Case: Index Group of Companies Pty Ltd v Nolan [2002] FCA 608
Outcome: applied
Court has a discretion to control discovery. Parties do not have an unfettered right to obtain discovery from other parties of any document, including documents which might, for example, fall within the classes of documents identified in O 15 r 2(3)(a)-(d), being any document on which the party called on to provide discovery relies, adversely affects their case or adversely affects or supports another party's case. Kiefel J summarised the principles in Index Group of Companies Pty Ltd v Nolan [2002] FCA 608 at [6] - [7]: respondents do not dispute the Court's power to make orders of the kind proposed. They contend that the starting point is their right to discovery. That would not seem to be a correct approach. If it be correct to speak of a party's right to access documents by this process, and that seems doubtful, it is only a right in a qualified sense. This is especially so under the rules of this Court. The Court has a discretion under O 15 r 3 to make an order for discovery and rr 2 and 15 of that order make plain that the Court is to avoid an unnecessary discovery: Cameron v Rural Press Limited (Full Court, 20 July 1990, unreported); also Practice Note 14. is spoken of as a "right" is the provision to a party of documents by use of a Court process, to ensure that litigation is, as far as possible, fair. That is a matter of public interest. In that context it may be understood that the Court's processes, in requiring discovery, will only be utilised as far as is necessary to ensure justice as between the parties and no more: see Home Office v Harman [1983] 1 AC 280, 380 applied Mobil Oil Australia Ltd v Guina Developments Pty Ltd [1996] 2 VR 34,37,38 and Trade Practices Commission v CC (NSW) Pty Ltd (1995) 58 FCR 426, 436." In my view, an application to revoke a patent on the ground that it is not useful raises for consideration the question of whether it was useful at, in all probability, the time of grant. It may conceivably be the priority date, but that is a matter of detail which does not require resolution at this time. Importantly, an application to revoke on the grounds of utility does not raise the question of whether, since grant, the patent has remained useful. It is true, as Alphapharm submitted, that evidence concerning whether a process involving or relating to chemical reactions was useful at a particular point in time (such as in the years following grant) could be probative of whether a patent was useful at an earlier point in time (such as the time of grant). Given the comparative immutability of the laws of physics, that proposition is almost certainly correct. However, that logic does not dictate that Alphapharm can require Merck to give discovery of documents concerning experiments and the like for the years following the grant of the patent. The documents Merck may have which existed at the time of grant and which might tend to establish (or raise doubts about) the usefulness of the process are appropriate to be discovered. However, to require Merck to give discovery of documents concerning events after the grant of the patent would, in my opinion, entirely skew the process of discovery and be incongruent with the balance referred to by Kiefel J in the passage quoted above. I apprehend that this conclusion may resolve issues concerning electronic discovery and also issues concerning the manufacturing process. If this is not so, I will hear the parties further on those issues. The only order I propose to make is that the parties bring in short minutes to give effect to these reasons within 7 days. I certify that the preceding thirty-one (31) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Moore. Associate: Dated: 15 September 2006 Counsel for the Applicant: S Burley and J S Cooke Solicitor for the Applicant: Mallesons Stephen Jacques Counsel for the Respondent: K Howard Solicitor for the Respondent: Cropper Parkhill Solicitors Date of Hearing: 26 July 2006 Date of Judgment: 15 September 2006 AustLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback URL: http://www.austlii.edu.au/au/cases/cth/FCA/2006/1227.html