The University of Sydney v ResMed Ltd [2008] FCA 1020

The University of Sydney v ResMed Ltd [2008] FCA 1020

For interlocutory purposes only, the Court concluded that the University's pleading was not confined to an objective visual comparison case and could support relevance of development documents to issues concerning use of Intellectual Property and discoveries or improvements. Documents in categories 4, 5, 6, 8 and 15 could fall within O 15 r 2(3), although discovery for some categories might await the University's evidence and oppressiveness had not yet been decided. Category 25(c) was too broad and there was no pleaded basis for requiring discovery of unpublished patent and design applications, though ResMed had offered limited information subject to confidentiality. For category 26, the...

Jurisdiction
Australia
Judgment Date
04 July 2008
Procedural Posture
Practice and Procedure Discovery Dispute in a Patent Infringement and Licensing Agreement Proceeding / Interlocutory Discovery Motion; Proceeding Listed for Directions
Outcome
Proceeding listed for directions; no final discovery orders made in these reasons.
Legal Topics
['discovery by Categories' 'federal Court Rules O 15 R 2' 'patent Licence Agreement' 'patent Infringement' 'discoveries or Improvements Under Licence Agreement' 'oppressiveness and Relevance in Discovery']
['practice and Procedure' 'intellectual Property' 'contract'] ['discovery by Categories' 'federal Court Rules O 15 R 2' 'patent Licence Agreement' 'patent Infringement' 'discoveries or Improvements Under Licence Agreement' 'oppressiveness and Relevance in Discovery']

Case Brief

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Procedural Posture

Practice and Procedure Discovery Dispute in a Patent Infringement and Licensing Agreement Proceeding / Interlocutory Discovery Motion; Proceeding Listed for Directions

Legal Issues

  1. 1 ['Whether the contested discovery categories satisfied the discovery requirements in O 15 r 2 of the Federal Court Rules (Cth).' "Whether documents about development of the Mirage Masks, the Bubble Mask or Bubble Cushion, and ResMed patents and designs could be relevant to the University's pleaded claims based on use of Intellectual Property and discoveries or improvements." "Whether the University's case was confined to an objective comparison of final mask products or could include a causal or subjective case that Intellectual Property was used in creating the Mirage Masks." 'Whether particular categories, including unpublished patent and design applications and documents about the historical evolution of the ResMed Group, were too broad, speculative or oppressive.' "Whether discovery should proceed in stages or await the University's evidence on particular issues."]

Ratio Decidendi

For interlocutory purposes only, the Court concluded that the University's pleading was not confined to an objective visual comparison case and could support relevance of development documents to issues concerning use of Intellectual Property and discoveries or improvements. Documents in categories 4, 5, 6, 8 and 15 could fall within O 15 r 2(3), although discovery for some categories might await the University's evidence and oppressiveness had not yet been decided. Category 25(c) was too broad and there was no pleaded basis for requiring discovery of unpublished patent and design applications, though ResMed had offered limited information subject to confidentiality. For category 26, the...

Court Disposition

Proceeding listed for directions; no final discovery orders made in these reasons.

Orders

  • ['The proceeding be listed on 9 July 2008 for the making of directions.']