Polaris Communications Pty Ltd v Dynamic Hearing Pty Ltd

Discovery 4 Polaris' motion seeks orders for further discovery incident upon the amendment. However, as I understood the course of argument, it was agreed that the Court did not need to make such orders because the parties would comply with their continuing obligation to make discovery. The proper course is for the amendments to be made, amended defences to be filed, and outstanding discovery to be then dealt with.

Liability and quantum 5 Polaris seeks an order that liability be determined separately from quantum. The respondents oppose this course. In my view Polaris should have the order it seeks. To date the conduct of the proceeding has focused solely on issues of liability. No discovery has been provided relating to the respondents' distribution of the comparison report. The lay and expert evidence that will be required to determine the issue of liability will be quite different from that required to determine the quantum of damages. There is no overlap of the kind referred to in Novartis AG v FH Faulding & Co Ltd (2004) 62 IPR 530 at [15]. Obviously there will be a saving of costs relating to quantum if Polaris fails on liability. Further, damage is not a component part of any cause of action pleaded. The issues of liability and quantum are distinct. The first deals with the content of the comparison report. The second with the consequences of its distribution. Finally, I accept Polaris' submission that any enquiry as to damages will be best undertaken following the grant of an injunction restraining further publication, since this will provide an "end point" for the damages assessment.

Experimental evidence 6 Polaris sought directions under Order 58 rule 31 of the Federal Court Rules in relation to the conduct of an experiment and experimental proof to be tendered as evidence. Polaris' counsel reluctantly came to accept the respondents' submission that Order 58 rule 31 was available only in intellectual property proceedings as defined. It was agreed that this was not such a proceeding. Counsel then invited the Court to give directions for experimental proof in exercise of its "ordinary" jurisdiction to control the conduct of litigation. The form of such an order was not explored, and the respondents did not join issue on this fall back position. In the circumstances, I do not pursue it.

Production of Soundshield device 7 The notice of motion seeks an order that the respondents deliver to Polaris the Soundshield device used by Dynamic in the test reported in the comparison document. This was pursued only against Dynamic. It appears from Polaris' written submissions in response that at the time the notice was filed, it was Polaris' understanding that the device was in Dynamic's possession. Dynamic says that it is no longer in its possession, though it once was. Polaris does not now seek an order for production. Rather it asserts that the circumstances of Dynamic's loss of possession should be disclosed in a list of documents. Although the notice of motion does not refer to the ADRO device, Polaris makes the same submission in relation to it. In the circumstances I do not need to pursue this issue.

Confidentiality undertakings 8 Confidentiality undertakings were given by Polaris in August 2006 when pre‑issue discovery was given by consent to Dynamic and Plantronics. Plantronics has waived the bulk of its claims to confidentiality, but has redacted client identification information. Polaris does not contest the redaction, at least in relation to the liability aspects of the case. Dynamic continues to assert confidentiality in relation to documents 1, 3 to 12, 14, 15, 18, 19, 20 and 24 in the Lists of Documents sworn on 10 May and 29 September 2006 (the confidential documents). 9 In her affidavit Polaris' solicitor has explained why Polaris needs unfettered access to the confidential documents. She expresses the opinion, having examined them, that they do not appear to disclose trade secrets or other commercially sensitive information the disclosure of which to Polaris for the purposes of the litigation could prejudice Dynamic. As to the Ethics Committee documents (15, 18, 19 and 24) the solicitor deposes as follows: "my review of the documents indicates that much of the information contained in them is now publicly available or available to Polaris through discovery. For example, the general background to and aims of Dynamic is published on its website and the hypothesis and aims of the proposed research contained in document 15 are similar to those contained in the earlier versions of the comparison report which have been discovered in the proceeding. Further, Dynamic evidently did not consider that the information in document 15 contained any commercial or patentable information at the time that the document was submitted, as it did not submit that information separately and mark the document 'Commercial in confidence' as it was invited to do. Finally, the information disclosed is for research that had a proposed commencement date of July 2003 and a proposed date of completion of December 2005. Thus if any of the information was commercially sensitive at the time the document was prepared it is likely that this is no longer the case." 10 Dynamic filed no affidavit in response to the motion. Its written Outline of Submissions does not mention Polaris' claim to be released from confidentiality. Its counsel's oral submissions did not directly deal with the confidential documents. However, when addressing the question of further discovery, reference was made to additional Ethics Committee documents listed in the addendum to the "Further Discovery" heading of his written submissions. The relevant part of the addendum lists twenty documents, including documents 15, 18 and 19. As to the list as a whole, counsel said: "They relate to other areas of enquiry which do have a certain degree of commercial value to them. Now that value does tend to lessen over time, seeing that we are now in 2007, but there are elements of the proposals and the reports that go to the Ethics Committee that do not relate to anything to do with SoundShield and in these circumstances my client wishes to reserve its position with respect to maintaining issues of privilege because they are commercially sensitive and they would give a commercial advantage to a competitor to know what my client is working on or considering to do." 11 I have inspected the confidential documents. Documents 3, 10, 11 and 12 have been discovered by Plantronics. They have been released from confidentiality by orders made by consent on 29 August 2006 except in so far as they disclose client names. Dynamic did not oppose Plantronics' release of its documents from confidentiality. Indeed it consented to its doing so. In those circumstances, together with the fact that Dynamic has not filed any material in opposition to the release sought, Polaris should be released from its undertaking in relation to these documents. 12 Document 5 is a document recording a telephone enquiry received by Dynamic from Mr Dillon of the National Acoustic Laboratories in relation to the test results. The content of the document is plainly relevant to Polaris' claim. I cannot see anything in it that justifies a confidentiality claim. The release should apply to it. 13 Document 20 is the version of the Telstra specification used by Dynamic (TT4). It is one of the industry standards. It is described on its cover as an "Uncontrolled Document". There is nothing in the document that justifies a claim by Dynamic to confidentiality. The release should apply to it. 14 Document 15 is one of the Ethics Committee documents. It is a letter from Dynamic to the Committee enclosing an application for approval of a research project entitled "Investigations with digital signal processing strategies in audio applications for normally hearing listeners and individuals using hearing aids". Parts 1 and 2 of this document ("Background/Aims" and "Significance") are accepted by Polaris as confidential. This meets Dynamic's concern expressed in the passage quoted at [10]. The balance of the document (experimental protocols, risks/safeguards, external support, potential conflict of interest) is not confidential. 15 Document 18, another Ethics Committee document, is a letter from Dynamic to the Committee enclosing an annual progress report for the research project. This consists of a half page progress report, expressed in general terms. Unaided by any submissions from Dynamic as to the confidentiality of this particular document (cf the passage quoted at [10]), I conclude that it is not confidential. The document also contains a list of publications by Dynamic: three public presentations to professional bodies in the United States and one in an American Journal of Audiology. These are not confidential. 16 Document 19 contains notes of a phone call made by Peter Blamey of Dynamic to Kerryn Baker of the Committee. It records Ms Baker informing Professor Blamey that Polaris had made an enquiry of her as to information she told Polaris was confidential and would not be disclosed to it. However, the document does not itself contain any confidential information. 17 Document 24 is a letter of 21 June 2006 from Professor Blamey to Ms Baker enclosing the annual progress report on the project. However the report is not part of the document. All the reader derives from the document is that progress has been very good, and there have been four unidentified presentations since the last approval. None of this is confidential.

ORDERS 18 Polaris should have orders to the effect of those sought in pars 1 to 3, 7 to 9, 10 and 14 to 17 of Polaris' proposed orders. Otherwise the motion is dismissed. I certify that the preceding eighteen (18) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Sundberg.

Counsel for the Applicant: C Golvan SC and S Gatford

Solicitors for the First Respondent: Ebsworth and Ebsworth

Solicitors for the Second Respondent: Allens Arthur Robinson

Date of Hearing: 27 April 2007