Vehicle Monitoring Systems Pty Limited v SARB Management Group Pty Ltd trading as Database Consultants Australia (No 4)

• Jurisdiction: Australia Federal only
• Court: Federal Court (Australia)
• Judge: YATES J
• Judgment Date: 12 June 2020
• Neutral Citation: [2020] FCA 819
• Date: 12 June 2020

FEDERAL COURT OF AUSTRALIA

Vehicle Monitoring Systems Pty Limited v SARB Management Group Pty Ltd

trading as Database Consultants Australia (No 4) [2020] FCA 819

File number:	NSD 200 of 2019
Judge:	YATES J
Date of judgment:	12 June 2020
Catchwords:	PRACTICE AND PROCEDURE – application for non-standard discovery in patent infringement proceedings – application for access to confidential information in circumstances where individual concerned holds a dual role where making commercial decisions and providing instructions to solicitors - application for orders permitting litigation funder to access confidential information
Cases cited:	Vehicle Monitoring Systems Pty Limited v Sarb Management Group Pty Ltd (trading as Database Consultants Australia) (No 2) [2013] FCA 395 Vehicle Monitoring Systems Pty Limited v SARB Management Group Pty Ltd trading as Database Consultants Australia [2020] FCA 6
Date of hearing:	3 June 2020
Registry:	New South Wales
Division:	General Division
National Practice Area:	Intellectual Property
Sub-area:	Patents and associated Statutes
Category:	Catchwords
Number of paragraphs:	74
Counsel for the Applicant:	Mr C Burgess
Solicitor for the Applicant:	Johnson Winter & Slattery
Counsel for the First Respondent:	Mr T Bannon SC and Ms C Cunliffe
Solicitor for the First Respondent:	Norton Rose Fulbright Australia
Counsel for the Second Respondent:	Mr H Bevan and Mr A McRobert
Solicitor for the Second Respondent:	Ashurst Australia

ORDERS

		NSD 200 of 2019
BETWEEN:	VEHICLE MONITORING SYSTEMS PTY LIMITED ACN 107 396 136 Applicant
AND:	SARB MANAGEMENT GROUP PTY LTD (T/AS DATABASE CONSULTANTS AUSTRALIA) ACN 106 549 722 First Respondent ; CITY OF MELBOURNE Second Respondent
AND BETWEEN:	SARB MANAGEMENT GROUP PTY LTD (T/AS DATABASE CONSULTANTS AUSTRALIA) ACN 106 549 722 Cross-Claimant
AND:	VEHICLE MONITORING SYSTEMS PTY LIMITED ACN 107 396 136 Cross-Respondent

JUDGE:	YATES J
DATE OF ORDER:	12 JUNE 2020

THE COURT ORDERS THAT:

1. Subject to them each signing a confidentiality undertaking in the form agreed on 4 March 2020, and each acknowledging that he submits to the jurisdiction of this Court, and of any other court exercising jurisdiction in New South Wales, for the purpose of proceedings against them or either of them in relation to the performance of their obligations under the confidentiality undertakings, including enforcement thereof, Robert Rothkopf and Nick Gardner of Balance Capital LLC be permitted access to, and use of, for the purposes of this proceeding only, and in accordance with the confidentiality undertakings, the redacted information contained in the verified product and method description served by the first respondent on 24 April 2020.

2. Subject to these orders, and Orders 1 and 2 made on 3 June 2020, the amended interlocutory application dated 29 May 2020 (the interlocutory application) be dismissed.

3. The applicant pay the second respondent’s costs of and incidental to the interlocutory application.

4. As between the applicant and the first respondent, each bear its own costs of and incidental to the interlocutory application.

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

REASONS FOR JUDGMENT

YATES J:

1. The applicant, Vehicle Monitoring Systems Pty Limited (VMS), moves on an amended interlocutory application dated 29 May 2020 (the interlocutory application), seeking orders for non-standard discovery against the first respondent, SARB Management Group Pty Ltd (SARB), and the second respondent, the City of Melbourne (Melbourne), in patent infringement proceedings. The application concerns three categories of documents. VMS also seeks orders providing for access, by certain individuals, to other documents, provided pursuant to the Court’s case management orders, that are claimed to contain confidential information.

2. It is necessary to detail some background matters which provide the context in which the interlocutory application is brought.

3. On 14 February 2020, following a case management hearing held on 4 February 2020, I made an order that SARB provide a product and method description in respect of its PinForce Sensors, Systems and Methods, pursuant to paras 6.14 – 6.15 of the Intellectual Property Practice Note (IP – 1) (the product and method description).

4. On 4 March 2020, SARB provided the product and method description in unverified form. It made a claim of confidentiality in respect of that document. The product and method description contains an annexure (Annexure A) which sets out certain information in relation to SARB’s supply of PinForce Sensors and Systems, including the clients to whom PinForce Sensors and Systems were supplied, the date of use of those sensors and systems, and the number of sensors supplied and in operation. On 10 March 2020, SARB provided VMS with a redacted, non-confidential version of the product and method description. Much of the information in Annexure A was redacted.

5. On 6 April 2020, I made an order that SARB provide VMS with a verified copy of the product and method description, incorporating certain amendments which SARB had made in response to queries raised by VMS. On 24 April 2020, SARB provided the verified version. On 27 April 2020, SARB provided VMS with a redacted, non-confidential version of the document.

6. On 6 April 2020, I also made orders providing for VMS and SARB to exchange position statements on infringement in respect of the PinForce Sensors, Systems and Methods, pursuant to paras 6.12 – 6.13 of IP – 1. On 14 April 2020, VMS provided its position statement (VMS’s position statement). On 24 April 2020, SARB provided its responsive position statement (SARB’s position statement). SARB has claimed confidentiality in respect of each statement.

Discovery The first category of documents

7. The first category of documents is:

A copy of the functional specification(s) and communication protocol(s) for each of the First PinForce Sensor, First PinForce System, First PinForce Method, Second PinForce Sensor, Second PinForce System, Second PinForce Method, Third PinForce Sensor, Third PinForce System and Third PinForce Method, referred to in the amended statement of claim filed by VMS and the amended defence filed by SARB.

8. When SARB provided the verified product and method description, it did not annex or otherwise provide primary technical documents to support the description. In terms of the order made, there was no requirement for it to do so. At the case management hearing held on 4 February 2020, VMS argued that the product and method description should annex such documents. At the time, I was not persuaded that I should require SARB to provide technical documents as part of the product and method description. That said, I did not rule out the possibility that discovery might be required to be given of such documents. I was of the view that the better case management decision was to await the...