Dyno Nobel Inc v Orica Explosives Technology Pty Ltd (No 2)

• Jurisdiction: Australia Federal only
• Judge: BURLEY J
• Judgment Date: 17 September 2019
• Neutral Citation: [2019] FCA 1552
• Court: Federal Court
• Date: 17 September 2019

FEDERAL COURT OF AUSTRALIA

Dyno Nobel Inc v Orica Explosives Technology Pty Ltd (No 2) [2019] FCA 1552

File number:	NSD 1500 of 2017
Judge:	BURLEY J
Date of judgment:	17 September 2019
Date of publication of reasons:	23 September 2019
Catchwords:	EVIDENCE – objection to evidence under s 59 of the Evidence Act 1995 (Cth) – whether print outs of archived webpages on the “Wayback Machine” are business records under s 69 of the Evidence Act – where the Court found that the evidence were not business records – whether to admit evidence under the discretion conferred by s 190 of the Evidence Act – evidence admitted under s 190, subject to a limitation under s 136 of the Evidence Act
Legislation:	Evidence Act 1995 (Cth) ss 59, 69, 136, 147, 190 Patents Act 1990 (Cth) s 7(2)
Cases cited:	Australian Competition and Consumer Commission v Air New Zealand (No 5) [2012] FCA 1479 Hansen Beverages v Bickford [2008] FCA 406; 75 IPR 505 Roach v Page (No. 15) [2003] NSWSC 939
Date of hearing:	16 September 2019
Registry:	New South Wales
Division:	General Division
National Practice Area:	Intellectual Property
Sub-area:	Patents and Associated Statutes
Category:	Catchwords
Number of paragraphs:	24
Counsel for the Applicant and Second Cross-Respondent:	Mr A. Bannon SC with Ms C. Cochrane, Ms. C Bembrick and Mr D. Harris
Solicitor for the Applicant and Second Cross-Respondent:	Shelston IP Australia
Counsel for the Respondent and Second Cross-Claimant:	Mr B. Caine SC with Dr W. Rothnie
Solicitor for the Respondent and Second Cross-Claimant:	Davies Collison Cave

ORDERS

		NSD 1500 of 2017
BETWEEN:	DYNO NOBEL INC Applicant/First Cross-Respondent ; DYNO NOBEL ASIA PACIFIC PTY LTD (ACN 003 269 010) Second Cross-Respondent
AND:	ORICA EXPLOSIVES TECHNOLOGY PTY LTD Respondent/First Cross-Claimant ; ORICA INTERNATIONAL PTE LTD (SINGAPORE COMPANY REGISTRATION NO. 20080258K) Second Cross-Claimant

JUDGE:	BURLEY J
DATE OF ORDER:	17 September 2019

THE COURT ORDERS THAT:

1. Pursuant to s 190(3) of the Evidence Act 1995 (Cth), the application of the hearsay rule under s 59 of the Act is dispensed with in relation to paragraphs 6 to 11 of the affidavit of Christopher Butler affirmed on 2 July 2019 and the evidence annexed therein (the Wayback materials).

2. The Wayback materials are admitted subject to a limitation pursuant to s 136 of the Act, namely that the use of the evidence is to prove the availability of website “i-konsystem.com” and of the contents of the particular pages, on particular dates. It does not extend to prove the truth of any fact referred to therein.

Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.

REASONS FOR JUDGMENT

BURLEY J:

1. The applicant, Dyno Nobel Inc, commenced proceedings against Orica Explosives Technology Pty Ltd for the revocation of Australian Patent No 2004293486 which is entitled “Method of blasting multiple layers or levels of rock” (486 patent). A cross-claim was then filed by the respondent and Orica International Pte Ltd (collectively, Orica) against the applicant and Dyno Nobel Asia Pacific Pty Ltd (collectively, Dyno) for the alleged infringement of a number of the claims of the 486 patent. On the first day of the hearing of the substantive application, I heard argument in relation to Orica’s objection to Dyno’s evidence of print-outs from the website called “the Internet Archive” and subsequently admitted the evidence. These are my reasons for doing so.

2. Christopher Butler is the office manager at the Internet Archive, an organisation based in California that operates a website called the “Wayback Machine”. Orica objects to paragraphs [6] – [11] of Mr Butler’s affidavit, which refer to and annex copies of print outs from searches completed using the Wayback Machine. Orica also objects to certain paragraphs of the affidavit of Michael Zammit, a patent attorney.

3. In his affidavit, Mr Butler explains that the Wayback Machine is a service provided free of charge by the Internet Archive to give access to a digital library of internet sites and other cultural artefacts in digital form. His evidence is that the Internet Archive has partnered with and receives support from various institutions and libraries, including the United States Library of Congress, to create a digital library of internet sites in digital form. The archived data was compiled using software programs known as “crawlers” that surf the World Wide Web and automatically store copies of website files, preserving them as they exist at the point of time of capture. The Wayback Machine makes it possible for internet users to surf more than 400 billion pages stored in the web archive by universal resource locator (URL), which is a website “address”. If archived records for a URL are available, the user may conduct a search and find a list of available dates, select one, and then begin viewing and browsing an archived version of the website. Mr Butler was cross-examined, and gave evidence that before 2009 it was not the Internet Archive, but a company called Alexa Internet Inc. which was founded by the same person, that contributed the majority of the archives to the Internet Archive. He was not challenged on his evidence as to the process by which the archived records were collected.

4. Mr Butler gives evidence that the Internet Archive assigns a URL on its site to the archived records in the format of “http://web.archive.org/web/[year in YYYY][Month in MM][Day in DD][Time code in HH:MM:SS]/[Archived URL], with the result that a user can identify the date assigned by the Internet Archive to the archived record, which correlates with the date upon which it was archived. That date applies to the HTML file, but not to image files that are linked, with the result that images that appear on a printed page may not have been archived on the same date.

5. In his paragraphs that are the subject of objection, Mr Butler first annexes a copy of a print out of a search result page from the Wayback Machine for the URL “i-konsystem.com” (i-kon website), displaying the dates for which captures are available at that URL for the year 2003. He then annexes printouts of the Internet Archive’s records for various specific pages (Wayback materials), containing extracts that may broadly be described as technical and promotional material about i-kon detonators promoted by Orica.

6. Other evidence in the proceedings indicates that the i-kon website is one that was operated on behalf of Orica before the priority date, which for the patent in suit is 23 November 2003. There is no dispute that the Wayback materials are potentially relevant to the obviousness case advanced by Dyno pursuant to s 7(2) of the Patents Act 1990 (Cth). They are relied upon to establish aspects of the common general knowledge as at that date. The evidence of experts, with qualifications that appear to qualify them as persons skilled in the art relevant to the patent, is that at least some of the extracts from the i-kon website included within the Wayback materials were generally consistent with their recollection of the nature and content of Orica’s promotional materials concerning its i-kon system and electronic detonator products.

7. The objection taken is that the Wayback materials are hearsay documents that do not qualify for any exception in the Evidence Act 1995 (Cth). Orica submits that the Wayback materials are not admissible as business records within s 69 of the Evidence Act because they are not documents of either Orica or Dyno, and because they are the product of the business of the Internet Archive, rather than business records. Furthermore, it submits that the courts have...