MMD Design and Consultancy Limited v Camco Engineering Pty Ltd [2019] FCA 1803

MMD Design and Consultancy Limited v Camco Engineering Pty Ltd [2019] FCA 1803

The requirements of r 7.23(1) were satisfied because MMD held a reasonable belief, supported by evidence and expert opinion, that Camco may have infringed its patent, and after reasonable enquiries including requests for inspection and correspondence, MMD still lacked sufficient primary information to decide to commence proceedings. Discretion under r 7.23(2) was properly exercised because further enquiry with end users was unreasonable, the drawings sought were necessary to enable an informed decision, and confidentiality interests could be protected by limiting document access.

Parties
First Prospective Applicant: MMD Design and Consultancy Limited; Second Prospective Applicant: MMD Australia Pty Ltd ACN 002 446 835; Prospective Respondent: Camco Engineering Pty Ltd ACN 067 041 641
Jurisdiction
Australia
Judgment Date
07 November 2019
Procedural Posture
Application for Preliminary Discovery / Interlocutory Determination on Application for Preliminary Discovery Under R 7.23
Outcome
Application for preliminary discovery granted
Legal Topics
Preliminary Discovery, Patent Infringement, Federal Court Procedure
Intellectual Property Practice and Procedure Preliminary Discovery Patent Infringement Federal Court Procedure

Case Brief

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Parties

MMD Design and Consultancy Limited

First Prospective Applicant

MMD Australia Pty Ltd ACN 002 446 835

Second Prospective Applicant

Camco Engineering Pty Ltd ACN 067 041 641

Prospective Respondent

Procedural Posture

Application for Preliminary Discovery / Interlocutory Determination on Application for Preliminary Discovery Under R 7.23

Legal Issues

  1. 1 Whether the prospective applicants had a reasonable belief they may have a right to obtain relief for patent infringement
  2. 2 Whether after making reasonable enquiries the prospective applicants lacked sufficient information to decide whether to start proceedings
  3. 3 Whether the Court should exercise its discretion to order preliminary discovery under r 7.23(2) of the Federal Court Rules 2011

Ratio Decidendi

The requirements of r 7.23(1) were satisfied because MMD held a reasonable belief, supported by evidence and expert opinion, that Camco may have infringed its patent, and after reasonable enquiries including requests for inspection and correspondence, MMD still lacked sufficient primary information to decide to commence proceedings. Discretion under r 7.23(2) was properly exercised because further enquiry with end users was unreasonable, the drawings sought were necessary to enable an informed decision, and confidentiality interests could be protected by limiting document access.

Court Disposition

Application for preliminary discovery granted

Orders

  • The prospective respondent is required to give discovery of drawings of any welded tooth constructions for mineral breakers overhauled, repaired or replaced by Camco since 1 January 2016 for specified mine sites and any other location in Australia, subject to a confidentiality regime limiting inspection to external...