Hanwha Solutions Corporation v LONGi Green Energy Technology Co. Ltd [2020] FCA 580

Hanwha Solutions Corporation v LONGi Green Energy Technology Co. Ltd [2020] FCA 580

The respondents did not establish at a general level that Hanwha had misconceived its discovery obligations or applied the wrong test of relevance. Most requested categories were not shown to be relevant or proportionate, or the verified discovery was not displaced. However, further discovery was warranted for documents concerning Auxiliary Request No. 4 because the amendment to claim 13 of the European patent was sufficiently similar to proposed new claim 13 of the Australian Patent, and for limited parts of Dr Paugstadt's sworn US ITC deposition concerning that amendment, Hanwha's awareness of Bhattacharyya, and the materiality of Bhattacharyya to equivalent claim sets. The redactions...

Jurisdiction
Australia
Judgment Date
01 May 2020
Procedural Posture
Patent Infringement and Australian Consumer Law Proceedings With Cross Claims for Patent Invalidity / Interlocutory Applications by the Respondents for Further and Better Discovery and Production of Unredacted Documents in Relation to Hanwha's Patent Amendment Application
Outcome
Discovery applications granted in part; redaction application dismissed; interim confidentiality orders made.
Legal Topics
['application to Amend Patent Under S 105 of the Patents Act 1990 (cth)' 'further and Better Discovery' 'relevance in Discovery' 'discretionary Opposition to Patent Amendment' 'constructive Knowledge of Prior Art' 'foreign Patent Amendments' 'redaction of Privileged Documents' 'interim Confidentiality Orders Under S 37 AI of the Federal Court of Australia Act 1976 (cth)']
['intellectual Property' 'patents' 'practice and Procedure' 'discovery' 'legal Professional Privilege' 'confidentiality Orders' 'australian Consumer Law'] ['application to Amend Patent Under S 105 of the Patents Act 1990 (cth)' 'further and Better Discovery' 'relevance in Discovery' 'discretionary Opposition to Patent Amendment' 'constructive Knowledge of Prior Art' 'foreign Patent Amendments' 'redaction of Privileged Documents' 'interim Confidentiality Orders Under S 37 AI of the Federal Court of Australia Act 1976 (cth)']

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Procedural Posture

Patent Infringement and Australian Consumer Law Proceedings With Cross Claims for Patent Invalidity / Interlocutory Applications by the Respondents for Further and Better Discovery and Production of Unredacted Documents in Relation to Hanwha's Patent Amendment Application

Legal Issues

  1. 1 ['Whether Hanwha misapplied the test for relevance when giving discovery of documents relevant to the patent amendment application.' 'Whether further discovery should be ordered for specific categories of documents concerning Bhattacharyya, foreign patent amendments, internal communications, draft amendments, and a United States ITC deposition.' 'Whether Hanwha should produce certain discovered documents in unredacted form despite claims of legal professional privilege and confidentiality.' 'Whether interim confidentiality orders should be made for confidential material.']

Ratio Decidendi

The respondents did not establish at a general level that Hanwha had misconceived its discovery obligations or applied the wrong test of relevance. Most requested categories were not shown to be relevant or proportionate, or the verified discovery was not displaced. However, further discovery was warranted for documents concerning Auxiliary Request No. 4 because the amendment to claim 13 of the European patent was sufficiently similar to proposed new claim 13 of the Australian Patent, and for limited parts of Dr Paugstadt's sworn US ITC deposition concerning that amendment, Hanwha's awareness of Bhattacharyya, and the materiality of Bhattacharyya to equivalent claim sets. The redactions...

Court Disposition

Discovery applications granted in part; redaction application dismissed; interim confidentiality orders made.

Orders

  • ["Until further order, pursuant to s 37AI of the Federal Court of Australia Act 1976 (Cth), access to and disclosure of the information referred to in Annexure A to the orders is restricted to the Court, the Applicants' solicitors, counsel and patent attorneys, the Respondents' Australian external solicitors,...