Voxson Pty Limited v Telstra Corporation Limited

AND: TELSTRA CORPORATION LIMITED First Respondent

OPTUS MOBILE PTY LIMITED Third Respondent

VODAFONE HUTCHISON AUSTRALIA PTY LIMITED Fifth Respondent

OPTUS NETWORKS PTY LIMITED Sixth Respondent

JUDGE: PERRAM J DATE OF ORDER: 18 JANUARY 2017

1. The parties bring in orders giving effect to these reasons within seven days hereof. Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.

1. Vox 1 1 Voxson seeks to have the respondents provide process descriptions or, alternatively, discovery. 2 The first process description it seeks is one which would require the respondent carriers to explain how A-GPS services were supported on each of their respective networks. 3 Telstra is willing to give such a process description but wishes to tie the description strictly to the issues which arise on the pleadings. It suggests this form of words: explaining how A-GPS services used by devices supplied by Telstra were supported by Telstra's network during the Limitation Period, in the context of the allegations in the Third Further Amended Statement of Claim, the statements made in the Applicant's Explanation of the Infringement Case and matters remaining in issue in light of Telstra's Defence. (My emphasis.) 4 The effect of this will be that matters which have been admitted will not feature in the process description. Voxson submits that this will render the process description incomplete. I agree. On the other hand, plainly the endeavour must be limited by the pleadings. The replacement of the italicised words with 'including matters which are admitted' will achieve both purposes. 5 The reference to the limitation period requires some explanation. In Telstra's proposed form of order, the 'Limitation Period' is defined to mean the period beginning on 18 January 2010 and ending on 1 December 2013. Telstra did not develop this point in writing but Optus did (indeed, it seems likely that the point originated in Optus' camp). 6 The point was that the respondents should not be required to give discovery (a concept which in the current context I take to include the giving of a process description) for periods which lie outside the limitation period. There is some uncertainty at the moment as to whether Voxson's claims have been brought within the relevant limitation period. The uncertainty relates not to when the relevant causes of action accrued, but instead to when the claims are taken to have been commenced. This difficulty arises as a result of the various amendments which have been made to Voxson's pleadings over time. That uncertainty relates to the date from which those amendments are to take effect. It arises because of an unfortunate lacuna in the Federal Court Rules 2011 (Cth) as to when certain categories of amendments are to take effect. Optus wishes to have that issue resolved prior to giving discovery. 7 Voxson, on the other hand, submits that it is unwise to determine questions about limitation periods in advance of trial, citing Wardley Australia Ltd v Western Australia (1992) 175 CLR 514 at 533. Wardley was concerned with the issue of when a cause of action accrued. This is a different issue to the one which the respondents wish to ventilate, which is not when a cause of action accrues but, rather, when an amendment should take effect. Wardley has nothing to do with that issue. At some point the date at which the amendments are to take effect will need to be determined. The respondents wish to argue that it should be before trial (so that the scope of discovery can be ascertained). Voxson resists this. 8 I consider that the respondents should have the opportunity to argue that this issue should be determined ahead of the trial and, if they be successful in that, to make submissions about what the actual date should be. Plainly Voxson should have a chance to respond. It is true as Voxson submitted that Optus' limitation submissions were primarily directed to Voxson's application for discovery of documents (as opposed to its application for process descriptions) and that that broader application for discovery of documents had been largely overtaken by events (viz,, that their submissions were mostly focussed on process descriptions). I do not, however, consider that this changes the outcome of the present debate. It may be that the question of timing is less important in relation to process descriptions than it might be in relation to the discovery of documents. For example, a wider date range is likely to imply the discovery of a larger number of documents, but it is not self-evident that it would have an expanding effect necessarily upon the scope of a process description. Nevertheless, a timing issue still exists: the process described must be a process at some particular time. 9 Consequently, I accept that the issue of whether the date at which the amendments take effect should be determined before trial needs itself to be determined now. I also think that if that issue is determined in favour of the respondents, it would then be convenient immediately to determine the date at which the amendments should take effect, so that any limiting impact upon the process descriptions is brought to account before they are done. I will hear brief argument on both points at the directions hearing on 2 February 2017. I draw to the parties' attention my own recent decision in Gibson v Malaysian Airline System Berhad [2016] FCA 1476 at [31]ff which does not answer the questions, but which may throw some light on the issues. 10 In that circumstance, and leaving the limitation issue to one side for now, I will indicate at this stage that I would be minded to direct the delivery of a process description by Telstra in this form: explaining how A-GPS services used by devices supplied by Telstra were supported by Telstra's network, in the context of the allegations in the Third Further Amended Statement of Claim and the statements made in the Applicant's Explanation of the Infringement Case including matters which are admitted. 11 Optus raised some matters not raised by Telstra. It submitted that, as an alternative to a process description, it was to be observed that Optus had already, in effect, given such a description in the affidavit evidence of Mr Colgan. Combined with what were said to be the beneficial effects of a proposed admission by Optus to this effect: the Optus 2G GERAN, the Optus 3G UTRAN and the Optus 4G E-UTRAN each provided Cell ID or CELL Info to one or more of the devices which are referred to in paragraph 340(a) of its Defence as being compatible with some of a version of the OMA-AD-SUPL, it was then said that Voxson's proposed process description was unnecessary as one had, in substance, already been provided. I do not agree. It would be much more useful to have this information put in the form of a process description. The same order as contemplated for Telstra should be made for Optus (subject to the same observations in relation to the limitation issues). 12 The position of Vodafone was essentially the same and the same approach should be taken. 13 The second process description sought by Voxson was one which would have the carriers explain how LBS applications were supported on their networks. 14 Optus submitted that Voxson had not, in fact, pleaded that LBS applications were supported by Optus' network, but had instead pleaded that LBS applications were supported on the customers' mobile device. Paragraph 353 of the relevant pleading is (excluding particulars): 353. For the Infringement Period, LBS applications were: (a) supported by some of the following: (i) Optus 2G SET; (ii) Optus 3G SET; and/or (iii) Optus 4G SET; and (b) offered for sale/supply and sold/supplied by Optus to consumers in Australia and kept by Optus for the aforesaid purposes. 15 Without dwelling on the detail, Optus 2G SET etc are not alleged to be a network (later in the pleading, they are alleged to be vehicles of the kind referred to in the claims). Optus' submission that it is not alleged that LBS applications involved network level implementation appears, on its face, to be correct. Voxson denied that this was so, but it did not point to any part of the pleading where such a matter was alleged. It submitted instead that in order for an LBS application to be supported by a mobile device it had, as a matter of practicality, to be supported by the network to which that device was connected. 16 This may be correct, but does not really assist in resolving the issue unless, at the requisite level, I know it to be so. On this application, I do not approach that level of certainty. However, I think Voxson should nevertheless have the process description it seeks. On balance, it seems to me that the entire point of a process description is to avoid precisely this kind of debate. 17 The position of Vodafone is not materially different. 18 In relation to all three carriers, the same limitation issue arises as in the case of the A-GPS process description, and is to be dealt with the same way. The appropriate process description, apart from that issue, is one: explaining how LBS Applications were supported by [the Respondent's] network, in the context of the allegations in the Third Further Amended Statement of Claim and the statements made in the Applicant's Explanation of the Infringement Case including matters which are admitted. 19 A third process description sought by Voxson related only to Telstra. It concerned Telstra's SUPL servers. The reasoning I have already given requires the conclusion that Telstra should provide a process description in these terms: explaining how the Telstra SUPL Servers operated and were integrated into the network, in the context of the allegations in the Third Further Amended Statement of Claim and the statements made in the Applicant's Explanation of the Infringement Case including matters which are admitted. 20 Again, the limitation issues will need to be determined on 2 February 2017. 21 In light of the fact that process descriptions are to be ordered, it is not necessary to deal with Voxson's alternate discovery applications. 22 The orders I make are:
   1. Each respondent provide a process description explaining how A-GPS services used by devices supplied by it were supported by its network, in the context of the allegations in the Third Further Amended Statement of Claim and the statements made in the Applicant's Explanation of the Infringement Case including matters which are admitted.
   2. Each respondent provide a process description explaining how LBS Applications were supported by its network, in the context of the allegations in the Third Further Amended Statement of Claim and the statements made in the Applicant's Explanation of the Infringement Case including matters which are admitted.
   3. Telstra provide a process description explaining how the Telstra SUPL Servers operated and were integrated into the network, in the context of the allegations in the Third Further Amended Statement of Claim and the statements made in the Applicant's Explanation of the Infringement Case including matters which are admitted.
   4. The process descriptions be delivered by 28 February 2017.
   5. The limitation issues in relation to these process descriptions be determined on 2 February 2017.
   6. The respondents file and serve their submissions on these issues by the close of business on Monday, 23 January 2017.
   7. The applicant file and serve its submissions by the close of business on Friday, 27 January 2017.
   8. The respondents file and serve any submissions in reply by the close of business on Tuesday, 31 January 2017.
   9. Submissions not to exceed 10 pages.
   10. Order 6 of 16 November 2016 be varied so as to provide that the Applicant file and serve its evidence in chief in respect of its claims on or before 18 April 2017.
   11. Orders 7-11 of those orders be varied by each deadline mentioned therein being extended by two weeks.
   12. Costs of the applicant's interlocutory application dated 28 November 2016 be costs in the cause.

2. Vox 2 23 In the Vox 2 proceeding, Voxson seeks discovery from the respondent carriers of two categories of document. The first relates to the identification of the user equipment (e.g. mobile phones and tablets) supported on the carriers' networks, together with user manuals relating to those devices. The point of this, as I understood it, was that part of Voxson's indirect infringement case involved the proposition that the carriers had infringed the patent in suit by supplying handsets or tablets (or possibly SIM cards) with instructions on how they should be used. The second category concerns promotional and advertising materials published by the carriers which refer to: the ability to make or receive video calls; the ability to download or watch videos; the ability to send or receive MMS messages including video; and the ability to send or receive a video file. 24 This category relates to an allegation by Voxson that the carriers promoted their products and services by intimating that customers could transmit and receive video files on their 3G and 4G networks. 25 There are, in substance, two broad issues between Voxson and the carriers. The first concerns the period of time over which this discovery exercise should be carried out. This, in turn, is a function of certain limitation issues. I have explained above in relation to Vox 1 how those issues are to be resolved in that case, and they should be resolved in this case the same way. A similar timetable should be put in place. 26 The second issue which divides the parties concerns the question of determining some method by which the applicant's needs can be accommodated, either by using representative examples rather than full discovery, or by some abbreviated procedural mechanism. All parties appear to share a conviction that not all of the material needs to be disgorged for the liability phase of the hearing and that a lot of it could be held back for the quantum phase. They were divided on the question of how this might be achieved. 27 Optus eschewed discovery and proposed the following (at [7(a)] and [7(b)] in its submissions): (a) Optus Mobile will admit that during the Limitation Period as referred to in paragraph 4(d) of its Defence, it supplied to a person in Australia at least one model of User Equipment and provided or made available to that person instructions as to how to perform at least one of the following steps in relation to that model: a. how to use the User Equipment's camera to record video, and to share that video file with another person by transmitting it to their device; b. how to send and to receive an MMS message that includes a video attachment; c. how to make and receive a video call; or d. how to access and watch a video file that is located on an Internet server. (b) Optus Mobile will consent to a notation by the Court that if the Court determines that liability for infringement of the Vox 2 Patent is established against Optus in relation to a model or models of User Equipment it supplied to a person in Australia during the Limitation Period as referred to in paragraph 4(d) of its Defence, an assessment of which other models of User Equipment fall within the scope of Optus' liability for infringement so determined will form part of the enquiries of the quantum phase of this proceeding. (Footnotes omitted.) 28 Although Voxson nowhere directly said in its reply submissions that it was content with this proposal, read as a whole, this is one interpretation of what those submissions intended. On the other hand, in its reply submissions at [8] Voxson said this: In relation to Optus, if the Court is prepared to proceed on the basis that Voxson can argue its infringement case by reference to each or all of the four instructions at OS [7(a)], then Voxson accepts that it does not require discovery from Optus. 29 This is, if I may say with respect, an unhelpful statement. In resolving the parties' disputes about discovery I am not forming any view about how Voxson may, or may not, run its case. Voxson can run its case however it is advised. I will order the solution proposed by Optus. In so doing, I am saying nothing about how Voxson can run its case. 30 It will be apparent that the Optus proposal applies to both categories. 31 Telstra and Vodafone do not presently suggest a similar solution to that put forward by Optus, but it seems to me that the Optus solution is a sensible one and I commend it to them. However, it requires admissions to be made. It would be helpful if they were. 32 Subject to the limitation issues, I propose therefore to adjourn the Telstra/Vodafone aspect of the application to permit Voxson, if necessary, to issue an appropriate notice to admit facts to assist in eliciting the relevant admission. 33 The matter can be listed on 2 February 2017 to determine:
   1. the limitation issues; and
   2. the balance of this application if necessary. 34 The parties should bring in short minutes of order to give effect to these reasons. I certify that the preceding thirty-four (34) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Perram.