Qudos Mutual Limited v Infosys Limited

• Jurisdiction: Australia Federal only
• Judgment Date: 20 May 2019
• Neutral Citation: [2019] FCA 702
• Date: 20 May 2019
• Court: Federal Court

FEDERAL COURT OF AUSTRALIA

Qudos Mutual Limited v Infosys Limited [2019] FCA 702

File number(s):	NSD 2075 of 2018
Judge(s):	BURLEY J
Date of judgment:	20 May 2019
Catchwords:	PRACTICE AND PROCEDURE – application for preliminary discovery – whether prospective applicant already had sufficient information under r 7.23(1)(b) of the Federal Court Rules 2011 (Cth) – application granted
Legislation:	Copyright Act 1968 (Cth), ss 14(1), 31(1), 36(1) Federal Court Rules 2011 (Cth) r 7.23
Cases cited:	Alphapharm Pty Ltd v Eli Lilly Australia Pty Ltd [1996] FCA 391 Aristocrat Technologies Australia Pty Limited v Ainsworth Game Technology Limited [2018] FCA 1511 CA, Inc. v ISI Pty Limited [2012] FCA 35; 95 IPR 424 IceTV Pty Ltd v Nine Network Australia Pty Ltd [2009] HCA 14; 239 CLR 458 Pfizer Ireland Pharmaceuticals v Samsung Bioepis AU Pty Ltd [2017] FCAFC 193
Date of hearing:	2 May 2019
Registry:	New South Wales
Division:	General Division
National Practice Area:	Intellectual Property
Sub-area:	Copyright and Industrial Designs
Category:	Catchwords
Number of paragraphs:	61
Counsel for the Applicant:	Mr R Cobden SC with Mr Flynn
Solicitor for the Applicant:	Gilbert and Tobin
Counsel for the Respondents:	Mr Hennessy SC with Mr Burgess
Solicitor for the Respondents:	Allens

ORDERS

		NSD 2075 of 2018
BETWEEN:	QUDOS MUTUAL LIMITED ACN 087 650 557 Prospective Applicant
AND:	INFOSYS LIMITED (A FOREIGN COMPANY TRADING AS A FOREIGN REGISTERED COMPANY IN AUSTRALIA, REGISTERED IN AUSTRALIA AS INFOSYS TECHNOLOGIES LIMITED) ABN 52 090 591 209 First Prospective Respondent ; INFOSYS TECHNOLOGIES AUSTRALIA PTY LIMITED ACN 054 141 365 Second Prospective Respondent

JUDGE:	BURLEY J
DATE OF ORDER:	20 May 2019

THE COURT ORDERS THAT:

1. The Prospective Applicant is to file and serve any submissions in relation to the costs of the application and the time required for compliance with the form of order set out in [5] of the reasons within 7 days of the delivery of these reasons.

2. The First Prospective Respondent is to file and serve any submissions in response within 7 days thereafter.

3. The Prospective Applicant is to file and serve any reply submission of no longer than 2 pages within 7 days thereafter.

4. If no submissions are made in accordance with (1) and (2), the orders for discovery will be finalised on the papers.

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

REASONS FOR JUDGMENT

1 INTRODUCTION	[1]
2 THE EVIDENCE	[8]
3 FACTUAL BACKGROUND	[14]
4 CONSIDERATION	[34]
4.1 The dispute	[34]
4.2 Is there an insufficiency of information?	[38]
4.3 Qudos categories are overbroad and unclear	[52]
4.4 Discretionary factors	[56]
5 DISPOSITION	[61]

BURLEY J:

1. INTRODUCTION

1 Qudos Mutual Limited trades as Qudos Bank. Prior to April 2016 it traded under the name Qantas Credit Union. In March 2015 Qudos entered into a Master Banking Services Agreement with Infosys Limited pursuant to which Infosys agreed to provide a range of services relevant to a major overhaul of the Qudos digital banking arrangements. With the assistance of Infosys, Qudos planned to build a new, fully integrated banking platform, including core banking, customer relationship management, online banking, mobile application and other systems. The relationship between Qudos and Infosys broke down, and in October 2018 Qudos issued a notice of termination of their agreement. One of several areas of dispute between the parties by this time was an allegation made by Qudos that Infosys may, by producing some software for the Australian Military Bank Limited (AMB), have acted in breach of confidence, breached of certain terms of the Master Banking Services Agreement concerning the obligation of confidence, and also infringed the copyright that it owned in some computer software and related materials.

2 Qudos is considering commencing proceedings for relief in respect of each of these causes of action, but contends that it does not have sufficient information to decide whether to do so. In November 2018 it filed an Originating Application seeking Orders pursuant to rule 7.23 of the Federal Court Rules 2011 (Cth) (FCR) for the production of documents from Infosys and from a related company, Infosys Technologies Australia Pty Ltd. In January and February 2019 Infosys voluntarily provided some documents in accordance with agreed orders made on 20 December 2018. Qudos is not satisfied that the documents produced enable it to decide whether to start a proceeding, and in April 2019 it filed an Amended Originating Application seeking production of documents additional to those produced.

3 FCR rule 7.23 provides:

(1) A prospective applicant may apply to the Court for an order under subrule (2) if the prospective applicant:

(a) reasonably believes that the prospective applicant may have the right to obtain relief in the Court from a prospective respondent whose description has been ascertained; and

(b) after making reasonable inquiries, does not have sufficient information to decide whether to start a proceeding in the Court to obtain that relief; and

(c) reasonably believes that:

(i) the prospective respondent has or is likely to have or has had or is likely to have had in the prospective respondent’s control documents directly relevant to the question whether the prospective applicant has a right to obtain the relief; and

(ii) inspection of the documents by the prospective applicant would assist in making the decision.

(2) If the Court is satisfied about matters mentioned in subrule (1), the Court may order the prospective respondent to give discovery to the prospective applicant of the documents of the kind mentioned in subparagraph (1)(c)(i).

4 Infosys opposes the making of any orders under FCR r 7.23. It contends that the documents that it has produced should be enough for Qudos to make a decision whether or not to bring the proceedings. Infosys does not dispute for present purposes that Qudos reasonably believes that the prospective applicant may have the right to obtain relief in the Court within FCR r 7.23(1)(a), but it disputes, in the light of the documents that it has supplied, that Qudos does not have sufficient information to decide whether to start a proceeding to obtain relief within FCR r 7.23(1)(b). It also objects to the scope and form of the categories of documents sought by Qudos, and contends that production in accordance with those categories would be oppressive and argues that there are additional discretionary reasons why orders should not be made. In addition, Infosys contends that there is no basis upon which an order should be made against Infosys Technologies.

5 For the reasons set out below, I consider that Qudos is entitled to orders for the production of documents, but that the scope and form of the categories proposed by Qudos is too broad and prolix. During the course of argument I suggested a broad form of orders to confine production to the matters directly relevant to the question of whether...