SNF (Australia) Pty Ltd v Ciba Specialty Chemicals Water Treatments Ltd [2016] FCAFC 88
ORDERS
DATE OF ORDER: |
THE COURT ORDERS THAT:
1. The application for leave to appeal be dismissed.
2. The applicant pay the respondent’s costs as agreed or taxed.
3. Any party seeking a different costs order is to notify the other parties and the Court of the order it seeks within seven (7) days in which event further direction will be made in consultation with the parties.
Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.
THE COURT:
1 SNF (Australia) Pty Ltd (SNF) should not be granted leave to appeal against the order of the primary judge dismissing its application to set aside certain declarations and orders the effect of which was to confirm the validity of innovation patents and determine that SNF had infringed the patents (SNF (Australia) Pty Ltd v Ciba Specialty Chemicals Water Treatments Ltd [2015] FCA 787; (2015) 114 IPR 231).
2 The primary judge’s conclusion, that SNF should not be permitted to re-open the proceeding, is not subject to doubt; it is a conclusion with which we agree.
3 In short, the hearing in 2010 did not miscarry as a result of Ciba failing to discover documents it was required to discover.
4 Further, the primary judge made no error in concluding that SNF, in its closing submissions, changed the grounds on which it alleged that the documents were discoverable. She made no error in deciding that, in all of the circumstances, SNF should be held to the case which it had pleaded and argued in support of its claim that the documents (initially fifteen and subsequently eleven before her Honour) were discoverable, and that case had to be rejected. In any event, the seven documents which SNF now alleges Ciba was required to, but did not, discover, were not discoverable. Accordingly, questions about Ciba’s culpability in not discovering the documents and SNF’s diligence do not need to be answered, and did not need to be answered by the primary judge. Had they arisen, we accept that we would need to weigh for ourselves all relevant circumstances including SNF’s diligence and Ciba’s culpability, because the primary judge did not decide the application on this basis. If that exercise were necessary, in common with the primary judge, we would have found it contrary to the interests of justice to grant the relief SNF seeks.
5 It follows that the application for leave to appeal must be dismissed.
Facts
6 The basic facts as found by the primary judge are not in dispute.
7 In 2008, SNF brought proceedings to revoke five innovation patents owned by Ciba Specialty Chemicals Water Treatments Ltd (Ciba) relating to a process of secondary flocculation of mining tailings. Ciba cross-claimed against SNF for infringement of the patents. As the differences between the patents were immaterial to the issues in dispute, it was agreed that one patent (2006100944, referred to as Patent 944 by the primary judge) would be the subject of the hearing with the result in respect of that patent applying to the other four patents.
8 Kenny J made an order for discovery on 8 August 2008. The order was:
Subject to the Applicant [SNF] and First and Second Respondents [Ciba] indicating to one another the proposed categories of documents for discovery, the Applicant and First and Second Respondents file and serve verified lists of documents on or before 19 October 2008.
9 Before the primary judge SNF’s proposed categories of documents for discovery were said to be the basis for claims of agreement and estoppel against Ciba. Although those claims are no longer pressed one of the discovery categories, 4(e), is repeated below because it appears in other guises subsequently (specifically, the contention that Ciba was obliged to discover documents relevant to its “development pathway”):
4(e) All documents and material relating to the issue of innovative step in the proceeding, including (without limitation) test reports and experimental results, notes and other internal records relating to the development of the processes described in the Patents, prior art evaluations and the like, trade literature and other material consulted during the development phase.
10 Despite SNF’s now abandoned claims of an agreement and estoppel binding Ciba to discover documents in proposed category 4(e) it is apparent that, following further communications between the parties and the chambers of Kenny J, the order made on 8 August 2008 was superseded by an order of 24 October 2008 as follows:
The Applicant [SNF] and First and Second Respondents [Ciba] file and serve verified lists of documents, limited to the issue of liability … on or before 24 November 2008.
11 This order reflected the fact that Kenny J had ordered that questions of liability (that is, for revocation and infringement) be determined separately from questions of damages.
12 Ciba filed and served its verified list of documents on 23 December 2008.
13 It is common ground that the order for discovery required Ciba to comply with Order 15 r 2 of the Federal Court Rules 1979 (Cth) (the Rules) which was in the following terms:
(1) A party required to give discovery must do so within the time specified in the notice of discovery (not being less than 14 days after service of the notice of discovery on the party), or within such time as the Court or a Judge directs.
(2) Unless the Court or a Judge orders otherwise, a party must give discovery by serving:
(a) a list of documents required to be disclosed; and
(b) an affidavit verifying the list.
(3) Without limiting rule 3 or 7, the documents required to be disclosed are any of the following documents of which the party giving discovery is, after a reasonable search, aware at the time discovery is given:
(a) documents on which the party relies; and
(b) documents that adversely affect the party’s own case; and
(c) documents that adversely affect another party’s case; and
(d) documents that support another party’s case.
(4) However, a document is not required to be disclosed if the party giving discovery reasonably believes that the document is already in the possession, custody or control of the party to whom discovery is given.
(5) For subrule (3), in making a reasonable search, a party may take into account:
(a) the nature and complexity of the proceedings; and
(b) the number of documents involved; and
(c) the ease and cost of retrieving a document; and
(d) the significance of any document likely to be found; and
(e) any other relevant matter.
14 It is also common ground that when Ciba discovered documents (and when the order for discovery was made) the relevant “case” for the purpose of Order 15 r 2(3) of the Rules was SNF’s case that the invention in each claim of the innovations patents was not a patentable invention within the meaning of s 18(1A)(b)(ii) of the Patents Act 1990 (Cth) as the invention “does not involve an innovative step when compared with the prior art base as it existed before the Priority Date [7 May 2003 for Patent 944], as it would, to a person skilled in the art and in light of the common general knowledge, only vary from the kinds of information set out in section 7(5) of the Act in ways that make no substantial contribution to the working of the inventions” described in the patents.
15 The particulars to this ground of alleged invalidity were set out in two sub-paragraphs. The first, (a), referred to the common general knowledge of a person skilled in the art including knowledge of certain matters. The second, (b), referred to the prior art base as including “each of the documents listed in paragraphs 5 and 9 [sic – 6] above” and the disclosure of other named documents. Paragraphs 5 and 6 referred to numerous documents including patents referred to as Pearson or Slatter 4 (WO-A-96/05146 International Publication Date 22 February 1996) and Gallagher or Slatter 3 (WO-A-0192167 International Publication Date 6 December 2001). The other documents set out in (b) referred to 23 documents including Pearson and three patents referred to as Slatter 10, Slatter 12 and Slatter 13 ((US Patent No 3312070 published 4 April 1967, US Patent No 3707523 published 26 December 1972, and French Patent No 7709857 published 23 March 1977 respectively).
16 By 3 March 2010, SNF’s particulars of invalidity (which set out the grounds on which it contended the innovation patents should be revoked) had been amended at least five times. The final version, referred to as the Fourth Further Amended Particulars of Grounds of Invalidity and dated 3 March 2010, retained the paragraph asserting invalidity on the ground of lack of innovative step in the same terms (paragraph 7) except that sub-paragraph (b) identified the prior art bases as including not only information but also acts listed in the particulars to paragraphs 5 and 6. Paragraphs 5 and 6 retained the references to Pearson, Gallagher and Slatter 10, 12 and 13 (albeit with specific page references to the information said to constitute part of the prior art base), but also referred to “information made publicly available through the doing of an act as set out below”. The acts set out below are acts at various mines which, insofar as presently relevant, do not include locations said by SNF to have been the subject of prior acts and secret uses as now sought to be asserted if leave to re-open is granted.
17 Kenny J heard the matter from 1 to 12 March 2010. In her reasons for judgment published on 6 May 2011 (SNF (Australia) Pty Ltd v Ciba Speciality Chemicals Water Treatments Ltd [2011] FCA 452; (2011) 92 IPR 46), Kenny J concluded that SNF had not established that the innovation patents were invalid and Ciba had established infringement of its patents. Kenny J rejected SNF’s argument of lack of innovative step at [173] – [211]. She explained the test for innovative step in orthodox terms as follows:
[173] In order for there to be a valid innovation patent, the invention as claimed must involve an innovative step: see the Act, s 18(1A)(b)(ii). SNF argued that the invention as claimed in Patent 944 does not involve an innovative step. The Ciba respondents maintained that it does.
[174] Section 7 of the Act relevantly provides:
(4) For the purposes of this Act, an invention is to be taken to involve an innovative step when compared with the prior art base unless the invention would, to a person skilled in the relevant art, in the light of the common general knowledge as it existed in the patent area before the priority date of the relevant claim, only vary from the kinds of information set out in subsection (5) in ways that make no substantial contribution to the working of the invention.
(5) For the purposes of subsection (4), the information is of the following kinds:
(a) prior art information made publicly available in a single document or though doing a single act;
(b) prior art information made publicly available in 2 or more related documents, or though doing 2 or more related acts, if the relationship between the documents or acts is such that a person skilled in the relevant art would treat them as a single source of that information.
(6) For the purposes of subsection (4), each kind of information set out in subsection (5) must be considered separately.
[Notes:
(1) For the meaning of document see section 25 of the Acts Interpretation Act 1901.
(2) See also the definitions of prior art base and prior art information in Schedule 1: see also paragraph 18(1)(b) and subsection 98(1).]
[175] Schedule 1 defines the expression “prior art information” to mean, for the purposes of s 7(5) of the Act, “information that is part of the prior art base in relation to deciding whether an invention does or does not involve an innovative step”. For the purposes of this case, the expression “prior art base” “in relation to deciding whether an invention does or does not involve … an innovative step” comprises the same information considered in relation to deciding whether or not the invention is novel: see Sch 1, definition of “prior art base”.
[176] In Dura-Post (Aust) Pty Ltd v Delnorth Pty Ltd (2009) 177 FCR 239 (Dura-Post) at 256 [73]–[74], Stone J and I described the operation of these provisions in the following way:
Section 7(4) requires a comparison to be made between the invention as claimed in each claim with the information s 7(5) describes. That is, s 7(5) identifies the kinds of information to which the invention as claimed in each claim is to be compared. This information is particular kinds of prior disclosures. Section 7(6) requires that each such prior disclosure be considered separately. That is, the invention as claimed in each claim must be compared separately with each relevant prior disclosure.
In making this comparison, s 7(4) requires that each comparison be made from the perspective of a person skilled in the art, whose task is to identify and assess the variations between the invention as claimed in each claim and the prior disclosure and determine whether or not these variations make a substantial contribution to the working of the invention as claimed in each claim. Dura-Post accepted, as do we, that the primary judge was correct in holding that “substantial” contribution in the context of s 7(4) meant “real” or “of substance”. The place of common general knowledge in this provision is straightforward enough. Section 7(4) contemplates that, in performing this task, a person skilled in the art has certain background knowledge that that person uses in identifying and assessing these variations.
[177] Accordingly, in determining the issue of innovative step, the court must ascertain:
(a) the invention “so far as claimed in any claim”;
(b) the person skilled in the relevant art;
(c) the common general knowledge of the person skilled in the art as it existed in Australia before the priority date; and
(d) whether, when considered from the perspective of a person skilled in the art, in the light of that common general knowledge, the invention as claimed only varied from the kinds of information in s 7(5) — here the cited prior art information — in ways that make no substantial contribution to the working of the invention as claimed.
As noted above, there was no issue about the public availability of SNF’s prior art information.
[178] Plainly enough, the innovative step requirement for innovation patents is less onerous than the inventive step requirement for standard patents: see Dura-Post at 257 [79]. As Stone J and I said in that case:
In substance, s 7(4) deems an invention as claimed to involve an innovative step unless the invention does not differ from the relevant prior disclosure in a way that makes a substantial contribution to the working of the invention as claimed — in the sense of the device or process the subject of each claim. This is a factual inquiry. The assessment is, of course, from the perspective of a person skilled in the art, having regard to the relevant common general knowledge.
18 Kenny J continued:
[189] The variations between each item of prior art information and the invention as claimed must be examined, with a view to assessing whether SNF has established that, on the evidence before the court, the variation of the invention as claimed would, to a person skilled in the art, in the light of the common general knowledge before the priority date, make no substantial contribution to the working of the invention.
[190] The Ciba respondents submitted that there were three relevant variations for the purposes of s 7(4) of the Act:
1. settling as opposed to rigidification;
2. whether the polymer is combined with the slurry material in the form of an aqueous solution; and
3. whether the flocculant is added to the slurry material between the thickener and the deposition area.
The Ciba respondents submitted that each of these differences makes a substantial contribution to the working of the invention. Of course, the question for the court is a different one — whether SNF has established, on the balance of probabilities, that to a person skilled in the art, in the light of the common general knowledge before the priority date, when each relevant comparison is made, it can be concluded that the variations make no substantial contribution to the working of the invention.
19 Kenny J rejected SNF’s case with respect of each piece of prior art information including Pearson (or Slatter 4), Gallagher, and Slatter 10, 12 and 13 saying:
(1) Gallagher or Slatter 3:
[191] With respect to Slatter 3, argument about innovative step turned on the fact that the main difference between Slatter 3 and each of the claims of the Patents in suit was that Slatter 3 referred to the addition of polymer in dry particulate form rather than in aqueous solution as in each of the claims of the Patents in suit.
…
[197] The evidence at trial therefore supports the conclusion that a person skilled in the art, in the light of the common general knowledge before the priority date, would consider the form in which the flocculant is added to have an important effect on the process. The evidence does not establish that the person skilled in the art, in light of relevant common general knowledge, would consider that the invention as claimed in each of the claims of Patent 944 only varied from Slatter 3 in a way or ways that make no substantial contribution to the working of the invention. SNF failed to discharge its onus of proof. Therefore, by virtue of s 7(4) of the Act, Patent 944 and the other Patents in suit have an innovative step when compared to Slatter 3.
(2) Pearson or Slatter 4:
[199] With respect to Slatter 4, argument about innovative step turned on the fact that the principal difference between Slatter 4 and the claims of the Patents in suit was that Slatter 4 referred to the addition of polymer in oil emulsion form rather than in aqueous solution.
…
[203] For the reasons already stated with regard to Slatter 3, the evidence does not establish that a person skilled in the art, in the light of the common general knowledge before the priority date, would consider that the invention as claimed in each of the claims of the Patents in suit only varied from Slatter 4 in a way or ways that make no substantial contribution to the working of the invention. SNF failed to discharge its onus of proof. Therefore, by virtue of s 7(4) of the Act, the Patents in suit have an innovative step when compared to Slatter 4.
(3) Slatter 10, 12 and 13:
[204] With respect to Slatter 10, 12 and 13, argument about innovative step turned on whether the main difference between them and the claims of the Patents in suit lay in the fact that Slatter 10, 12 and 13 were concerned with settling and sedimentation, whilst the claims of the Patents in suit were concerned with improved rigidification.
…
[205] … SNF has not shown that a person skilled in the art, in the light of the common general knowledge before the priority date, would consider that the invention as claimed in each of the claims of the Patents in suit only varied from Slatter 10, 12 and 13 in a way or ways that make no substantial contribution to the working of the invention. On the contrary, Dr Farrow’s evidence indicates that a person skilled in the art, in the light of the common general knowledge, would be unlikely to reach this conclusion.
[206] SNF failed to discharge its onus of proof with respect to Slatter 10, 12 and 13. Therefore, by virtue of s 7(4) of the Act, the Patents in suit have an innovative step when compared to them.
20 On 9 June 2011, Kenny J made orders confirming the validity of the patents and SNF’s infringement of certain claims of the patents, as well as requiring SNF to pay Ciba damages or compensation following an account of profits, at Ciba’s election, with associated consequential orders. These are the orders SNF sought to set aside before the primary judge. Before we get to that application, however, it is convenient to continue the chronology.
21 SNF appealed against the orders of Kenny J. The appeal was heard on 8 and 9 November 2011. The appeal was dismissed (SNF (Australia) Pty Ltd v Ciba Specialty Chemicals Water Treatments Ltd [2012] FCAFC 95; (2012) 204 FCR 325).
22 SNF sought special leave to appeal from the High Court. On 15 March 2013, SNF’s special leave application was dismissed.
23 In the meantime, SNF’s opposition to a standard patent application (known as the 785 patent application), which had been on foot since 5 October 2007 and in abeyance pending the challenge to the validity of the innovation patents, was re-enlivened. At the same time, SNF and Ciba were in dispute about overseas equivalents to the innovation patents – including in Canada. In that context, in June 2013, SNF’s lawyers reviewed Ciba’s discovery in the present matter. On 19 July 2013, SNF’s lawyers also sought copies of documents discovered by Ciba in the Canadian proceedings. On 2 August 2013, SNF filed an Amended Statement of Grounds and Particulars in its opposition to the 785 patent application. This statement alleged that Ciba had engaged in secret use of the invention at 11 locations (secret use had been raised by SNF in its statement filed in 2007 but without any particulars of the alleged secret uses). Amongst many other steps taken by SNF and its lawyers in 2013, they sought (and on 6 December 2013, obtained) permission from the Federal Court of Canada to review but not use the documents Ciba discovered in the Canadian proceedings. A further order was made on 11 March 2014 permitting SNF to use those documents. On 17 April 2014, SNF filed the interlocutory application seeking to set aside the orders of Kenny J.
SNF’s case before the primary judge
24 SNF contended before the primary judge that Ciba was required to but did not discover 15 documents. The documents were required to be discovered, SNF said, because they were directly relevant to its case that the patents lacked an innovative step. SNF did not suggest that if Ciba had discovered the documents SNF would or might have succeeded before Kenny J on the ground of lack of innovative step. SNF’s case is that, if Ciba had discovered the documents, SNF would have amended its case before Kenny J to raise other grounds of invalidity – lack of novelty because of prior uses at locations other than those identified in the proceeding before Kenny J and secret uses by Ciba. If this had occurred, SNF said and Ciba conceded, then there was a real possibility that the outcome of the proceeding before Kenny J would have been different.
25 The parties provided the primary judge with a list of issues to be determined as follows:
(1) Was the Respondent (Ciba) obliged to discover the documents identified in Schedule A to the Applicant’s (SNF) particulars dated 31 July 2014 pursuant to:
(a) the order for general discovery made 8 August 2008 as varied on 24 October 2008; or
(b) [not pressed].
(2) If yes to question 1, what was the level, if any, of culpability of Ciba in not discovering the documents.
(3) If yes to question 1, did SNF exercise reasonable diligence and was it likely in all the circumstances that SNF would have amended its case.
(4) If yes to questions 1 and 3, Ciba has conceded that there was at least a real possibility that there would have been a different outcome at the trial on the question of validity.
26 On 3 June 2014, the primary judge ordered SNF to:
provide full and complete particulars of each of the precise acts and documents (including without limiting the generality of the foregoing, each document in fact discovered by the Respondents/Cross-Claimant) which SNF alleges:
…
(b) enliven the power of the Court, pursuant to rule 39.05(b) of the Federal Court Rules 2011 (Cth), to make the orders sought by SNF in the Application.
27 It is no longer in dispute that, as the primary judge held (at [132]), r 39.05(b) provides the Court with the power to set aside the orders of Kenny J. This rule permits the Court to vary or set aside a final order which has been entered if it was obtained by fraud. Before the primary judge and in this leave application, the parties accepted that “fraud” in r 39.05(b) would include a case in which a party failed to discover documents as required, albeit without any dishonest intent (so-called “equitable fraud”).
28 In accordance with the order of 3 June 2014, SNF filed a document on 31 July 2014 headed “Particulars of Ciba’s Conduct”. Paragraph 11 appeared as follows:
Innovative step discovery obligations
(11) By reason of the matters referred to above in paragraphs 3 to 10 above, Ciba was obliged to give general discovery of all documents that were, or had once been in its possession, power or control, relating to the issue of innovative step including, without limitation, the following documents:
(a) documents which describe or refer to prior public disclosures of any process the same as or similar to the Patented Process,
(b) test reports and experimental results, notes and other internal records relating to the development of the processes described in the patents;
(c) prior art evaluations; and
(d) trade literature and other material consulted during the developmental phase.
(Innovative Step Discovery Obligations).
29 Paragraph 43 asserted that, by reason of the matters in paragraphs 3 to 41, Ciba had engaged in equitable fraud by breaching its discovery obligations.
30 SNF and Ciba filed extensive evidence on the basis of SNF’s particulars dated 3 June 2014.
31 On 10 December 2014, but without objection by Ciba, SNF filed a document “Amended Particulars of Ciba’s Conduct”. Paragraph 11 was amended and appeared as follows:
Innovative step discovery obligations
(11) By reason of the matters referred to above in paragraphs 3 to 10 above, Ciba was obliged to give general discovery of all documents that were, or had once been in its possession, power or control, relating to the issue of innovative step including, without limitation, the following documents:
(a) documents in the possession of Ciba that formed part of the common general knowledge or which contained information that was indicative of matters that formed part of the common general knowledge as at the Priority Date;
(b) documents which related to Ciba’s development pathway (including up to the filing of the Australian application on 7 January 2004) that led to claimed invention, including:
(i) test reports and experimental results, notes and other internal records relating to the development of the processes described in the Patents;
(ii) prior art evaluations; and
(iii) trade literature and other material consulted during the developmental phase (including up to the filing of the Australian application on 7 January 2004).
(a) Documents which describe or refer to prior public disclosures of any process the same as or similar to the Patented Process,
(b) Test reports and experimental results, notes and other internal records relating to the development of the processes described in the patents;
(c) prior art evaluations; and
(d) trade literature and other material consulted during the developmental phase.
(Innovative Step Discovery Obligations).
32 On the same day, SNF filed amended written opening submissions. Those submissions reflected the case as put in the amended paragraph 11. For example, they said:
The statutory test imposed by s 7 (4) requires an evaluation of relevant prior art in the context of common general knowledge. The test requires an assessment of whether the claimed invention constitutes a sufficient advance over the prior art in light of the common general knowledge to amount to an innovative step. The obligation of discovery when a lack of innovative step is alleged necessarily extends to documents which are relevant to an understanding of common general knowledge. Documents which reveal the patentee’s development pathway bear on the extent to which the invention represents an advance over the art.
…
By reason of the Discovery Order, Ciba was obliged to give general discovery of all documents that were, or had once been in its possession, power or control, relating to the issue of lack of innovative step including, without limitation, the following documents:
(a) documents in the possession of Ciba that formed part of the common general knowledge or contained information that was indicative of matters that formed part of the common general knowledge as at the Priority Date;
(b) documents which related to Ciba’s development pathway that led to claimed invention, including:
(i) test reports and experimental results, notes and other internal records relating to the development of the processes described in the Patents;
(ii) prior art evaluations; and
(iii) trade literature and other material consulted during the developmental phase.
(the Innovative Step Discovery Obligations).
33 SNF’s written opening then explained, by reference to each of the disputed documents, why that document ought to have been discovered because it was relevant to Ciba’s “development pathway” and/or the common general knowledge.
34 On 18 December 2014, Ciba filed its written opening submissions. Those submissions explained Ciba’s reasons for rejecting the proposition that it was obliged to discover documents said by SNF to be relevant to Ciba’s “development pathway” and the common general knowledge.
35 The application was heard by the primary judge on 27 January – 6 February, 31 March and 1 April 2015.
36 On 27 January 2015, the first day of the hearing, the primary judge gave leave to SNF to file “Further Amended Particulars of Ciba’s Conduct”. Paragraph 11 remained unchanged.
37 On 27 January 2015, SNF’s senior counsel made opening submissions. Senior counsel said:
Now, we say, your Honour, two things come from that: first of all, the orders for general discovery are wider than category 4(e), not the least because general discovery would require discovery going to common general knowledge, which is not in category 4(e), and in any event, we say that there was an agreement between the parties; Ciba had agreed that it would give 4(e) discovery, but of course that would be subsumed under the general order anyway, so we rely upon the scope of the orders made by her Honour, and if there’s any doubt about what they include, they at least include CGK and category 4(e), and we point out – sorry, I should go on to say, your Honour, that as we observed in paragraph 96, if it matters, we received nine folders of non-confidential documents, and another folder with some confidential documents in them.
That was the universe of discovery, as we set out in paragraph 96, and then we make three points in paragraph 97. At no stage during the conduct of the proceeding, let alone prior to discovery, did Ciba say it was not prepared to make general discovery, including the documents in 4(e). Indeed it appears that that’s exactly what they set about doing. 97(b) points out that at no stage did Ciba say that it thought the categories, including 4(e), were irrelevant, too wide, or oppressive, and at no stage did they say, “We hadn’t made discovery, as you thought, of the documents in category 4(e),” so that the scope or ambit of Ciba’s discovery was, as I’ve just mentioned, your Honour, inter alia to give general discovery which included, for the avoidance of doubt, 4(e) documents.
That had the consequence that had Ciba made proper compliance – or properly complied with their discovery obligations, they would have given my client documents which fell into two categories, two camps: one was documents relevant to establishing common general knowledge; and the second is documents relating to what I’ve called Ciba’s development pathway, the 4(e) documents. Had they done so, we would have been able to – we would have been provided with information which would have enabled my client to plead, discover and prove a trial, and, by discover, I would include in that, your Honour, if it were necessary to subpoena third parties, and we will come to this, such as Nalco or Iluka, we would have been in a position to advance our case on OreBind, Yoganup and secret use.
38 It will be recalled that category 4(e) is a reference to one of the categories of discovery by Ciba initially proposed by SNF. Orebind and Yoganup are references to the prior uses SNF alleged it would have raised in respect of the ground of lack of novelty had the disputed documents been discovered.
39 As discussed above, SNF no longer suggests that there was an agreement with Ciba or that Ciba is estopped from denying that it was required to discover documents in category 4(e). This part of the transcript is relevant because it discloses SNF’s case, consistent with paragraph 11, that if Ciba had complied with its obligation to give general discovery in accordance with Order 15 r 2(3) it would have discovered documents relating to the common general knowledge and Ciba’s “development pathway”.
40 Senior counsel for Ciba responded noting this:
Now, if I could then in the particulars take your Honour back to paragraph 11, and paragraph 11 – I’m sorry, your Honour.
HER HONOUR: Yes.
MR SHAVIN: The innovative step obligation is articulated in paragraph 11 in two ways: the first is documents in the possession of Ciba that form part of the common general knowledge; and then look at the next phrase, your Honour, “or which contained information which was indicative of matters that formed part of common general knowledge”.
41 He continued in these terms:
It was the first big reform after the introduction of the docket system to cutting back the discovery obligations to prevent the excesses, a matter of real controversy in the court, and it was a very significant modernisation of the rules, and the second thing is in subparagraph (b), documents which related to Ciba’s development pathway that led to the claimed invention – and then they list 1, 2, and 3. Now, it’s our respectful submission that based on the law to which I’m now going to take your Honour, this is untenable. The development pathway cannot and does not relate to any matter arising under section 7(4), which is the definition of innovative step to which my friend took your Honour.
…
So for the purposes of the Act, an invention is taken to involve an innovative step when compared with a prior art base unless the invention would to a person schooled in the relevant art in the light of common general knowledge as it existed in the patent area before the priority date only vary from the kinds of information set out in subsection (5) in ways that make no substantial contribution to the working of the invention. In other words, is it novel? And you look at the extent to which any differences make a substantial contribution. That’s what it adds to novelty.
…
What you don’t do is you don’t adduce a whole lot of evidence about common general knowledge, because it’s not relevant. All that you do is you look at this through the eyes of the skilled addressee. You certainly don’t look at the development pathway, because the development pathway is not relevant to any matter. Unlike the case of inventive step in section 7(2), where the comparison is between the invention and common general knowledge to see whether or not it was obvious, in the light of that common general knowledge, in relation to innovative step, you look at a comparison between the invention, the kinds of information in subsection (5) and see if the variation – in fact, there is only varies in ways that make no substantial contribution to the working of the invention.
Now, the subtext of that was if it’s a trivial variation from that which had gone before, it might be novel, because depending upon the view you take of knowledge – it is not quite as plain as our friends say, but novelty, in a sense, is lining up each of the integers in the claim and seeing if those integers are disclosed in the prior publication or the prior use. So if you’ve got a small variation – I’m sorry. Sorry, your Honour. If you’ve got a small variation, that might be enough for it not to be novel, but if there is a variation, it can’t be trivial. It has to be something that makes a substantial contribution to the working of the invention, and that’s why section 7(4), properly, is understood as a modified novelty test for innovation patents.
…
Now, your Honour, in our respectful submission, when one considers both the statutory text and the explanation of that text by the Full Court in Delnorth [Dura-Post (Aust) Pty Ltd v Delnorth Pty Ltd [2009] FCAFC 81; (2009) 177 FCR 239], accepted by the Full Court in this case and accepted by those representing our friends below, it is plain that the comparison is limited. It is plain that it is not the test for invention. It is plain that the role of common general knowledge is quite different and there is no room in that comparison for any relevance on the development pathway. Now, if we pause there, then it cannot be said by our friends “Oh, well, if we had known of the existence of these documents, we would have come to the court and asked for an order for further discovery,” because they would never have got it because discovery of a development pathway isn’t relevant. So that if one looks at those of the documents in annexure A, and there are many of them, the discoverability of which is argued by reference to the development pathway, one can immediately know that those documents and classes of documents aren’t relevant, weren’t relevant and weren’t at any time the subject of an obligation on Ciba under an order of general discovery.
…
Now, could I then move to considering the three categories. Your Honour will recall that we started at paragraph 11 of the amended particulars which defined the innovative step discovery obligations so called.
42 This part of the transcript shows Ciba’s response to SNF’s case. First, paragraph 1 of the extract identifies the two classes of documents SNF alleged Ciba had to discover – those relating to common general knowledge and Ciba’s “development pathway”. Second, the transcript demonstrates that Ciba contended it had no obligation to discover documents relating to the common general knowledge or its “development pathway”.
43 On 5 February 2015, SNF filed “Further Amended Particulars of Ciba’s Conduct” which deleted some matters but did not change paragraph 11.
44 On 6 February 2015, the last day of the evidence before the primary judge and with the primary judge’s leave, SNF filed their “Second Further Amended Particulars of Ciba’s Conduct” which also did not change paragraph 11.
45 The matter was adjourned part-heard until 31 March 2015 for closing submissions.
46 On 2 March 2015, SNF provided its written closing submissions. Those submissions do not refer to Ciba’s “development pathway” as a ground for Ciba’s alleged obligation to discover the disputed documents. Instead the submissions include the following:
SNF contends that Ciba has failed to comply with its obligations of discovery. Ciba’s obligation of discovery pursuant to Order 15 Rule 2(3) included an obligation to discover documents relevant to the pleaded ground of innovative step. SNF’s pleaded case on innovative step particularised prior processes which only varied from the Patented Process in terms of:
(a) the form in which the polymer was added to the tailings (aqueous solution, powder or neat emulsion); and
(b) whether improved rigidification was achieved by the prior processes particularised.
…
(b) Key variations from the pleaded prior art
Documents are directly relevant to innovative step insofar as they relate to the “variation” between the Patented Process and the pleaded prior art and the contribution made by that variation to the working of Patented Process.
On SNF’s pleaded case in relation to lack of innovative step, there were two key variations between the invention claimed and the prior art particularised:
(i) the form in which the polymer is added;
(ii) improved rigidification as compared to settling and sedimentation.
The form in which the polymer is added
Each version of SNF’s Particulars of Invalidity, including the Amended Particulars of Invalidity dated 22 August 2008 identified both the Gallagher patent and the Pearson patent as relevant prior art for the purposes of innovative step.
A key difference between the process of the invention and the process described in the Gallagher patent (Slatter 3) is that the Gallagher patent discloses a process of secondary flocculation in which the polymer is added to the mining tailings in powder (particulate) form to achieve improved rigidification whereas the invention involves the addition of polymer in aqueous solution to the mining tailings to achieve improved rigidification.
A key difference between the process of the invention and the process described in the Pearson patent (‘Cytec’) patent (Slatter 4) is that the Pearson patent discloses the addition of polymer to the mining tailings in the form of a neat emulsion to achieve improved rigidification whereas the invention uses polymer in aqueous solution to achieve improved rigidification.
Accordingly, a key issue raised by SNF’s allegation of innovative step is the contribution made to the working of the invention by the form in which the polymer is added.
At the time of giving discovery, Mr Lee was familiar with the Patent and also had ‘probably read’ the Gallagher patent. Mr Lee accepted that the pleaded case on innovative step advanced by SNF involved a comparison between the process of the invention and the specifically pleaded pieces of prior art including Gallagher and Pearson and that ‘there was certainly a lot of focus on that difference’.
Documents which relate to this issue are directly relevant and therefore properly discoverable. For example, documents relating to trials conducted by Ciba involving the addition of the polymer in different forms to assess the contribution of the different forms of polymers to achieving ‘improved rigidification’, would be directly relevant to innovative step.
47 For each of the disputed documents, SNF’s written closing submissions explain why the document should allegedly have been discovered on the grounds that the document was directly relevant to differences between the invention (the so-called variations) and the prior art (being the form of addition of the polymer and improved rigidification) and/or showed the views of Ciba’s employees about the variations.
48 Ciba provided its written closing submissions on 23 March 2015. According to Ciba, SNF had reformulated its case by deleting every reference to “development pathway” and contending, for the first time, that Ciba was required to give discovery in respect of “two key variations between the invention claimed and the prior art particularised”. Ciba contended that in a case involving an allegation of equitable fraud, SNF should not be permitted to reformulate its case at that late stage given that Ciba had filed its evidence, opened, cross-examined and called evidence based on the versions of paragraph 11 as filed.
49 During closing oral submissions the primary judge asked senior counsel for SNF to deal with Ciba’s submission that SNF had “gone well beyond the case as particularised”. Senior counsel for SNF said that SNF had “narrowed [its] focus”. Senior counsel also said:
So, your Honour, the position is this: that we, in our amended particulars at paragraph 11 and in our opening submissions at 102, spelt out that the two species of documents that we said our friends should have discovered were common general knowledge – and if I can take your Honour to the second further amended particulars of Ciba’s conduct.
HER HONOUR: Yes.
MR CAINE: At paragraph 11, we say that those two species of documents should be at the top of – sorry, in paragraph 11A. Documents in the possession of Ciba that form part of common general knowledge. And (b), documents which related to Ciba’s development pathway that led to the invention. And then we set out the types of documents that fall into that category. We’ve consistently put, your Honour – and this isn’t a matter – just to pause, your Honour. This isn’t a question of identifying with precision the fraudulent conduct. This is drawing attention to the two species of documents that we say our friends should have discovered consistent with their obligations under order 15, rule 2.
We’ve consistently put our case on the basis that the enquiry under 7(4) is as I’ve articulated to your Honour. And more particularly, your Honour will note that all of the schedule A documents relate to Ciba’s development pathway, if that general term be used. We say, your Honour, that the central enquiry has always been – I will put that differently, your Honour. There can’t be any surprise or prejudice on our friends’ part by us now saying that the documents in schedule A should have been discovered under section 7(4). Our case has always been that the schedule A documents lie at the heart of the case.
The central question is whether the schedule A documents are directly relevant to the question that arises under innovative step. It always has been. The comparison that we sought to make – now seek to make or raise as an issue in the case – it has always been clear. It’s a matter of law, your Honour. We’ve pleaded it out and we say those documents are documents that are relevant under order 15, rule 2 to that enquiry. That is, Gallagher’s variation, Pearson’s variation and Slatter 10, 12 and 13 have always laid at the heart of the case.
The next thing, your Honour, is that in terms of any suggestion there might be prejudice, if we look at the content of the schedule A documents and how that was managed at trial. Dealing with the evidence first, what each schedule A document disclosed was the subject of, I think, little or no evidence from either side in affidavit form. I think Mr Lee gave some evidence about certain aspects of the documents but not their content or their technical content. There was some oral evidence where I cross-examined Mr Lee about some of the documents and then stopped, for reasons I will articulate. And my learned friend cross-examined Mr Watson about some of the documents and then stopped.
Both sides ultimately, with your Honour’s concurrence, accepted it was ultimately a matter for submissions about what’s in the documents. And I don’t think your Honour – well, I withdraw that. When we come to submissions, the position is that Ciba has put on detailed submissions on the content of each document and what your Honour should conclude. We say the case is one that hasn’t substantially changed. It has always been about whether the schedule A documents are documents that were relevant to the question of innovative step. And our friends have not suffered any prejudice in the way they’ve been able to conduct the case or put their submissions.
50 In other words, SNF denied that its case had changed.
51 SNF did not make any argument in the alternative if the primary judge accepted Ciba’s contention that SNF had reformulated its case and should not be permitted to do so. Nor did SNF seek leave to be heard further in that event.
Did SNF impermissibly change its case?
The primary judge’s decision
52 The primary judge noted that SNF accepted that Order 15 r 2(3) limited the scope of general discovery to documents which are “directly relevant” and that the “train of inquiry” test which applied before the introduction of the rule did not govern Ciba’s discovery obligation (at [29]). The “train of inquiry” test, superseded by Order 15 r 2(3), is that a “only a document which relates in some way to a matter in issue is discoverable, but it is sufficient if it would, or would lead to a train of enquiry which would, either advance a party’s own case or damage that of his adversary” (Mulley v Manifold (1959) 103 CLR 341 at 345). The primary judge also made the point, which is not in dispute, that whether a document is “directly relevant” must be determined by reference to the pleadings and particulars (at [29]).
53 The primary judge considered SNF’s case as identified in paragraph 11, SNF’s opening, and SNF’s closing. At [44] – [53] the primary judge explained her conclusion that SNF had changed its case in closing submissions and should not be permitted to do so but, rather, should be confined to the case which Ciba had met. At [35] she said:
SNF’s case, as pleaded and opened in this application, was that the “development pathway” documents were discoverable in respect of innovative step and/or as part of the Category 4(e) documents by reason that “documents which reveal the patentee’s development pathway bear on the extent to which the invention represents an advance over the prior art”. In closing submissions, SNF abandoned both its reliance on the Category 4(e) discovery and the claim that Ciba had been required to discover documents concerning its development pathway.
54 On that basis, the primary judge then considered each of the disputed documents. In respect of the seven documents which remain in dispute, the primary judge concluded as follows:
(1) Document 2
[63] Document 2 is a Ciba internal memo dated 8 September 2003 containing the minutes of a “Kenneth (Son of Zenith)” project meeting held on 2 September 2003. The document was provided by Ciba to its solicitors as part of the discovery exercise but was not discovered.
…
[67] SNF’s closing contentions with respect to Document 2 departed from SNF’s pleaded basis and opening submission, namely that Document 2 was discoverable because it “contained information relating to secondary flocculation practices indicative of matters that form part of the common general knowledge” and also because it “demonstrated Ciba’s development pathway that led to the claimed invention, being a note or other internal record relating to the development of the processes described in the patents and prior art evaluation”. For the reasons earlier stated, SNF cannot at this late stage rely on this new ground to support its claim that Ciba breached its discovery obligations. As no other basis was put forward in closing submissions, SNF has not shown that this document was discoverable.
[68] Given that SNF has abandoned its claim that the document was discoverable because it demonstrated Ciba’s development pathway, it is unnecessary to deal with Ciba’s argument that the document was not discoverable in any event because it post-dated the priority date.
(2) Document 3:
[69] Document 3 is a Ciba memo dated 9 September 2003 containing the minutes of an “IMT” team meeting held on 8 September 2003. This document was not provided by Ciba to its solicitors as part of the discovery process but it was discovered in the Canadian proceeding.
…
[71] SNF’s closing contentions with respect to Document 3 departed from SNF’s pleaded basis and opening submission, namely that Document 3 was discoverable because it “contained information relating to secondary flocculation practices indicative of matters that form part of the common general knowledge” and also because it “demonstrated Ciba’s development pathway that led to the claimed invention, being a note or other internal record relating to the development of the processes described in the patents and prior art evaluation”. For the reasons earlier stated, SNF cannot at this late stage rely on this new ground to support its claim that Ciba breached its discovery obligations. As no other basis was put forward in closing submissions, SNF has not shown that this document was discoverable.
…
[73] Given that SNF has abandoned its claim that the document was discoverable because it demonstrated Ciba’s development pathway, it is unnecessary to deal with Ciba’s argument that the document was not discoverable in any event because it post-dated the priority date.
(3) Document 4:
[74] Document 4 is an email chain between Ciba employees from December 2003. The document was provided by Ciba to its solicitors as part of the discovery exercise but was not discovered.
…
[77] SNF’s closing contentions in respect of Document 4 departed from SNF’s pleaded basis and opening submission, namely that Document 4 was discoverable because it “contained information relating to secondary flocculation practices indicative of matters that form part of the common general knowledge” and also because it “demonstrated Ciba’s development pathway”. For the reasons earlier stated, SNF cannot at this late stage rely on this new ground to support its claim that Ciba breached its discovery obligations. As no other basis was put forward in closing submissions, SNF has not shown that this document was discoverable.
[78] Given that SNF has abandoned its claim that the document was discoverable because it demonstrated Ciba’s development pathway, it is unnecessary to deal with Ciba’s argument that the document was not discoverable in any event because it post-dated the priority date.
(4) Document 11:
[101] Document 11 is a Ciba internal memo dated 11 March 2003 containing the minutes of a “Zenith” project meeting held on 7 March 2003. It was provided by Ciba to its solicitors as part of the discovery exercise but was not discovered.
…
[104] SNF’s closing contentions with respect to Document 11 departed from SNF’s pleaded basis and opening submission, namely that Document 11 was discoverable because it “demonstrated Ciba’s development pathway”. For the reasons earlier stated, SNF cannot at this late stage rely on this new ground to support its claim that Ciba breached its discovery obligations. As no other basis was put forward in closing submissions, SNF has not shown that this document was discoverable.
(5) Document 12:
[106] Document 12 is a Ciba memo dated 6 June 2003 containing the minutes of an “IMT meeting” held on 5 June 2003. Document 12 was discovered by Ciba in the Canadian proceeding. Document 12 was not provided by Ciba to Griffith Hack for the purpose of its discovery.
…
[110] SNF’s closing contentions in respect of Document 12 departed from SNF’s pleaded basis and opening submission, namely that Document 12 was discoverable because it “demonstrated Ciba’s development pathway”. For the reasons earlier stated, SNF cannot at this late stage rely on this new ground to support its claim that Ciba breached its discovery obligations. As no other basis was put forward in closing submissions, SNF has not shown that this document was discoverable.
[111] Given that SNF has abandoned its claim that the document was discoverable because it demonstrated Ciba’s development pathway, it is unnecessary to deal with Ciba’s argument that the document was not discoverable in any event because it post-dated the priority date. Again, the fact that Ciba discovered the document in the Canadian proceeding does not mean it was discoverable in this proceeding.
(6) Document 13:
[112] Document 13 is an email chain between Ciba representatives from between 4 September 2002 and 28 November 2002. That email chain was provided by Ciba to its solicitors as part of the discovery exercise but was not discovered.
…
[116] SNF’s closing contentions in respect of Document 13 departed from SNF’s pleaded basis and opening submission, namely that Document 13 was discoverable because it “demonstrated Ciba’s development pathway”. For the reasons earlier stated, SNF cannot at this late stage rely on this new ground to support its claim that Ciba breached its discovery obligations. As no other basis was put forward in closing submissions, SNF has not shown that this document was discoverable.
[117] Furthermore, the specific part of the email chain upon which SNF sought to rely in relation to the claim of secret use was not a document that could possibly have been discoverable in respect of the pleaded claims of invalidity. Ciba would not have been required to discover that email.
(7) Document 14:
[118] Document 14 is an email chain between Ciba employees and was provided by Ciba to its solicitors as part of the discovery process.
…
[121] SNF’s closing contentions in respect of Document 14 departed from SNF’s pleaded basis and opening submission, namely that Document 14 was discoverable because it “demonstrated Ciba’s development pathway”. For the reasons earlier stated, SNF cannot at this late stage rely on this new ground to support its claim that Ciba breached its discovery obligations. As no other basis was put forward in closing submissions, SNF has not shown that this document was discoverable.
Did the primary judge err?
55 In its written submissions on the leave application, SNF contended that its case had not changed, in reasons which substantially proceeded as follows. Ciba’s discovery obligations were apparent on the face of SNF’s particulars of invalidity by reason of lack of innovative step. Section 7(4) of the Act required the variations between the invention and the prior art to be considered and the contributions to the working of the invention made by the variations. SNF’s particulars of invalidity identified the relevant prior art as including Gallagher, Pearson and Slatter 10, 12 and 13. The invention was different from the prior art in respect of the form of addition of the polymer (liquid not dry powder as in Gallagher, nor a neat emulsion as in Pearson) and involved improved rigidification rather than settling and sedimentation (as in the Slatter prior art documents). Kenny J had identified the variations on which Ciba relied including at [86] where she said:
The Ciba respondents responded that not one of the 6 prior documents relied on by SNF satisfied the test for lack of novelty because each document was missing at least one integer of the claims. The Ciba respondents submitted that there were three key differences: (1) whether the polymer is in the form of an aqueous solution when combined with the material to be deposited; (2) whether a process of settling and sedimentation is a process of improving “rigidification” within the meaning of the claims; and (3) whether the addition of the polymer before or in the thickener is “during transfer” as that phrase is used in the Patents.
56 Kenny J had rejected SNF’s arguments of lack of innovative step in respect of each of the prior art documents as a result of her consideration of those variations. “Variation” was therefore said to be essential to the innovative step case put by SNF.
57 Accordingly, the primary judge was wrong to conclude that Ciba was not on notice of the case it had to meet. SNF’s particulars of Ciba’s conduct before the primary judge in paragraph 11 referred to Ciba’s obligation to give general discovery in relation to innovative step “including, without limitation” the documents specified in sub-paragraphs (a) and (b) (referring to the common general knowledge and “development pathway”). Further, SNF’s opening submissions referred to Ciba’s obligation to give general discovery and the requirement imposed by s 7(4) to identify the advance made by the invention compared to the prior art. In its opening oral submissions, SNF identified “development pathway” as a shorthand referring to Ciba’s obligation to give general discovery of documents relevant to innovative step. Ciba’s oral opening revealed its awareness of the case SNF was making. Cross-examination of Ciba’s witnesses by SNF, specifically of Mr Lee (Ciba’s solicitor), to which Ciba did not object, included questions about the differences between the prior art documents and the invention. Ciba also cross-examined SNF’s solicitor, Mr Watson, about the differences between the prior art documents and the invention. Ciba filed evidence from Mr Bellwood about what was revealed in the disputed documents including under headings referring to the form of the flocculant and improved rigidification.
58 In oral submissions on the leave application, SNF described sub-paragraphs (a) and (b) to paragraph 1 as a “distraction” from SNF’s essential proposition that Ciba was obliged to give general discovery of documents relevant to SNF’s claim of lack of innovative step on the basis of SNF’s pleaded case which particularised the prior art as including Gallagher, Pearson and Slatter 10, 12 and 13 in circumstances where Ciba knew, and ran its case before Kenny J on the basis of, certain key variations between the prior art and the invention.
59 SNF also said error was apparent in [35] of the primary judge’s reasons. As SNF put it, while the primary judge was wrong to conclude that SNF had changed its case in that the case put in closing was merely a refinement of the case which SNF had always made, it was clear that SNF had not abandoned its case as the primary judge proposed in [35]. If SNF had changed its case, according to this submission, it could not also have been that SNF abandoned its earlier case, thereby leaving it with no case at all that the documents were discoverable. In particular, even if it could be concluded that SNF had abandoned its “development pathway” case, the same conclusion was not open in respect of SNF’s common general knowledge case, yet the primary judge did not deal with that issue.
60 We do not accept any of these arguments. Any persuasive force they might exercise is a result of the beguiling effects of hindsight. Indeed, in our view, SNF’s application is itself a manifestation of the desire to recast and then re-do the case it ran before Kenny J, but this time with the benefit of not only knowing the outcome of that decision, but also of another five years’ worth of hard thinking about where the case went wrong for SNF. While we can understand the urge, permitting it to be satisfied in this case would be unjust.
61 Sub-paragraphs (a) and (b) of paragraph 11 were not mere “distractions” as SNF submitted. Before SNF’s closing submissions below, there was no hint that SNF and Ciba understood them as other than particulars of the reasons why Ciba was required to discover the disputed documents. Before SNF’s closing submissions there was also no hint that SNF’s case was that Ciba was obliged to discover the disputed documents because they disclosed matters relevant to the variations between the invention and five prior art documents, Gallagher, Pearson and Slatter 10, 12 and 13, which had been identified (amongst many others) in SNF’s particulars of invalidity before Kenny J. Nothing in the opening submissions, either written or oral, supports SNF’s contention that its case was always that Ciba was required to discover documents on this basis. The fact that paragraph 11 refers to general discovery and is inclusive (“includes without limitation…”) may be accepted. Yet even when read with a keen eye, there is no suggestion by SNF at any time before closing submissions that its case was other than that Ciba was required to discover the disputed documents because they were directly relevant to the common general knowledge and Ciba’s “development pathway”.
62 It is not the case that “development pathway” referred to Ciba’s obligation to give general discovery relating to innovative step. It is plain that by “development pathway”, SNF meant documents which showed the development of Ciba’s invention, in effect, as had been originally sought in proposed category 4(e).
63 The affidavit filed by Ciba from Mr Bellwood does not demonstrate that Ciba understood that SNF’s case was the case which SNF made in its closing submissions. Mr Bellwood’s affidavit was made in the opposition proceedings in respect of the standard patent. Innovative step is not relevant to a standard patent. Mr Bellwood was dealing with SNF’s arguments in the opposition to the standard patent that it lacked inventive step and thus failed for obviousness (inventive step being a requirement for a standard patent). Ciba’s submission was that it filed Mr Bellwood’s affidavit in respect of the application before the primary judge because, if the primary judge decided agreed issues (1) to (3) against Ciba, Ciba’s concession on agreed issue (4) (that Ciba has conceded that there was at least a real possibility that there would have been a different outcome at the trial on the question of validity) required a factual foundation. That submission is persuasive. As Ciba noted, Mr Bellwood was not cross-examined about anything to do with this part of his affidavit in the opposition proceedings.
64 Otherwise, in terms of the cross-examination on which SNF relies, Mr Lee and Mr Watson are solicitors. They are not persons skilled in the relevant art of flocculation of mine tailings. They could not have given any evidence relevant to the contribution made by the variations between the invention and the prior art. Nor, it is apparent, were they being asked to do so. Mr Lee was asked about SNF’s case on lack of innovative step before Kenny J. He was not asked, and said nothing about, SNF’s case before the primary judge. Mr Watson was asked about the content of some of the disputed documents before senior counsel for Ciba (rightly) took the view that nothing Mr Watson could say about the content could be relevant, so the issue would be dealt with in closing submissions. The reservation by both SNF and Ciba of the right to deal with the content of the disputed documents in closing submissions did not permit SNF to recast the basis on which it contended the documents were discoverable. Yet this is what SNF did.
65 The case made in oral submissions on the leave application, that [35] of the primary judge’s reasons discloses error because it could not be concluded that if it had changed its case SNF had also abandoned its original case, suffers from the same defect as SNF’s closing submissions before the primary judge – it is a new case and does not appear in the draft notice of appeal or SNF’s written submissions in chief or reply on the leave application. In common with SNF’s case overall in this application, the apparent logical coherence of the submission – that a party would not leave itself without any case on the principal issue – is hindsight at work.
66 Before the primary judge, SNF’s case was that Ciba had to discover the documents because they were directly relevant to its case of lack of innovative step by disclosing the common general knowledge and/or Ciba’s “development pathway”. Ciba contended that this case was misconceived, as documents disclosing the common general knowledge and/or Ciba’s “development pathway” could not be relevant to lack of innovative step. SNF maintained its case until closing submissions. Then, for reasons known only to it, SNF recast its case to one in which Ciba had to discover the documents because they were directly relevant to its case of lack of innovative step by disclosing the views of Ciba’s employees in respect of and information about the two key variations between the invention and certain prior art documents. Ciba objected and submitted that SNF should not be permitted to recast its case and had to be held to the case as set out in paragraph 11 of SNF’s “Further Amended Particulars of Ciba’s Conduct”. SNF was then faced with a number of options.
67 First, SNF could accept what Ciba said and revert to its case as set out in paragraph 11 of its “Further Amended Particulars of Ciba’s Conduct”.
68 Second, SNF could try to “hedge its bets” by contending that it had not changed its case but seeking a further opportunity to be heard if the primary judge decided it had changed its case and should not be permitted to do so. There is no guarantee that the primary judge would have given SNF any further opportunity, nor is it possible to identify what application SNF might have made had the opportunity been given, but there are several obvious possibilities (including filing amended closing submissions which did not change its case, seeking an adjournment and such directions as might be necessary to cure any prejudice to Ciba, if prejudice was found).
69 Third, SNF could bank on Ciba’s argument that SNF had changed its case being rejected and rely on that case alone.
70 SNF took the third option. It denied it had changed its case. It made closing submissions based only on the case of the two key variations and the views of Ciba’s employees about those variations. It said nothing about Ciba’s “development pathway”. It did say that the documents were relevant to the common general knowledge but, as explained below, this submission was part of the new case in respect of the two key variations.
71 In these circumstances, we agree with the primary judge that SNF abandoned the case as put in paragraph 11 of SNF’s “Further Amended Particulars of Ciba’s Conduct” relating to Ciba’s “development pathway”. It changed its case to one in which the documents were required to be discovered because they disclosed information about the two key variations between the invention and the prior art as disclosed in five of the multiplicity of documents which SNF had pleaded before Kenny J. We also agree with the primary judge that SNF should not have been permitted to make the new case based on the two key variations. The reasons the primary judge gave for reaching this conclusion cannot be impugned. She said:
[51] It would be unfair to Ciba if SNF were now permitted to advance that basis as constituting the obligation to make discovery that was breached by Ciba in circumstances where Ciba was not put on notice of the case against it as it is now put by SNF. The very purpose of the Particulars of Conduct was to put Ciba on notice of the case that Ciba was required to meet in the presentation of its case. Those particulars went through several iterations and Ciba filed its evidence and presented its case at the hearing of this application on the basis of the case against it as pleaded in the Particulars of Conduct. The failure to plead the basis upon which SNF now relies has denied Ciba the opportunity to present such evidence as may be necessary or desirable, including technical evidence, to deal with the case as SNF put against it in closing submissions. SNF argued that there would have been no need for Ciba to adduce technical evidence as claimed by Ciba by reason that the documents in question are not documents that need to be interpreted in a technical sense, but that is contested by Ciba. Ciba has claimed that many of the documents do not reveal what SNF asserted the documents to reveal.
[52] Having considered the arguments put by Ciba in response to what SNF claims to be the content of the disputed documents, I am not satisfied that Ciba would not have conducted its case differently had it been put on notice at an earlier time of the claim now advanced. There is a clear dispute between the parties about what the documents reveal and the court does not have the benefit of considered analysis by relevant witnesses about the content of those documents by which to judge the competing positions of the parties. Given that SNF has alleged equitable fraud against Ciba, I consider that it would be fundamentally unfair to Ciba to allow SNF to rely on this new case to support its claim that Ciba breached its discovery obligations. Although SNF has not made any allegations of deliberate or intentional misconduct, it is well established that where fraud is alleged “particulars of the fraud claimed must be exactly given and the allegations established by the strict proof such a charge requires”: Spalla v St George Motor Finance (No 5) [2004] FCA 1262 (Spalla) at [60].
[53] SNF should be confined to the case that Ciba came to court to meet, as particularised in the Particulars of Conduct. Voluminous evidence and legal submissions were filed and heard prior to the reformulation of its case. The very late stage that SNF changed the basis on which it put its case on discovery and the prejudice to Ciba if that reformulation was allowed are factors which weigh heavily against SNF: Aon Risk Services Australia Ltd v Australian National University (2009) 239 CLR 175.
72 This leaves the common general knowledge issue. The reality is this. When it explained in its closing written and oral submissions why the seven remaining documents in dispute were discoverable, in respect of each document, SNF said that the document disclosed the views of Ciba employees about one or both of the two key variations. Accordingly, and for example, document 11 was said to be relevant because it disclosed the view of Ciba employees that the form of the polymer (dry powder or aqueous solution) did not matter. Document 13 was said to be discoverable because it disclosed the results of trials of the form of the polymer (dry powder or aqueous solution) on outcomes including rigidification, and the evaluation of the results by Ciba employees. Document 2 was said to be discoverable because it disclosed the views of Ciba employees about the same issues for other trials (the form of the polymer and effects on rigidification). Document 14 is said to disclose the “indicia of rigidification as opposed to settling or sedimentation”.
73 In other words, there was no argument put by SNF about the common general knowledge or the views of Ciba’s employees (to the extent that they might disclose the common general knowledge) separate from the argument about the two key variations. As a result, the primary judge accurately identified SNF’s new argument as one in which Ciba had to discover documents directly relevant to two key variations between the invention and the prior art, being the form in which the polymer was added to the mine tailings and improved rigidification. The common general knowledge argument had been both transformed and subsumed into this new argument; the argument was now that the views of Ciba employees about the two key variations were also disclosed in the disputed documents and ought to have been discovered on that basis. Inescapably, therefore, the common general knowledge, insofar as it remained, was an argument based on the two key variations. That was a new argument. It was an argument the primary judge rightly said could not be put in closing submissions.
74 For these reasons and contrary to SNF’s submission, the primary judge’s conclusion – that the only argument SNF put in support of Ciba being required to discover the disputed documents was the new argument about the two key variations – was correct. She did not inexplicably overlook SNF’s common general knowledge argument.
75 These conclusions also undermine SNF’s submission that, if Ciba had been surprised by SNF’s closing submissions and believed it needed to lead further evidence to avoid prejudice, then Ciba should have applied to do so and not waited until closing submissions to argue that SNF should be shut out. Ciba was entitled to seek to hold SNF to the case SNF had notified to it. It was SNF that made the forensic decision to deny any change of case and not to try to reserve a case in the alternative or an opportunity for an adjournment to avoid prejudice to Ciba. The primary judge was not in error in this regard.
76 It follows that leave to appeal on these proposed grounds (grounds 3 to 7 in the draft notice of appeal) should not be granted.
Were the seven documents discoverable?
77 Although it is unnecessary to decide whether SNF could have succeeded on its new and impermissible argument, and potentially unfair to Ciba because it was denied the opportunity to adduce evidence about the two key variations as a basis for discoverability of the disputed documents before the primary judge, we wish to record our view that nothing which was put on the leave application persuades us that Ciba was required to discover the disputed documents.
78 Reference to the “direct relevance” test should not be permitted to divert attention from the terms of Order 15 r 2(3). The “direct relevance” test exposes more about what is not required to be discovered under Order 15 r 2(3) than what is required to be discovered. What is not required to be discovered is a document which is relevant only because it would lead to a train of inquiry which would either advance a party’s own case or damage that of his adversary. This is the effect of the cases cited by the primary judge at [29] of her reasons.
79 What is required to be discovered, however, is not any document “directly relevant” to the question whether or not the patents lacked an innovative step. Order 15 r 2(3) confines the discovery obligation, relevantly, to the party’s “case”. It is only documents on which a party relies, which adversely affect a party’s case, or which support a party’s case which are required to be discovered. Ciba did not wish to rely on the documents. Nor did it see the documents as supporting its case. Accordingly, the issue is whether the documents, considered separately as required by s 7(5) of the Patents Act 1990 (Cth), were directly relevant in that they supported SNF’s case that the patents lacked an innovative step as identified in SNF’s particulars of invalidity (or, conversely, adversely affected Ciba’s defence against SNF’s case).
80 To the extent relevant, Ciba’s case before Kenny J was that the patents involved variations from the prior art (relevantly, addition of the polymer in the form of an aqueous solution and the associated rigidification of the slurry rather than settling and sedimentation). SNF’s case was that these so-called variations did not involve any material contribution to the working of the invention compared to the prior art, including Gallagher, Pearson and Slatter 10, 12 and 13. The disputed documents do not compare the invention to Gallagher, Pearson and Slatter 10, 12 or 13 at all, let alone compare them for the purpose of identifying any material contribution to the working of the invention by the variations.
81 Document 2 includes a reference to project results at Alcoa Kwinana being “not as good as expected”. “Water release was fast initially, but has since slowed down. Solids are still better in the treated bay, but dewatering rate is now slower than untreated”. There then follows this statement:
Double Zenith dose during next pour in order to reach higher solids levels faster.
82 This is said by SNF to disclose the immateriality of the form in which the polymer was added compared to the dose of the polymer. Assuming that to be so (although it might fairly be described as a long stretch), this does not, of itself, tend to prove or disprove the existence of the variations between the invention as claimed and the prior art as identified or their materiality. It is a report about one trial at one time in the development of the invention. At best, the document might lead to a train of inquiry about the particular test and its relevance to the invention as claimed. It is not directly relevant to the cases of SNF and Ciba before Kenny J. This is the submission Ciba put to the primary judge, recorded at [66], and it is compelling.
83 Document 3 exhibits an even more tenuous connection with the cases of SNF and Ciba before Kenny J. Despite SNF’s description of the document, it is apparent that it says nothing more than that, in respect of patent issues (presumably, the anticipated patents now in dispute), “co-disposal aspects may be vital”. By implication, this is said to disclose the immateriality of the form in which the polymer was added and the lack of difference in terms of settling, sedimentation and so-called rigidification. Even if this description is tenable (and we think it is not), the document is not, of itself, relevant to the cases of SNF and Ciba before Kenny J. It has nothing to do with any comparison between the prior art pleaded and the invention claimed.
84 Document 4 is said to reveal that the solids content of the treated material was important to achieving rigidification. We are unable to see this in the document which appears to be nothing more than an observation about the solids content in certain prior art documents. Again, however, if the description is tenable, the document still does not disclose anything about the existence of the variations between the invention as claimed and the prior art as identified or their materiality. SNF’s submission to the primary judge that document 4 discloses “whether the result achieved by the Patented Process (ie improved rigidification) … differed in any material respect to the results achieved by the processes described in the pleaded prior art” (at [76]) is impossible to accept given the terms of the document.
85 SNF’s case about document 11 has the virtue of some resemblance between the terms of the document and SNF’s description of it. The document is a memorandum from a senior development chemist within Ciba which records that:
All five forms of Zenith application will be acceptable; slurried powder, powder solution, neat emulsion, dilute emulsion, liquids.
Ciba to promote whichever form is most suitable for each individual application. Slurried powder is probably the most problematic due to the expense of the peg carrier and no current availability of appropriate pumps.
86 As the primary judge recorded at [103]:
Ciba contested that the document reveals what SNF asserted it to reveal. Ciba contended that Document 11 does not evaluate the result of trials of powder, neat emulsion and aqueous solution at Yarraman and Sandalwood. It was noted that the document does not make any reference to the form of polymer used at Yarraman or Sandalwood or contain any reference to “improved rigidification” or any assessment as to whether the form of polymer was relevant to achieving “improved rigidification”. Ciba further submitted that it was quite unclear what was meant by the sentence “All five forms of Zenith application will be acceptable; slurried powder, powder solution, neat emulsion, diluted emulsion, liquids“, arguing that the sentence does not provide any indication of what “acceptable” means, to whom, or for what purpose.
87 We agree with Ciba. Document 11 does not disclose what SNF asserted (extracted at [102]) – “whether the addition of the polymer in aqueous solution as opposed to adding the polymer as dry powder or neat emulsion made a material contribution to the achievement of improved rigidification, and if so how and why?” It does not compare the prior art pleaded or the invention claimed. At best, it might lead to a train of inquiry about any such comparison.
88 Document 12 refers to Ciba trials at various sites showing that “dose/application will be a major issue for the successful use of this technology, especially where co-disposal is the major benefit”. This is said to show the immateriality of the polymer being introduced in an aqueous solution. Again, the fact that dosing was identified as a major issue says nothing about the invention as claimed compared to the prior art. Ciba’s submission, recorded at [109] of the primary judge’s reasons, is persuasive, namely:
…in the discussion of what is referred to as the “Kenneth Technology“ in Document 12, there is no reference to (i) the relevance of the type of polymer, (ii) any processes described in the pleaded prior art, or (iii) whether improved rigidification has been achieved in any of the trials described. Ciba accepted that that Document 12 states that “dose/application control will be a major issue“, but submitted that this is completely irrelevant to the question of innovative step and the key variations which SNF now seeks to rely on.
89 Document 13 is a series of emails said to show that in Ciba’s trials the form in which the polymer was added was immaterial and that powder dosing was in fact better than dosing in an aqueous solution. Again, it is impossible to see anything in document 13 comparing the invention as claimed with the prior art. It is another document which might have led to a train of inquiry but is not, of itself, directly relevant to the cases as put.
90 Document 14 is said to show that Ciba was aware that the invention was not novel and was attempting to find something novel about the invention. In fact, the document appears to be saying that Ciba believed the polymer in solution approach was not covered by Gallagher because Gallagher focused on the benefits of particulate (that is, dry) polymer. The fact that the author of the email then notes that he had agreed to “put a case down on paper describing what we believe is novel about the polymer solution approach” and says that he “might be able to distinguish the benefits of Rheology Aid applied as a solution, by the point of addition being much later than solids can tolerate, but this is tenuous and may weaken the Zenith application” and then notes that “[w]hat may be novel and new is that we are using a conventional flocculant in such a way that a + ve stacking angle is achieved, with specific benefits of gravity drainage, and immobility of the stack versus erosion” does not assist SNF. The document is not, itself, a comparison of the invention as claimed and Gallagher. It is a record of the author (who may or may not be a person skilled in the art) agreeing to prepare such a document with some preliminary thoughts. As such, it is a document which might lead to a train of inquiry to the existence of another document – the actual comparison between the invention as claimed and Gallagher – which might have disclosed something relevant to the case between SNF and Ciba.
91 In other words, SNF has not established that, if the primary judge erred in rejecting the case it put in closing submissions as one which SNF could not put, SNF suffered any injustice as a result. On our view, based on the material available before the primary judge, SNF has not established that its closing submissions ought to have been accepted, if permitted to be put. This is another reason why SNF should not be granted leave to appeal against the primary judge’s decision.
The primary judge’s counter-factual exercise
92 The primary judge (correctly, in our view) concluded at [129] that none of the documents were discoverable. She continued:
In case I am wrong, I should, however, address the other questions that are raised for determination by the interlocutory application.
93 SNF further contends that this counter-factual consideration by the primary judge also miscarried.
94 Because this counter-factual consideration takes as its starting point the proposition that the documents were discoverable by Ciba, and we have found that they were not, we do not propose to deal with this aspect of the matter in detail. We confine ourselves to the following observations.
95 First, neither party took issue with the primary judge’s discussion of the relevant principles at [156] – [162]. Based on the reasoning in Orr v Holmes (1948) 76 CLR 632, Greater Wollongong City Council v Cowan (1955) 93 CLR 435, Commonwealth Bank of Australia v Quade (1991) 178 CLR 134 (Quade), Yevad Products Pty Ltd v Brookfield [2005] FCAFC 177; Gangemi v Osborne [2009] VSCA 297; and McKay v Commissioner of Main Roads [2013] WASCA 135, the primary judge accepted that if a party failed to discover a document required to be discovered, fraud (at least equitable fraud) might be established, thereby empowering the court to set aside a final order which had been entered, the power to set aside being exercisable if in the interests of justice. Factors relevant to assessment of the interests of justice, to balance against the general position that justice requires the finality of litigation, include the degree of culpability of the successful party, any lack of diligence on the part of the unsuccessful party, and the extent of any likelihood that the result would have been different if the order had been complied with and the non-disclosed material had been made available.
96 These principles were applied in Players Pty Ltd (in liq) (Receivers and Managers Appointed) v Clone Pty Ltd [2015] SASC 133 (Players), a case in which, like the present, there had been a hearing and an appeal which was relevantly dismissed. The application to set aside the orders, again as in this case, was made by an interlocutory application in a completed proceeding, years after the original hearing. As far as we can ascertain, no other case involves an attempt to set aside a final and entered order after dismissal of an appeal; apart from Players, the cases to which the parties referred about applications to adduce fresh evidence based on a failure to discover documents have been made as part of the appeal from the orders. The parties did not address whether the same principles apply in a case such as the present or whether other considerations might also arise in such a case. One question we have in mind is whether, in such a case, equitable fraud (that is, a mere failure to discover a document required to be discovered), would be sufficient, or whether the relevant consideration of the culpability of the party who failed to discover the documents is a sufficient protection to the public interest in the finality of court orders. It is also not difficult to envisage the relevance of other considerations to the assessment of the interests of justice in such a case including the length of time which has passed between dismissal of the final appeal, the potential rights and interests of third parties which might be affected, and the reasons why the alleged fraud had been discovered. Given that the parties did not deal with these issues we say no more in this regard.
97 Second, we are unaware of any case in which a party has sought to set aside a final and entered order on the basis that documents were required to be discovered in respect of a case as pleaded which, if discovered, are not said to have given rise to a real possibility of a different outcome on the case as pleaded, but rather are said would have caused the party to amend its case to raise new grounds, thereby (and only thereby) giving rise to a real possibility of a different outcome on the case as would have been, but was not, pleaded.
98 SNF submitted that there was no principled basis upon which to exclude such a case from the approach identified in Quade and similar cases. It may be an issue of practice rather than principle but, as the parties and primary judge recognised, the present case was not one in which consideration could be confined to whether the documents, if discovered, might have led to a different result. So much is apparent from the terms of Ciba’s concession that if the documents were discoverable and if SNF would have amended its case to introduce the new grounds, then there was a real possibility of a different result. In other words, there is another necessary step in the hypothesis – SNF would have had to amend its case to raise the new grounds based on the documents in order for there to have been a real possibility of a different result. This additional hypothetical step involves numerous unstated sub-steps. SNF would have had to notice the documents. It would have had to recognise that the documents enabled new grounds to be raised. It would have had to amend its case to raise those new grounds either as of right or by leave depending on the circumstances at the time.
99 We do not suggest that SNF could not put the case, but there is no doubt that the additional counter-factual propositions involved, each of which SNF had to prove on the balance of probabilities, increased the practical burden to which SNF was subject.
100 Third, we do not accept that the primary judge made a fundamental error in [163] of her reasons. Under the heading “The Degree of Culpability on the Part of Ciba” the primary judge said this:
This consideration does not arise having regard to my conclusion that SNF has failed to show that any of the disputed documents were discoverable.
101 SNF submitted that this must be wrong because, in this part of her reasons, the primary judge was considering the position if the documents had been discoverable (at [129]). The apparent inconsistency on which SNF relied does not exist. On the material before the primary judge, if the documents were required to be discovered, Ciba’s culpability did not rise above the fact of a failure to comply with its discovery obligation. While SNF sought to make much of the lack of an adequate explanation by Ciba of the process by which it determined which documents were discoverable or not, including the process by which documents were selected for consideration by Ciba’s solicitor, the inescapable fact is that, unsurprisingly given that discovery was completed in 2010, Ciba’s solicitor could not recall what specific criteria were applied to the exercise at the time. No explanation beyond this could be given. Accordingly, on the state of the evidence, Ciba’s culpability could never be anything other than the bald fact that it did not discover the documents. This is what we consider the primary judge meant at [129]; no error is apparent in this regard. Proposed ground 8 of the draft notice of appeal is without merit as a result.
102 Fourth, we find unconvincing SNF’s submissions that the primary judge erred in her assessment of SNF’s diligence. The primary judge is said to have made multiple errors in her evaluation of this issue including misconceiving the forensic utility of the documents, misconstruing the evidence in numerous respects, wrongly subordinating and failing to consider the extensive inquiries SNF did make to those which it did not, and misunderstanding the documentary evidence about the state of knowledge of witnesses in 2009 compared to 2013.
103 The problem with all of these submissions is that they do not grapple with SNF’s fundamental difficulties, being findings made by the primary judge which are not challenged and which, of themselves, support a conclusion that SNF’s efforts to identify potential grounds of invalidity of the patent were not reasonably diligent. Those difficulties include that:
As to the new prior use claim - Orebind
(1) Discovered document 142 raised in the mind of the solicitor inspecting the documents the possibility that Nalco had used for some time a process similar to the invention called Orebind (at [171]).
(2) Document 142, on its face, disclosed the Orebind was not concerned with gold mining or heap leaching (at [184]).
(3) The solicitor noted document 142 for further consideration (at [171). If that further consideration had occurred, the solicitor on the record for SNF accepted that the document invited a line of inquiry, on its face, in respect of whether Orebind might constitute a prior use.
(4) However, no such further consideration of document 142 occurred by the solicitor on the record for SNF, the patent attorneys retained by SNF, or in consultation with SNF (for example, at [173] and [176]).
As to the new secret use claim
(5) Mr Schroeter, the managing director of SNF and person responsible for giving instructions to the solicitors, did not know that a prior commercial use of an invention (or secret use) was a potential ground for invalidating a patent until May 2013 when he was advised for the first time to this effect (at [190]).
(6) Mr Schroeter knew at the time of the hearing before Kenny J that Ciba had tested secondary flocculation at the Yarraman mine but did not inform SNF’s solicitors to that effect because he was not aware that prior commercial use might invalidate the patents. This testing is now claimed by SNF to be a secret use of the invention (at [191]). As soon as Mr Schroeter was informed that a prior commercial use of the invention might invalidate the patents, he was able to give instructions to SNF’s solicitors to investigate Ciba’s activities at the Yarraman and other mines (at [192]).
(7) SNF’s solicitor accepted that had SNF’s solicitors told Mr Schroeter that a prior commercial use of the invention might invalidate the patents it is “quite possible” that the inquiries SNF made in 2013, which led to this application, would have occurred in 2008 or 2009 (at [193]-[194]).
104 There were other fundamental difficulties with SNF’s position to which the primary judge was alive but, for present purposes, it is sufficient to say that SNF did not challenge any of the matters in (1) to (7) above and that, of themselves, these matters indicate a lack of reasonable diligence on SNF’s part in seeking to identify potential grounds of invalidity of the patents.
105 For these reasons, proposed ground 9 of the draft notice of appeal cannot be sustained.
106 Proposed ground 10 of the draft notice of appeal contends that the primary judge erred in finding that if the documents had been discovered SNF would not have amended its case based on those documents. The primary judge explained this conclusion at [201] – [209] of her reasons. We are unable to see any error in the primary judge’s reasoning process. As we have explained, the proposition that SNF would have amended its case depends on each of the sub-steps identified – that is, that SNF would have noticed the seven disputed documents, would have understood from those documents that the patents might be invalid based on other prior uses and secret use, and would have amended its case as a result. The hypothesis, as the primary judge’s reasons disclose, fails at the first two steps.
107 Whatever was said by SNF’s solicitors in the application before the primary judge, the first fact is that when confronted by document 142 which raised an issue about Orebind as a potentially relevant prior use, nothing was done. The second fact is that until 2013 no-one, not SNF’s solicitors or SNF itself, had in mind any possibility that the patents might be invalid on the ground of secret use. When it was thought about, but not before, SNF readily found material – not being the disputed documents - to support its secret use allegation including the documents which had been discovered by Ciba and evidence from witnesses identified in those documents from whom evidence always could have been obtained (for example, Ms Herzig to whom the primary judge refers at [194] – [195]).
108 There was no error by the primary judge in giving greater weight to the evidence of what had actually occurred in respect of the documents that were discovered than after the event speculation about what would have been done had other documents been discovered.
109 For these reasons proposed ground 10 of the draft notice of appeal is without substance.
Other matters
110 We should also record our view that SNF’s submission that the primary judge failed to balance the interest in the finality of litigation against the need for public confidence in the administration of justice and the interests of justice in the particular case is without foundation. Given her reasons – rejecting the discoverability of the documents, finding that SNF did not exercise reasonable diligence, and finding that SNF would not have amended its case in any event, as well as the lack of any culpability of Ciba – the primary judge’s observation that all of these factors “strongly militate against the making of the orders sought by SNF” does not expose any error. In short, in the circumstances of this case, there was no interest to weigh against the interest in maintaining the finality of litigation.
111 The other proposed appeal grounds (grounds 1 and 2 in the draft notice of appeal) were not pressed in support of the application for leave and may be disregarded.
Ciba’s notice of contention
112 It is unnecessary to deal with the notice of contention.
Conclusions
113 We agree with the primary judge. It follows that the decision below is not attended by any doubt and leave to appeal must be refused, with costs.
I certify that the preceding one hundred and thirteen (113) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justices Jessup, Jagot and Nicholas. |
Associate:
