solutions Inc, which seeks orders for the examination of certain witnesses and that leave be granted to issue subpoenas to those persons to produce documents and to give evidence.
The Court, as presently constituted, sitting as the Duty Judge, made orders in accordance with a short minute that was provided by the plaintiff, on 3 September 2020. These are the reasons for those orders.
[3]
Background
The plaintiff is an American based company trading in petroleum additives.
The defendant, Nanoteko Pty Ltd, is an Australian company trading as a distributor of products such as those manufactured by the plaintiff.
The defendant entered into a distribution agreement with the plaintiff on 13 March 2017 to distribute exclusively the plaintiff's products ("NanoLub products") in Australia, New Zealand and Papua New Guinea (the "distribution agreement").
The plaintiff engaged the Southwest Research Institute and Singleton Council to conduct testing on Nanolub products. These tests demonstrated the effectiveness of the additives in reducing fuel consumption and emissions. Test results were provided by the plaintiff to the defendant prior to entering into the agreement
After entering into the distribution agreement, the defendant engaged two additional testing companies to complete tests on the Nanolub products. These companies were Test Safe Australia and Orbital Australia.
The defendant claims that the test results from Test Safe Australia and Orbital Australia presented different results to the results from the Southwest Research Institute and the Singleton Council.
In 2018, the defendant commenced proceedings in the United States District Court for the District of New Jersey ("New Jersey Court") claiming that the plaintiff breached the distribution agreement by allegedly making false representations about the effectiveness of Nanolub products (the "US proceedings"). The defendant now claims damages for the plaintiff's alleged conduct.
The plaintiff denies it acted fraudulently, and subsequently counter-sued the defendant for breach of contract, breach of the implied covenant of good faith and fair dealing, and unjust enrichment.
Before the Court is a Complaint and Jury Demand filed in the New Jersey Court, which summarises the US proceedings.
By its Summons filed in this Court on 12 August 2020, the plaintiff seeks that:
1. An examination of Jim Ellison and Max Rudman occurs on a date to be fixed in 2021; and
2. Leave be granted to issue Subpoenas to Attend to Give Evidence and to Produce to Jim Ellison and Max Rudman, in accordance with proposed subpoenas annexed to the Summons.
In support of the application, the plaintiff relies on two Affidavits of Brenden John Miller sworn 31 July 2020 and 2 September 2020.
[4]
Consideration
This Court has the power under sections 32 and 33 of the Evidence on Commission Act 1995 (NSW) to make provision for the examination of Australian citizens and to compel them to produce documents for the purposes of proceedings outside of Australia.
To do so, the Court must be satisfied of the following three criteria per Application by the Attorney-General for the State of New South Wales under the Evidence on Commission Act 1995 [2016] NSWSC 862:
1. Section 32(1)(a) requires that the application is made pursuant to letters of request issued outside of New South Wales;
2. Section 32(1)(b) requires that the evidence to which the application relates is to be obtained for the purposes of proceedings which have been instituted outside of New South Wales; and
3. Section 32(2) requires that the proceedings in the court outside of New South Wales are civil, not criminal, in nature.
In the present proceedings, I am satisfied that:
1. There are letters of request, within the meaning of s 32(1)(a), from the New Jersey Court;
2. The evidence the plaintiff seeks is for use in the US proceedings; and
3. The US proceedings are civil not criminal.
In Jonathan Paul Eyewear, Inc [2015] NSWSC 134, Hall J granted orders for the examination of a New South Wales resident to be used in proceedings in the County Court of Texas in the United States of America.
His Honour ordered that the examiner be a member of the New South Wales Bar pursuant to r 24.3 of the Uniform Civil Procedure Rules 2005 (NSW). In the present case, the plaintiff seeks that Mr Emmett of Counsel be appointed as the examiner.
In Jonathan Paul Eyewear at [37], Hall J also accepted the plaintiff's assertion that it would support the just, quick and cheap administration of justice for the US attorneys for the plaintiff to be present via video call to assist in the examination process. In the present case, the plaintiff's US attorneys wish to be present for the examination and so the plaintiff seeks that the matter be adjourned to 2021 so that the COVID-19 situation can be monitored and an appropriate date appointed subject to travel issues.
For the foregoing reasons, I made the following orders on 3 September 2020:
1. Leave be granted to the plaintiff to issue Subpoenas to Give Evidence and Produce addressed to Jim Ellison and Max Rudman (the "witnesses") in the form annexed to the Summons (Subpoena to Attend to Give Evidence and Produce).
2. A sealed copy of these orders be served on the witnesses concurrently with service of the Subpoena to Attend to Give Evidence and Produce no later than 30 September 2020.
3. James Emmett of the New South Wales Bar (the "examiner") be appointed as examiner pursuant to r 24.3 of the Uniform Civil Procedure Rules 2005 (NSW) (the "UCPR").
4. The plaintiff comply with r 24.7 of the UCPR.
5. The examiner conduct the examination at the offices of Garland Hawthorn Brahe Solicitors on a date to be allocated in 2021.
6. At the examination, oral examination (including cross-examination and re-examination, either in person or by video conference) of the witnesses be permitted to be conducted by the US counsel for the parties in Civil Action Number 2:18-CV-05214-SRC-CLW Nanoteko Pty Ltd - Plaintiff v. Nanotech Industrial Solutions Inc, Defendant pending before the District Court for the District of New Jersey in the United States of America (the "US Proceedings") on the following subject matter:
1. Max Rudman:
1. The agency agreement between Turbo Best (Asia) Ltd and Nantotech;
2. Communications with employees or agents of Techonomics regarding the plaintiff's products;
3. Initial contact with Mr Beville and Mr Hurwitz and the information provided about the plaintiff and its products;
4. Reasons why Mr Rudman wished to enter into the agreement with the plaintiff;
5. Representations made by the plaintiff regarding reduction of emissions and fuel consumption;
6. Mr Rudman's duties as a director of the defendant, including but not limited to his duties and responsibilities, involvement in product development, sales and marketing of NanoLub products; and
7. Mr Rudman's knowledge of and experience with the lubricant industry including oils, greases and additives.
1. Jim Ellison:
1. Mr Ellison's duties and responsibilities whilst employed by the defendant and Techonomics;
2. Mr Ellison's knowledge and involvement in product development, sales and marketing of NanoLub products;
3. Mr Ellison's knowledge and involvement in product testing (including testing by Test Safe Australia, the Singleton Council and any other testing or proposed testing on NanoLub products); and
4. Mr Ellison's knowledge of and experience with the lubricant industry including oils, greases and additives.
1. In respect of any document produced pursuant to the Subpoena to Attend to Give Evidence and Produce which access is granted (the "documents"), Brenden Miller of Garland Hawthorn Brahe Solicitors be at liberty to access, inspect and take copies of the documents produced to the Court for forwarding to the US counsel for Nanotech in the US proceedings.
2. All documents annexed or exhibited to affidavits and any other document as may be produced or filed by the plaintiff during the course of these proceedings and are claimed as confidential be prominently marked "CONFIDENTIAL".
3. The plaintiff not disclose or allow to be disclosed any such document marked "CONFIDENTIAL" or its contents or substance or any copies or extracts thereof to any other person other than:
1. The examiner
2. The plaintiff and its legal representatives; and
3. The witnesses and their legal representatives.
1. Matter be re-listed on 8 March 2021 for allocation of a date or dates for the examination.
[5]
Endnote
Mr Beville and Mr Hurwitz were involved with Beville Group, which is an investor in venture capital projects and provided seed capital to the defendant.
DISCLAIMER - Every effort has been made to comply with suppression orders or statutory provisions prohibiting publication that may apply to this judgment or decision. The onus remains on any person using material in the judgment or decision to ensure that the intended use of that material does not breach any such order or provision. Further enquiries may be directed to the Registry of the Court or Tribunal in which it was generated.
Decision last updated: 22 September 2020
The Court granted leave to issue subpoenas to Jim Ellison and Max Rudman, appointed James Emmett as examiner under r 24.3 of the Uniform Civil Procedure Rules 2005 (NSW), required compliance with r 24.7, authorised examination on specified topics including cross-examination and re-examination by US counsel, made document-access and confidentiality orders, and listed the matter for 8 March 2021 to allocate examination dates.
Jim Ellison was employed at "Techonomics", a company that marketed and distributed the plaintiff's products. The plaintiff's legal representatives in the United States of America wish to depose Mr Ellison on the following subject matter;
1. Mr Ellison's duties and responsibilities whilst employed by the defendant and Techenomics;
2. Mr Ellison's knowledge and involvement in product development, sales and marketing of Nanolub products;
3. Mr Ellison's knowledge and involvement in product testing (including testing by Test Safe Australia, the Singleton Council and any other testing or proposed testing on Nanolub products); and
4. Mr Ellison's knowledge of an experience with the lubricant industry including oils, greases and additives.
Max Rudman is a director and shareholder of the defendant. Mr Rudman is also believed to have had a prior relationship with the plaintiff through another company, Turbo Best (Asia) Ltd, which had an agency agreement to resell and distribute the plaintiff's products in Oceania.
The plaintiff's legal representatives in the United States of America wish to depose Mr Rudman on the following subject matter:
1. The agency agreement between Turbo Best (Asia) Ltd and the plaintiff;
2. Communications with employees or agents of Techenomics regarding the plaintiff's products;
3. Initial contact with Mr Beville and Mr Hurwitz, [1] and the information provided about the plaintiff and its products;
4. Reasons why Mr Rudman wished to enter into the distribution agreement with the plaintiff;
5. Representations made by the plaintiff regarding reduction of emissions and fuel consumption;
6. Mr Rudman's duties as a director of the defendant, including but not limited to his duties and responsibilities, involvement in product development, sales and marketing of Nanolub products; and
7. Mr Rudman's knowledge of and experience with the lubricant industry including oils, greases and additives.
The proposed subpoena to Max Rudman seeks production of the following documents:
1. Any and all correspondence between Max Rudman and Rael Hurwitz, John Beville, Jim Ellison or any other employees, representatives and agents of the defendant;
2. Correspondence involving Max Rudman and Chris Adsett or any other employees, representatives or agents of Techenomics concerning Nanolub products, including but not limited to testing;
3. Correspondence and documents that refer or relate to testing or proposed testing of Nanolub products, including but not limited to testing performed by the Singleton Council, Test Safe Australia, and Orbital Australia;
4. Reports or documentation concerning Nanolub products;
5. Documents that refer or relate to sales or marketing of Nanolub products;
6. All documents compiled or reviewed in conjunction with blending of Nanolub products;
7. Any due diligence performed on any of the plaintiff's products, including but not limited to Nanolub products, in conjunction with the distribution agreement or the agreement to distribute Nanotech Industrial Solutions Pty Ltd's products by Turbo Best (Asia) Ltd.
The proposed subpoena to Jim Ellison seeks production of the following documents:
1. Any and all correspondence between Jim Ellison and Rael Hurwitz, John Beville, Max Rudman or any other employees, representatives and agents of the defendant;
2. Correspondence and documents that refer or relate to testing or proposed testing of Nanolub products, including but not limited to testing performed by the Singleton Council, Test Safe Australia, and Orbital Australia;
3. Reports or documentation concerning Nanolub products;
4. Documents that refer or relate to sales or marketing of Nanolub products;
5. All documents compiled or reviewed in conjunction with blending of Nanolub products;
Before the Court are the Commissions for the Out of State Examination of Max Rudman and Jim Ellison, both dated 6 January 2020, together with the letters of request issued by the solicitors for the plaintiff in the United States of America, discharged by her Honour Cathy L. Waldor U.S.M.J (Annexures A and B to the Affidavit of Brenden John Miller, sworn 31 July 2020).