Encompass Corporation Pty Ltd v InfoTrack Pty Ltd (No 1) [2016] FCA 1509

Encompass Corporation Pty Ltd v InfoTrack Pty Ltd (No 1) [2016] FCA 1509

Because the Respondent had identified a class of pre-26 March 2012 events that, considered as a whole, was sufficient to support a non-frivolous novelty contention, and because a sworn indication that no documents exist was not a reason to refuse discovery, the Respondent was entitled to the discovery sought, including standard discovery on the 2013 contentions.

Jurisdiction
Australia
Judgment Date
13 December 2016
Procedural Posture
Patent Proceeding Involving Discovery Dispute / Interlocutory Discovery Application Before Trial
Outcome
Orders made in the form sought by the Respondent; Applicants/Cross-Respondents ordered to give discovery and pay the Respondent's costs of the application.
Legal Topics
['discovery' 'non Standard Discovery' 'standard Discovery' 'patent Novelty' 'priority Date' 'prior Art Base']
['intellectual Property' 'patents' 'civil Procedure'] ['discovery' 'non Standard Discovery' 'standard Discovery' 'patent Novelty' 'priority Date' 'prior Art Base']

Case Brief

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Procedural Posture

Patent Proceeding Involving Discovery Dispute / Interlocutory Discovery Application Before Trial

Legal Issues

  1. 1 ['Whether the Respondent was entitled to discovery concerning events before 26 March 2012 said to have made information about the claimed invention publicly available.' 'Whether discovery should be refused because some alleged pre-26 March 2012 events were said to be insubstantial.' 'Whether discovery should be refused because the Applicant had sworn that some categories would produce no documents.' 'Whether standard discovery should be ordered in relation to the 2013 contentions about whether recipients were free in law or equity to use or further disclose information.']

Ratio Decidendi

Because the Respondent had identified a class of pre-26 March 2012 events that, considered as a whole, was sufficient to support a non-frivolous novelty contention, and because a sworn indication that no documents exist was not a reason to refuse discovery, the Respondent was entitled to the discovery sought, including standard discovery on the 2013 contentions.

Court Disposition

Orders made in the form sought by the Respondent; Applicants/Cross-Respondents ordered to give discovery and pay the Respondent's costs of the application.

Orders

  • ['On or before 27 January 2017, the Applicants/Cross-Respondents each give discovery in accordance with the specified categories by serving lists of documents verified by affidavit.' "On or before 1 February 2017, the Respondent/Cross-Claimant give notice to the Applicants of the documents in the First Applicant's...