The Operation of Order 15A Rule 6
13 Order 15A has its ancestry in the Bill of Discovery which was available in equity provided that it was "filed in aid of some proceedings either pending or intended". Allegations to that effect were required as "a court of equity did not compel discovery for the mere gratification of curiosity" - Bray, Law of Discovery and Digest (1885), Legal Book Pty Ltd (1985) p 611. Objections could be made to such a Bill including the objection that the party seeking discovery had not the character or interest which he alleged himself to have and that the proceedings in respect of which the delivery was sought were not maintainable - Bray p 615-616. The continuing availability of discovery as an equitable remedy was discussed in Norwich Pharmacal Co v Customs and Excise Commissioners [1974] AC 133. Lord Reid observed:
"Discovery as a remedy in equity has a very long history. The chief occasion for its being ordered was to assist a party in an existing litigation. But this was extended at an early date to assist a person who contemplated litigation against the person from whom discovery was sought, if for various reasons it was just and necessary that he should have discovery at that stage." (173)
See also at p 191 (Lord Cross of Chelsea). The action for discovery was evidently available in all equitable jurisdictions in the Australian States - Branson, Pre-action, Subsequent and Third Party Discovery in Zariski (ed) Evidence and Procedure in a Federation LBC (1993) pp 108-110.
14 Pre-action discovery in equity covered discovery for the purpose of ascertaining the identity of a possible respondent to proceedings (identity discovery) and discovery for the purpose of obtaining information from a prospective respondent (information discovery). There is a question whether the Bill of Discovery would now be available for "information discovery" - Airservices Australia v Transfield Pty Ltd (1999) 92 FCR 200 at 205 (Finn J). The question seems however to be largely academic as the same results can be obtained through rules of court of the kind set out in O 15A which are now available in all State jurisdictions except Queensland and Tasmania - Airservices at 204-205; Hooper v Kirella Pty Ltd (1999) 96 FCR 1 at 10.
15 In the Federal Court, O 15A is an exercise of the rule making powers conferred on the judges of the Court by s 59 of the Act. The Full Court in Hooper set out some general propositions about O 15A derived from earlier authorities as follows:
1. The power conferred by O 15A r 6, if valid, is to be construed beneficially as befits remedial legislation - Paxus Services Ltd v People Bank Pty Ltd (1990) 99 ALR 728.
2. Information discovery under O 15A r 6 is available only against the person in respect of whom there is reasonable cause to believe that the applicant has or may have the right to obtain relief in the Court. That person must be someone whose description has been ascertained.
3. It follows from the language of O 15A r 6 that the rule can apply only before substantive proceedings have been instituted. After proceedings have commenced the rule ceases to apply.
4. An applicant must satisfy each of the conditions specified in pars (a), (b) and (c) of O 15A r 6 in order to obtain an order for information discovery.
5. Order 15A r 6(a) poses an objective test, namely, whether there is reason to believe that the applicant has or may have the right to obtain relief from the prospective respondent. While it is not necessary for the applicant to demonstrate a prima facie case it is not enough merely to assert that there is a case against the prospective respondent - see also Hodder & Associates Pty Ltd v National Mutual Trustees Ltd [1999] FCA 708 at par [17] (Weinberg J) and at par [16] where it was said:
"R6 is designed to enable an applicant, in a situation where his proof can rise no higher than the level the rule describes, to ascertain whether he has a case against the prospective respondent."
6. An order may be made in favour of an applicant who already has available evidence establishing a prima facie case for the grant of relief. But the applicant, after having made all reasonable inquiries, must not have sufficient information to enable a decision to be made whether to commence a proceeding in the Court to obtain relief against a prospective respondent: see (b). The absence of sufficient information is to be assessed objectively: Alphapharm Pty Ltd v Eli Lilly Australia Pty Ltd (24 May 1996, unreported) at 31.
16 It is also of importance to keep in mind that O 15A r 6 confers upon the Court a discretion to be exercised when the conditions of "reason to believe" in relation to the right to obtain relief, the making of "all reasonable inquiries", the possession of "insufficient information" to enable a decision to be made, and reasonable cause to believe the prospective respondent to have the relevant documents are satisfied. The discretion to order preliminary discovery when these conditions are fulfilled is a discretion and not an obligation - Glowatzky v Insultech Group Pty Ltd (1997) 39 IPR 215 at 220 (Branson J). The power conferred by the rule enables the Court to "penetrate obscurities and uncertainties in the interests of justice" and should not be "weakened by restrictive and unnecessary glosses" - Paxus Services Ltd v Peoples Bank Ltd at 733 (Burchett J). But as his Honour said in that case:
"[t]he proper brake on any excesses in its use is the discretion of the court, which is required to be exercised in the particular circumstances of each case."
Lindgren J said in Alphapharm:
"…for better or for worse, pre-action discovery, whether documentary or oral does not characterise the adversary system as administered in Australian courts and provisions such as that in O 15A r 6 afford only a limited exception to the general position."
17 Order 15A r 6 is not to be applied to provide discovery as though the relevant proceedings had been commenced and pleadings in place to find the issues. Pre-action discovery is limited to serving the purposes of the rule. To that extent cases about the scope of discovery available in patent litigation such as The Wellcome Foundation Ltd v VR Laboratories (Aust) Pty Ltd (1981) 148 CLR 262 and, more recently, F Hoffmann-La Roche AG v Chiron Corporation (2000) 171 ALR 295, are of only limited assistance.
The Case for Discovery
18 In his affidavit evidence, Mr Baddeley said he had read and understood the complete specification for Patent 692957. He identified as features central to the invention claimed:
. a patch bag having the patch formed from a particular polymer film;
. the polymer film forming the patch is a heat shrinkable homogenous ethylene/alpha-olefin copolyner film;
. the film is adhered to the substrate film.
He had also considered prior art documents being:
1. US Patent 4755403 dated 5 July 1988 which relates to "a protective patch for a biaxially heat shrinkable, thermoplastic vacuum bag for protecting the bag from puncture by sharp protruding bones in bone-in cuts of meat which are vacuum packaged within the bags. The patch is made from multilayer film and comprises a layer of linear low density polyethylene and a layer of ethylene vinyl acetate copolymer. The patch is biaxially heat shrinkable and shrinks with the bag." The assignee of that patent is WR Grace & Co.
2. European Patent Application 600425, filed 29 November 1993 and described as "…directed to a heat-shrinkable, thermoplastic film or bag which contains at least one homogeneous ethylene alpha-olefin copolymer with at least some limited long chain branching. Oriented films made in accordance with the present invention exhibit improved processability as well as improved physical properties such as excellent optics and impact resistance. A homogeneous ethylene alpha-olefin with long chain branching may be present in a monolayer film either alone or in a blend or may be included in one or more layers of a multilayer film in accordance with the present invention. The applicant is WR Grace & Co-Conn.
3. European Patent 662989. The date of filing was 1 October 1993. The invention is described as relating "generally to shrink film compositions having improved properties, particularly improved shrink range, optics, toughness, (low) shrink force, (low) extractables and the like." More specifically, the improved shrink films of the invention are directed to alloys or combinations comprising precise relative amounts of "narrow" melting point polyolefin with a higher melting point polyolefin. The inventors were Messrs. Garza Kneale and Snyder. The patent is held by EI Du Pont De Nemours & Company.
4. European Patent Application 597502. This application was filed on 12 November 1993. It is said to be directed to a heat-shrinkable, thermoplastic film or bag which contains at least one homogeneous ethylene alpha-olefin copolymer having a density of at least 0.90 g/cc. Oriented films made in accordance with the invention exhibiting proved optics and improved impact resistance. A homogeneous ethylene alpha-olefin may be present in a monolayer film either alone or in a blend or may be included in one or more layers or a multilayer film in accordance with the invention. The applicant for the patent was WR Grace & Co-Conn.
According to Mr Baddeley on the basis of his qualifications and experience and his consideration of Patent 692957 and comparing its claims to the matters disclosed by the contents of the prior art documents, he believes that this case has or may have the right to obtain an order pursuant to s 138(3)(b) of the Patents Act 1990, revoking Cryovac's Patent on the grounds that the invention claimed is not a patentable invention. This is said to be by reason of it being arguably obvious to a worker skilled in the art as at the priority date and thus not involving an inventive step and/or not novel as at the priority date.
19 This is as far as Mr Baddeley's evidence went on the merits of the case for possible revocation. He was, he said, "unable to advise Viskase as to whether it should commence proceedings for revocation of the patent". He could not do so without access to the research and development documentation relating to the invention which he would expect to be confidential but believed would or would be likely to reveal what consideration was given by the inventors to the available prior art in the research and development process leading to the invention the subject of the claims of the patent. He would also require access to documents relating to prior commercial dealings, prior use or prior publication by WR Grace & Co-Conn before the priority date of the patent. He would need the opportunity to consider such materials which, by their nature, he believed to be directly relevant to the possible grounds of revocation of the patent for lack of novelty and lack of inventive step and the opportunity to confer with and take the advice of an independent expert retained by Viskase in relation to what any documents produced convey or would probably convey to a non-inventive but skilled worker experienced in the field of the art addressed by the claims of the patent as at the priority date. He asserted his belief that Cryovac has, or is likely to have, or has had, or is likely to have had, possession of documents which are or are likely to be of relevance to a possible challenge to the validity of the patent. These would include:
(a) documents constituting or recording the results of searches and inquiries carried out by Cryovac or its predecessor in title, WR Grace & Co-Conn;
(b) documents relating to research and experimentation of the subject matter of Cryovac's Patent which record or evidence steps taken in the design and development of the invention;
(c) all documents recording or evidencing or otherwise relating to any dealing in trade or commerce by WR Grace & Co-Conn including (but not limited to) any negotiations for or entry into any license or franchise agreement, joint venture arrangement, partnership or other exploiting of the subject matter of any of the claims of the Cryovac Patent before the priority date of 12 December 1994;
(d) copies of all documents relating to any prior disclosure or exhibition to any member of the public;
(e) copies of all prior art documents relating to any of the claims of Cryovac's Patent.
These contentions have a decidedly formulaic tone. They do not strengthen any case for preliminary discovery. They could be made at any time, about any patent, by any patent attorney or legal practitioner familiar with the relevant law.
20 The contention that there is an arguable case itself is little more than that, a conclusion stated by reference to identified prior art but without any accompanying analysis.
21 In an affidavit sworn on 3 July 2000, Andrew Dark, a patent attorney employed by Davies Collison Cave, the patent attorneys for Cryovac, referred to Mr Baddeley's affidavit and the letter of 22 February 2000 to Cryovac from Viskase's solicitors. Following that letter he had considered Patent 692957 and as a result of that consideration filed with the Australian Patent Office on 6 June 2000 a Request to Amend the Complete Specification of the Cryovac Patent together with a Second Statement of Proposed Amendments. A First Statement of Proposed Amendments had been filed in the Patent Office in the course of examination of the Cryovac Patent in response to an examiner's report. The amendments comprising the Second Statement of Proposed Amendments were aimed at clarifying the claims of the Cryovac Patent to more closely define various aspects of the invention claimed in it. They were also aimed at removing any overlap between disclosures in the Cryovac Patent and disclosures in other Cryovac patents which were, at the time of examination of the Cryovac Patent only patent applications, with earlier priority dates than the Cryovac Patent but which were not published until after its priority date. On 14 June 2000, Mr Dark received a letter from the Patent Office informing him that leave to amend the specification in accordance with Regulation 10.5 of the Patent Regulations had been granted. Details of the request were notified in the Official Journal of Patents on 29 June 2000. Mr Dark expressed his opinion that the Cryovac Patent as amended is valid.
22 Mr Dark expressed his belief, contrary to the contention in the Viskase letter of 22 February, that the company already had ample information on which it could have made a decision whether or not to seek revocation of the Cryovac Patent. Given that the Second Statement of Proposed Amendments effectively narrowed the claims of that Patent it should, in his opinion, be easier for Viskase to make a decision whether or not to seek its revocation. In a reply affidavit, Mr Baddeley referred to the amendments which he noted expanded the original thirty claims to seventy five in total as well as effecting numerous internal changes. He said:
"Without the opportunity of being provided access to and inspecting the research and development documentation relating to each and every one of the amended claims, I am unable to properly advise the applicant upon the impact of the various amendments of the claims in terms of whether or not a claim for revocation of the Cryovac Patent is available or not."
Nevertheless he sought directly from the Commissioner of Patents a copy of the Amendment Request form and any supporting documentation. He observed that in Mr Dark's letter to the Commissioner dated 6 June 2000, he had asserted that the amendments were primarily aimed at clarifying the claims to more clearly define various aspects of the invention. But nothing was said about issues of novelty and inventive step of the claims in original form or as amended. No information was provided as to the nature or extent of the "overlap" referred to in Mr Dark's affidavit. Mr Baddeley expressed his belief that there is a reasonable prospect that the amendment request might be opposed by Viskase.
23 Viskase seeks to demonstrate the existence of reasonable cause to believe that it has or may have the right to obtain relief against Cryovac by reference to the opinion of Mr Baddeley. That opinion was essentially a conclusion expressed in the terms of the rule. The conclusion is said to be based upon the prior art referred to but it did not indicate how it was reached. No doubt there are aspects of the prior art that overlap in terms of product and function the claims set out in the Cryovac Patent. But if that prior art does in truth anticipate the Cryovac Patent so as to render it either obvious or not novel there is enough to decide whether to bring a claim for relief. If it does not, because of its context or the relevant priority dates, then it does not show reasonable grounds for believing that the patent is invalid. Mr Baddeley's conclusionary statement, in my opinion, is insufficient to meet the requirements of O 15A r 6(a). On that basis I am not satisfied that either of the conditions set out in r 6(a) or (b) has been satisfied.
24 If I am wrong in that conclusion I would nevertheless not exercise my discretion in favour of making an order. For if I am wrong, on the facts of this case the slender basis for the order sought would, if that order were made, establish a very low threshold for the application of the rule. The rule should not operate to production of information except for good cause shown in terms of the conditions. In respect of patents for inventions, the exercise of the discretion must have regard both to the intrusive nature of the order and the need to encourage research and development unhampered by the prospect of speculative review of working papers by competitors. To allow the remedy in this case based upon formulaic recitations of wide application would set the threshold for pre-action discovery so low that there would be few cases in which a person wishing to challenge a patent could not