FEDERAL COURT OF AUSTRALIA

CSR Limited v Rockwool International A/S [2007] FCA 1258

Patents Act 1990 (Cth)

Federal Court Rules 1979 (Cth), O 15 r 2(3)

Commonwealth v Northern Land Council (1991) 30 FCR 1 cited

Compagnie Financiere et Commerciale du Pacifique v Peruvian Guano Company (1882) 11 QBD 55 cited

Wellcome Foundation Limited v VR Laboratories (Aust) Property Limited (1981) 148 CLR 262 considered

Lubrizol Corporation Inc v Imperial Chemical Industries PLC (2000) 50 IPR 526 cited

F Hoffmann-La Roche AG v Chiron Corporation (2000) 171 ALR 295 discussed

Gambro Pty Ltd v Fresenius Medical Care Australia Pty Ltd [2001] FCA 235 discussed

Bristol-Myers Squibb Company v FH Faulding (2000) 97 FCR 524 considered

Merck & Co Inc v Arrow Pharmaceuticals Ltd (2006) 154 FCR 31 discussed

Commissioner of Patents v Microcell Limited (1959) 102 CLR 232 cited

NV Philips Gloeilampenfabrieken v Mirabella International Pty Limited (1995) 183 CLR 655 considered

Conor Medsystems Inc v University of British Columbia (No 3) (2006) 228 ALR 515 cited

Pfizer-Overseas Pharmaceuticals v Eli Lilly and Co (2005) 225 ALR 416 discussed

ICI Chemicals and Polymers Ltd v Lubrizol Corporation Inc (1999) 45 IPR 577 considered

Eli Lilly and Company v Pfizer Ireland Pharmaceuticals (2004) 137 FCR 573 cited

Mulley v Manifold (1959) 103 CLR 341 cited

Astra-National Productions Ltd v Neo-Art Productions Ltd [1928] WN 218 cited

CSR LIMITED v ROCKWOOL INTERNATIONAL A/S

SAD 188 OF 2004

MANSFIELD J

17 AUGUST 2007

ADELAIDE

THE COURT ORDERS THAT:

1.                  The applicant’s notice of motion be stood over to a date to be fixed, with liberty to call it on on reasonable notice.

Note:    Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.

REASONS FOR JUDGMENT

1                     This proceeding concerns an application for revocation of two patents of which the respondent, Rockwool International A/S (Rockwool) is the proprietor. The two patents relate to a product comprising man-made vitreous fibres (MMV fibres). The applicant, CSR Limited (CSR) is a public company listed in Australia and a manufacturer of MMV fibres.

2                     Currently before the Court is a motion by CSR for further and better discovery “of all documents relevant to issues in dispute in the proceeding including particular discovery”.  Ultimately, the several areas of dispute about discovery were quite discrete, and are addressed below.

BACKGROUND

3                     The parties were initially ordered to provide discovery of documents by 11 November 2005. Rockwool filed an initial list of documents on 22 February 2006 and a supplementary list on 24 April 2006. Following the partial hearing of CSR’s motion for further and better discovery on 29 May 2006, Rockwool provided two further lists of documents by letter to CSR’s solicitors on 3 July 2006 and 28 July 2006 (ultimately included in a further supplementary list filed by Rockwool on 23 August 2006). As CSR was not satisfied with the contents of the further lists, further argument on the motion was necessary.

4                     The further argument was confined to six “categories” of documents set out in a letter from CSR’s solicitors to Rockwool’s solicitors on 23 May 2006, which is exhibit GRT-40 to the affidavit of Gregory Ralph Tye sworn on 25 May 2006.

5                     Rockwool has also filed a notice of motion dated 23 May 2006 seeking further and better discovery from CSR and seeking to enforce a confidentiality regime in relation to the inspection of certain of Rockwool’s discovered documents. Argument on that motion has been deferred at the request of the parties pending determination of CSR’s discovery application.

6                     The issue which presently falls to be determined is whether Rockwool should be ordered to provide discovery of documents described in categories 1-4, 6 and 9 in the letter from CSR’s solicitors of 23 May 2006. Discovery of those documents is resisted by Rockwool, primarily on the ground that they are not relevant to the substantive issues in dispute.  There is no issue abut the existence of documents in the possession, custody or power of Rockwool in each of those categories.  It simply says that it has no obligation to discover them.

7                     In order to determine the relevance of those categories of documents to the issues arising on the pleadings, it is necessary to refer to the Rockwool patents and the grounds upon which they are said to be invalid.

THE ROCKWOOL PATENTS AND ALLEGED GROUNDS OF INVALIDITY

8                     The two patents in suit are Rockwool Patent 704242 (Rockwool Patent #1), which has a priority date of 8 November 1994 and an application date in Australia of 8 November 1995; and Rockwool Patent 770902 (Rockwool Patent #2), which has a priority date of 8 November 1994 and an application date in Australia of 6 April 2001.

9                     Both patents are concerned with MMV fibres. MMV fibres are made from vitreous melt, which is formed by melting various minerals in a furnace. The MMV fibres the subject of the Rockwool patents are produced by spinning vitreous melt into wool at high temperatures. They are referred to in correspondence between the parties as “modified HT [high temperature] fibres”.

10                  Rockwool Patent #1 relates to a product comprising MMV fibres which, it is claimed, are of improved biological safety (that is, they are biodegradable in the lung) while maintaining conventional melt characteristics (including viscosity and sintering temperature), and which can be made from inexpensive raw materials. It is also claimed that the fibres have increased durability in humid conditions, and increased fire resistance. Rockwool Patent #2 also relates to a product comprising MMV fibres. It comprises “method claims” which are directed to a method of making the MMV fibres; “use claims” which relate to the use of various compositional oxide ranges to make MMV fibres; and “package claims” which relate to a “package” containing MMV fibre products. It is not presently necessary to consider the distinction (if any) between the MMV fibres the subject of Rockwool Patent #1 and Rockwool Patent #2. That is an issue for the substantive hearing of the proceeding.

11                  The First Amended Statement of Claim and Second Amended Particulars of Invalidity (the Particulars of Invalidity) filed by CSR challenge the validity of the two patents on identical grounds, namely that: (a) the alleged inventions are not novel; (b) the alleged inventions did not involve an inventive step; (c) the alleged inventions are not a “manner of manufacture”; (d) the patents were obtained by false suggestion or misrepresentation; and (e) the complete specifications of the patents do not comply with s 40(2)(a) of the Patents Act 1990 (Cth) (the Patents Act)because the alleged inventions are not fully described.

12                  The grounds of invalidity which are said to be relevant to the discovery application are the lack of an inventive step; absence of a manner of manufacture; false suggestion or misrepresentation; and insufficiency of description of the alleged inventions.

13                  As to the first of these grounds, CSR claims that the inventions the subject of the Rockwool patents do not involve an inventive step when compared with the prior art base as it existed before the priority date (8 November 1994). In its Particulars of Invalidity, CSR relies upon the common general knowledge said to exist in Australia at or before 8 November 1994 in support of this claim, including the information contained in certain specified publications and patents which were made public prior to that date.

14                  Secondly, CSR asserts that the inventions the subject of the Rockwool patents are not patentable inventions because they are not a “manner of manufacture” within the meaning of s 6 of the Statute of Monopolies. The claims in the Rockwool patents are said to be to no more than MMV fibre products made by a known method using known oxides, which were known to be suitable for making such products. The claimed compositions of oxides in the Rockwool patents were, it is said, selected by routine optimization by reference to known properties inherent in such oxides and products. Senior counsel for CSR emphasised that there were two aspects to this alleged ground of invalidity: known oxides; and routine optimization. The second aspect is said to distinguish the present case from existing authorities which have considered the documents relevant to an alleged absence of a manner of manufacture.

15                  The third ground of alleged invalidity relevant to CSR’s motion is that the Rockwool patents were obtained by false suggestion or misrepresentation made to the Commissioner of Patents: see s 138(3)(d) of the Patents Act. The Particulars of Invalidity in relation to Rockwool Patent #1 rely upon written representations made by Rockwool’s solicitors/patent attorneys in the course of the patent applications, concerning Rockwool’s purported discovery of the optimum test for biological solubility of mineral fibres (that is, testing for biological solubility at a pH of 4.5), and the desirability of producing fibres having such biological solubility and other defined characteristics. CSR claims that before the priority date of the Rockwool patents, the relevant combination of properties was known and recognised by manufacturers of MMV fibres as being desirable and valuable, and in particular that it was commonly known that a relevant and meaningful measure for biological solubility of MMV fibres was solubility at pH 4.5. It claims that Rockwool knew, at the date of making the impugned representations, that they were false by virtue of its participation in the MMV fibre industry, including by its attendance at specified conferences and involvement with the European Insulation Manufacturers Association (EURIMA) and the North American Insulation Manufacturers Association (NAIMA). Similar representations are relied upon in relation to Rockwool Patent #2. With respect to Rockwool Patent #2 it is said that Rockwool falsely represented to the Commissioner of Patents certain information about typical industry practices regarding the chemical composition of vitreous melt (particularly with respect to alumina content) and the use of in vitro testing to determine solubility of MMV fibres at pH 7.5.

16                  Finally (for the purpose of the discovery application) it is said that the Rockwool patents do not comply with s 40(2)(a) of the Patents Act because they contain an insufficient description of the alleged inventions. Particulars of the alleged deficiencies in the patent specifications are provided in the Particulars of Invalidity. Relevantly for present purposes, CSR claims that the Rockwool patent specifications do not fully describe the selection of the various weight-percentage ranges and functional parameters (i.e. viscosity, dissolution rate and sintering temperature) for the components of the mineral composition. 

DISCOVERY OF DOCUMENTS BY A PATENTEE – RELEVANT PRINCIPLES

17                  CSR submitted that it is clear from the documents discovered by Rockwool thus far that further documents are in existence which are relevant to the alleged grounds of invalidity referred to above. The source of the Court’s power to make the orders for discovery sought by CSR is said to be that conferred by O 15 r 8 of the Federal Court Rules 1979 (Cth) (the Rules), which provides that:

Where, at any stage of the proceeding, it appears to the Court from evidence or from the nature or circumstances of the case or from any document filed in the proceeding that there are grounds for a belief that some document or class of document relating to any matter in question in the proceeding may be or may have been in the possession, custody or power of a party, the Court may order that party:

(a)        to file any affidavit stating whether that document or any document of that class is or has been in his possession, custody or power and, if it has been but is not then in his possession, custody or power, when he parted with it and what has become of it; and

(b)       to serve the affidavit on any other party.

18                  As noted above, it is not the existence of the documents sought, but their relevance to the issues in dispute, that is generally contested by Rockwool.

19                  In its written submissions CSR suggested that a document is discoverable if it is “reasonable to suppose” that it “contains information that may – not must – either directly or indirectly enable the party seeking the affidavit to advance [its] own case or damage that of [its] adversary”: Commonwealth v Northern Land Council (1991) 30 FCR 1 at 23-4; and that a document will answer that description if it may fairly be expected to lead to a train of enquiry which may have either of those consequences. However, at the hearing of the motion, counsel for CSR conceded that the “train of enquiry” test, articulated in Compagnie Financiere et Commerciale du Pacifique v Peruvian Guano Company (1882) 11 QBD 55, has now been superseded by O 15 of the Rules.  General discovery will not routinely be ordered in every case.  Practice Note 14 gives an indication at a practical level of how O 15 may operate. The Practice Note reflects a policy designed to reduce the burden of discovery. It notes that general discovery will not be ordered as a matter of course, and that orders for discovery will usually be limited to the documents required to be disclosed by O 15 r 2(3).  O 15 r 2(3) provides that the documents required to be disclosed by a party making discovery are:

(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.

20                  A range of matters to be taken into account in the attempt to secure discoverable documents are identified in O 15 r 2(5). Despite the implicit request for general discovery contained in CSR’s written submissions, senior counsel did not press for any departure from O 15. It is therefore appropriate to consider its motion in that context.

21                  The following principles with respect to discovery of documents by a respondent patentee emerge from the authorities.

22                  In Wellcome Foundation Limited v VR Laboratories (Aust) Proprietary Limited (1981) 148 CLR 262 at 270, Aickin J (with whom the other members of the Court agreed) said that where the patentability of an invention is challenged on the ground of obviousness:

… the question of obviousness involves asking the question whether the invention would have been obvious to a non-inventive worker in the field, equipped with the common general knowledge in that particular field as at the priority date, without regard to documents in existence but not part of such common general knowledge. The question is not whether it was or would have been obvious to the inventor or to some other particular worker in the field.

23                  It is the common general knowledge in Australia which is material to the question of obviousness and not the common general knowledge in the country of origin: Wellcome Foundation 148 CLR at 284 – 285. The issue of obviousness “must be judged at the priority date”: at 283. It is generally considered appropriate for the patentee to give discovery of its research, development and experimental work in connection with the alleged inventions: Lubrizol Corporation Inc v Imperial Chemical Industries PLC (2000) 50 IPR 526 at [22] per Branson J; F Hoffmann-La Roche AG v Chiron Corporation (2000) 171 ALR 295 at 297 per Burchett J; Wellcome Foundation 148 CLR at 287 per Aickin J. Tamberlin J concluded in Gambro Pty Ltd v Fresenius Medical Care Australia Pty Ltd [2001] FCA 235 at [7] that the appropriate formulation in relation to discovery of research material is to extend it to research or studies “in the course of which the invention was made”.

24                  In relation to manner of manufacture, the Full Court decisions in Bristol-Myers Squibb Company v FH Faulding (2000) 97 FCR 524 and Merck & Co Inc v Arrow Pharmaceuticals Ltd (2006) 154 FCR 31 establish that a party challenging the validity of a patent on this ground must demonstrate such invalidity by reference to matters that are apparent on the face of the specification, in light of the common general knowledge: see also Commissioner of Patents v Microcell Limited (1959) 102 CLR 232; NV Philips Gloeilampenfabrieken v Mirabella International Pty Limited (1995) 183 CLR 655.  Rockwool, relying upon these cases, said it should not be required to discover any documents solely on the ground that they are relevant to the manner of manufacture.

25                  CSR sought to distinguish those authorities on the ground that they were not concerned with an alleged non-disclosure of relevant material; and because despite the principle established in the cases, in practice the courts can and do refer to external evidence to consider the state of the prior art. In particular, it referred to Philips 183 CLR at 666-667, where the majority of the High Court stated that

Strictly speaking, it is unnecessary to answer the question whether a process which could not be a proper subject matter for a patent according to traditional principle, for the reason that it is merely a new use of a known product, can none the less be a “manner of manufacture within the meaning of section 6 of the Statute of Monopolies” for the purposes of s 18(1)(a). However…it is appropriate that we indicate that we consider that the above construction of s 18(1)’s threshold requirement of “an invention” goes a long way towards answering it since it would border upon the irrational if a process which was in fact but a new use of an old substance could be a “patentable invention” under s 18 if, but only if, that fact were not disclosed by the specification.

26                  Philips 183 CLR 655 was considered by the Full Federal Court in Bristol-Myers 97 FCR 524,where Black CJ and Lehane J said the following in relation to the requirement that a patentable invention be a manner of new manufacture (at [19] and [30]):

A “patentable invention” must be an “invention” as defined, and thus a “manner of new manufacture the subject of letters patent and grant of privilege within s 6 of the Statute of Monopolies” The primary judge held, following NV Philips Gloeilampenfabrieken v Mirabella International Pty Ltd (1995) 183 CLR 655, that the opening words of s 18(1) impose a threshold requirement of inventiveness: a requirement independent of the specific provisions of s 18(1)(b) as to novelty and an inventive step, judged by comparison with the prior art base as it existed before the priority date. His Honour held that the claimed invention… did not meet that threshold requirement. He held also that it did not involve an inventive step when compared with the prior art base. His Honour’s conclusions were based upon two findings. One of them involved an application of the well known principle which denies patentability to a claimed invention which is “nothing but a claim for the use of a known material in the manufacture of known articles for the purpose of which its known properties make that material suitable”: Commissioner of Patents v Microcell Ltd (1959) 102 CLR 232 at 251…

The majority of the High Court in Philips explicitly say that their observations about a case where want of the threshold requirement of inventiveness is not apparent on the face of the specification are not necessary to their decision. And, in discussing the commencement point (what is “known”) of the inquiry about inventiveness, their Honours refer only to the Microcell principle. In our view, in the light of the authorities to which we have referred, Philips stands for the proposition (as a matter of construction of the 1990 Act) that if, on the basis of what was known, as revealed on the face of the specification, the invention claimed was obvious or did not involve an inventive step… then the threshold requirement of inventiveness is not met. Some elaboration, however, is required in relation to what the specification reveals as “known”. If a patent application, lodged in Australia, refers to information derived from a number of prior publications referred to in the specification or, generally, to matters which are known, in our view the Court – or the Commissioner – would ordinarily proceed upon the basis that the knowledge thus described is, in the language of s 7(2) of the 1990 Act, part of “the common general knowledge as it existed in the patent area”. In other words, what is disclosed in such terms may be taken as an admission to that effect. In substance, we think, that is what happened, both in Microcell and in Philips. If, however, the body of prior knowledge disclosed by the specification is insufficient to deprive what is claimed of the quality of inventiveness, then the only additional knowledge or information which will be taken into account is knowledge or information of a kind described in s 7(2) of the 1990 Act. That again, in our view, is consistent with the approach taken in Microcell.

27                  Their Honours said in their reasons at [22] of the passage in Philips 183 CLR 655quoted above and relied upon by CSR, that that observation was unnecessary to the decision, a fact which was acknowledged by the majority of the High Court at 666.

28                  Beyond the issue of research and development, Burchett J also held in Hoffmann-La Roche 171 ALR at [16] that “documents concerning any test to evaluate or determine the validity of the patent in any respect falling within any of the grounds in issue upon the pleadings” should be discovered.

29                  The sufficiency of a patent has been described as “a pure question of fact in respect of which there may be discovery”: Conor Medsystems Inc v University of British Columbia (No 3) (2006) 228 ALR 515 at [4].

DISCOVERY OF DOCUMENTS CREATED AFTER THE PRIORITY DATE

30                  While it accepts that documents relevant to an alleged lack of inventive step and an absence of a manner of manufacture should be confined to those created before the priority date (Wellcome Foundation) 148 CLR 262, CSR submitted that no such temporal limitation should be imposed in relation to documents relating to the allegation of false suggestion or misrepresentation. It said that the documents to be discovered should extend to the date of the making of the alleged representations. Those representations were made on 2 and 22 February 1999 and 2 March 1999 (in relation to Rockwool Patent #1) and 9 January 2004 (in relation to Rockwool Patent #2).

31                  In Hoffman-La Roche 171 ALR at [11], Burchett J expressed the view that discovery of research documents “for a reasonable period beyond [the priority] date” may be justified where sufficiency of description is in issue, so long as the research is related to the disclosure contained in the specification.  His Honour considered it unnecessary to decide whether an allegation of misrepresentation would provide a further ground for such discovery.  However the Full Federal Court in Pfizer Overseas Pharmaceuticals v Eli Lilly and Co (2005) 225 ALR 416 held that sufficiency should be assessed having regard to the common general knowledge and prior art existing immediately before the priority date: at [328], cited in Conor 228 ALR [4]. The parties did not address this particular issue in their submissions on the present motion. In relation to the issue of false suggestion, CSR sought to rely upon certain observations made by Emmett J in ICI Chemicals and Polymers Ltd v Lubrizol Corporation Inc (1999) 45 IPR 577.  That casewas not concerned with issues of discovery; nevertheless CSR asserted that Emmett J’s reasoning supports their application insofar as his Honour found that the relevant section of the Patents Act was concerned with statements of fact about which the applicant (for the patent) had knowledge and about which the Patent Office ordinarily would not (at [184]); and that it is not necessary to show that no grant would have been made “but for” the false suggestion or representation, so long as the representation was a “material inducing factor which led to the grant”: at [170]. It is not immediately apparent how those passages assist CSR beyond the wording of s 138 itself.

32                  Rockwool says that the alleged misrepresentations can only be in relation to the state of prior art at the priority date; and therefore that any discovery on this issue should also be limited to that date.

THE DOCUMENTS SOUGHT BY CSR

33                  The documents sought by CSR relate to a project said to have been conducted by Rockwool and other European industry participants, before the priority date of the Rockwool patents, known as Project Sleipner. CSR claims that Project Sleipner was a joint research project, conducted to determine whether MMV fibres were carcinogenic. In its written submissions on the notice of motion, CSR said that in furtherance of the joint research project, sponsored research activity was undertaken, papers were written and conferences were conducted involving industry participants in Australia, Europe and North America and inter-industry bodies such as FARIMA (Fibreglass and Rockwool Insulation Manufacturers Association, Australia), NAIMA and EURIMA. It said that Rockwool was one of the participants which researched, published, or assisted in the publication of many papers relevant to the then perceived industry problems.

34                  CSR’s submissions on the conduct and purpose of Project Sleipner were not the subject of evidence and were objected to by senior counsel for Rockwool. It was submitted for Rockwool that the modified HT fibres the subject of the patents in suit were only one type of fibre involved in Project Sleipner. The bulk of the project was said to relate to other types of fibres which are irrelevant to the issues arising in relation to the Rockwool patents. Rockwool’s position (which I did not understand to be contested by CSR) is that it has discovered all documents in the categories referred to below which are relevant to the modified HT fibres, but resists any order for further discovery of documents relating to any other fibres in relation to which it has conducted or participated in research projects.

CONSIDERATION

Documents sought in Category 1

35                  The first category of documents sought by CSR are documents, including minutes of meeting, notes, memoranda and the like, evidencing or recording information provided at conferences or meetings of TIMA (Thermal Insulation Manufacturers Association), NAIMA or EURIMA attended by Rockwool.

36                  CSR claims that such documents would provide evidence of the general state of knowledge in the art before the priority date and the extent of information-sharing by industry participants. It claims that this evidence is relevant to the Particulars of Invalidity insofar as they allege a lack of inventive step, absence of a manner of new manufacture and false suggestion because the evidence would demonstrate what was “known” before the priority date.

37                  The discovery request particularly refers to two presentations made by an employee or employees of Rockwool and listed in the Particulars of Invalidity as examples of the common general knowledge in Australia before the priority date. The first, “In-Vitro Dissolution Rates of Compositions within the TIMA Nomenclature Definition of Slag Wool” is described as having been presented at a NAIMA Fibre Science Workshop in April 1994. The second was described as comprising an oral publication and written abstract on “Investigation of the Rate of Dissolution of Man Made Vitreous Fibres In-Vitro at different pHs”, published at a conference in Lyon, France in September 1992. The existence of these publications is relied upon by CSR to justify its assertion that Rockwool employees had attended conferences or meetings of the type referred to in the Category 1 request and must have created or obtained documentation pertaining to those events.

38                  In response to the request for Category 1 documents, Rockwool referred to three documents discovered in its second supplementary list of documents; namely two undated documents respectively entitled “List of overheads” and “Samples”, and the April 1994 presentation with handwritten annotations. It said in response to CSR’s request for the results of a NAIMA/EURIMA short term inhalation study referred to in (confidential) document 8, that no such results were available “at the date of that document” (7 December 1994) and that, in any event, the study is not relevant to the issues in dispute. Rockwool also referred to certain documents, referred to in its previous (confidential-outside counsel only) discovery, which have been lost: draft NAIMA paper on “measurements of in-vitro dissolution rate”, referred to in document 11 (20 July 1994); Rockwool’s rewritten version of the discussion part of the draft NAIMA paper on “measurements of in-vitro dissolution rate – part one: at neutral pH”, referred to in document 12 (31 October 1994) as having been discussed at a NAIMA meeting in the beginning of October; and first draft of the second part of the paper: “- at acidic pH”, also referred to in document 12.

39                  It said that in light of the decisions in Bristol-Myers 97 FCR 524and Merck 154 FCR 31, any documents relating to Rockwool’s internal research programs, particularly on fibre types other than the HT fibres the subject of the Rockwool patents, cannot be relevant to the issue of manner of manufacture.

40                  In relation to the issue of false suggestion, Rockwool submitted that the allegations pleaded in the Particulars of Invalidity relate only to statements about common knowledge, trends and understanding in the industry and that, as such, they bore no relationship to Rockwool’s internal research programs on other fibres and projects.

41                  Rockwool further asserted in relation to any of the Category 1 documents sought by CSR that its discovery ought properly to be limited to those documents which relate to MMV fibres that are claimed in the patents in suit, namely HT fibre compositions. On that basis, it claims to have discovered all documents in its possession, custody or power falling within Category 1.

Documents sought in Category 2

42                  The second category of documents sought is documents evidencing or recording information exchanged “between [Rockwool] and third parties in relation to the relevant issues”, including with nine specified persons or entities. Any such documents are said to be relevant for the same reasons as relied upon in relation to the Category 1 documents (i.e. lack of an inventive step, absence of a manner of manufacture, false suggestion).

43                  Rockwool said that it has discovered some documents falling within Category 2 and has refused to discover any further correspondence with the named third parties and entities, either because the documents relate to fibres which are not claimed in the patents in suit, or because the documents are no longer in Rockwool’s possession, custody or power as they have been lost.

Documents sought in Category 3

44                  The documents sought in Category 3 are documents, including minutes of meetings, generated by Rockwool in relation to certain projects variously referred to as “Bio Persistence/In-Vitro Dissolution Rates”, Project Sleipner, Project Nos 3460, 4774, 4780 and 4768 (seemingly related to Project Sleipner), “BMFT” and “Fibre properties/health matters”. Specific reports are sought concerning Project Sleipner and the associated numbered projects, and the “Fibre properties/health matters” project.

45                  The projects referred to by CSR, particularly Project Sleipner, are said to generally relate to the alleged lack of inventive step in the inventions the subject of the Rockwool patents. CSR’s request extends beyond documents or research projects solely concerned with HT fibres. It claims that, insofar as the research projects travel beyond HT fibres, it is relevant to the issues in dispute to consider why HT fibres were chosen for development instead of other fibres being researched by Rockwool.

46                  Rockwool has discovered a document entitled “Bio-Persistence / in-vitro dissolution rates”, which it says is related to a new project conducted mainly after the priority date. It has also discovered a number of documents in relation to Project Sleipner, but maintains that Project Sleipner was primarily related to fibres that are irrelevant to the patents in suit. Rockwool further indicated that it has been unable to identify any documents concerning project “Fibre properties/health matters” and the specific report requested in relation thereto. The publication resulting from the “BMFT” project (described by Rockwool as an official research project of the German Federal Ministry for Research and Technology concerning “the examination of the persistence of mineral fibres in vivo and in vitro and the development of biodurability assessment criteria”) is held by Rockwool but said to be unrelated to the matters in question between the parties. The balance of the documents requested in Category 3 are also said to deal with fibres other than HT fibres which are unrelated to the issues in dispute.

Documents sought in Category 4

47                  The fourth category of documents sought by CSR are “documents concerning the publication of analysis results, reports, conclusions or other information derived from activities undertaken by [Rockwool] in or from the project referred to by [Rockwool] as ‘Project Sleipner’”. The request was subsequently refined to publications concerning or referring to HT fibres (including all HT fibres irrespective of whether the composition of the HT fibre falls within the oxide ranges specified in the patents in suit). These documents are said to be relevant on similar grounds to the Category 3 documents, namely because they relate to the alleged lack of inventive step involved in the alleged inventions the subject of the Rockwool patents.

48                  Rockwool has discovered three documents which are claimed to fall within Category 4. All other documents held by Rockwool in relation to Project Sleipner are said to relate to non-HT fibres and therefore to fall outside the ambit of the issues in dispute.

Documents sought in Category 6

49                  The Category 6 documents sought by CSR are “documents evidencing or recording the basis or grounds for the selected oxide ranges and other parameters (including sintering [temperature] and viscosity) specified in the claims of the patents in suit”.

50                  Such documents are said to be relevant to CSR’s allegations of lack of inventive step, absence of manner of manufacture, false suggestion, and insufficiency. It relies upon the observation of Burchett J in Hoffman-La Roche 171 ALR at [16],quoted above, that documents concerning any test to evaluate or determine the validity of the patents in suit are discoverable.

51                  In relation to the Category 6 documents, CSR referred to documents already discovered by Rockwool which it says establish that before the priority date there were disclosed compositions in existence (e.g. Manville Corporation’s patent 89/12032 – composition of fibres set out in (confidential) document 21; and Rockwool patent WO 91/11403, which is exhibit GRT-41 to the affidavit of Gregory Ralph Tye sworn 25 May 2006) which have the same compositional elements but different ranges from the HT fibres. Counsel for CSR claimed that there was an absence of documentation indicating why the particular aluminium ranges, sintering temperature and viscosity levels of the Rockwool patents were chosen. He said that such documentation constituted tests and experimental material relevant to the issue of inventive step, and also relevant to the “routine optimisation” aspect of the issue of manner of manufacture. He referred to the acknowledgment by counsel for Rockwool at a directions hearing on 3 August 2006 that “scientific documents” and “internal documents recording the basis upon which something is selected” would be discoverable.

52                  Rockwool apparently conceded the relevance of the Category 6 documents and referred to discovered documents 1, 6, 8, 10, 13, 14, 15, 18, 20, 22, 203-251 and 279 which, it said, fell within that category. Counsel for Rockwool submitted that there were no other documents falling within Category 6 which are relevant to any matter in question between the parties.

Documents sought in Category 9

53                  The final category of documents sought are those recording or evidencing communications or correspondence passing between Rockwool and external patent agents or attorneys prior to 8 November 1994 regarding the alleged inventions, including but not limited to the patentability of those inventions. At the hearing of the motion, counsel for CSR limited this category by reference to Category 6, that is, to such documents passing between Rockwool and its patent advisors relevant to the matters that are the basis of grounds for the selected oxide ranges and other parameters. As in the case of the Category 6 documents, the documents in Category 9 are also said to relate to the grounds of alleged invalidity concerning lack of inventive step, manner of manufacture, false suggestion and insufficiency.

54                  Rockwool asserted that the Category 9 documents it holds are not relevant to any issue in dispute between the parties.

55                  CSR referred to several authorities indicating that the Category 9 documents are not protected from disclosure by the doctrine of legal professional privilege: see, e.g. Eli Lilly and Company v Pfizer Ireland Pharmaceuticals (2004) 137 FCR 573. However, those authorities do not assist CSR in relation to the question of relevance. Furthermore, even if the Category 9 documents were privileged, such privilege would not relieve Rockwool of any obligation to provide discovery of them.

56                  It is convenient to deal with Categories 1 to 4 of the claimed further discovery together, as they fall under the general rubric of Project Sleipner activities.  I am not persuaded that the documents in respect of which further discovery is sought in those four categories are documents which fall within the reach of O 15 r 2(3) of the Rules.  There is no material which, to my mind, reveals that Rockwool has not addressed in its discovery the prior art directly relevant to the assertion that the alleged inventions are not novel.  Indeed, as I understood the submissions for CSR, the dispute arises because it claims that an incorrect assessment has been made by Rockwool about the materiality of the documents in Categories 1 to 4 rather than that their relevance has not been assessed at all by Rockwool.  Of course, Rockwool’s assessment of the extent to which such documents should be discovered is not conclusive.  That is a matter for the Court.  But, on the other hand, the existence of a document or documents which possibly touch upon an issue in question in the proceeding is not itself sufficient to order its discovery:  Mulley v Manifold (1959) 103 CLR 341 at 344 – 345.  That is a matter to be decided by the Court from the pleadings and the evidence on the application.

57                  The class of the first category of documents, in my view, is not, by its description or by such information as there is as to its likely contents, of such a nature as to satisfy the “relevance” hurdle of O 15 r 2(3).  The conferences and meetings referred to, and including the presentations by an employee or employees of Rockwool in April 1994 and in September 1992, are obviously not confined to the product claims concerning MMV fibres in Rockwool Patent #1 or the method of producing MMV fibres in Rockwool Patent #2.  The fact that, at such conferences and meetings, there would have been information sharing between informed persons in the general industry does not indicate or tend to indicate that the information included information about the prior art concerning or leading up to the particular claims made in the two patents.  Accordingly, I do not consider that there is a prima facie case that the conferences and meetings included in the exposure of information concerning whether the claimed inventions the subject of those patents involved an inventive step compared to the prior art.  It is a case of the material relied upon by CSR not taking me over that threshold test.  See the discussion by Tomlin J in Astra-National Productions Ltd v Neo-Art Productions Ltd [1928] WN 218 at 219.

58                  That conclusion reflects the view I have come to, notwithstanding the careful and helpful submissions of senior counsel for CSR, that discovery in this matter should be confined to documents which relate directly to the particular issues concerning the validity of the two Rockwool patents in suit, and that wider inquiry of material concerning Project Sleipner generally or relating to other fibres or processes than the particular products and process the subject of the two patents will not expose documents which fall within the coverage of O 15 r 2(3) of the Rules.

59                  I have reached the same conclusion in relation to the Category 1 documents, insofar as CSR contended that they may expose that the claimed characteristics of elements of the Rockwool Patents were previously well known and recognised by manufacturers of MMV fibres, so that documents of that class may support CSR’s third ground of alleged invalidity.  It is necessary for a prima facie case to be made out that the category of documents sought to be discovered, including of the two particular presentations specified, may adversely affect the case of Rockwool or may support the case of CSR.  I am not satisfied that they might do so.

60                  The second category of documents sought is, I think, somewhat more speculative as to its “relevance” in terms of O 15 r 2(3).  There was no dispute that there are many undiscovered exchanges of information between Rockwool and third parties, including the nine specified persons or entities.  What is not apparent in the material before me is that those exchanges of information (other than those which have already been discovered by Rockwool) relate to the MMV fibres or the method of producing them which are the subject of the two Rockwool patents.  For the reasons already given, I am not satisfied that a prima facie case has been made out that such documents as exist within this category, and which have not already been discovered, may advance CSR’s case or may detract from Rockwool’s case in the way anticipated by CSR.

61                  As I have indicated, that conclusion applies also to the documents sought in Categories 3 and 4 of the further discovery sought by CSR.  In each instance, I have considered the material to which I was referred by senior counsel for Rockwool, but I did not conclude that there was a prima facie case that documents within either of those categories might advance CSR’s case or adversely affect Rockwool’s case concerning the Patents in suit.  In particular, I note CSR’s contention that the minutes and reports sought by CSR may include research documents on MMV fibres other than HT fibres to explain why HT fibres were chosen by Rockwool for development to lead to the claims in the two patents.  That may be the case, but it is only a speculative assertion.  More importantly, to my mind, the material does not indicate that Project Sleipner concerned the particular fibres or process the subject of the two patents in suit or that there is a real basis for concluding that the material sought to be discovered would fall under the coverage of O 15 r 2(3).  That is so, even if there were some material within the documents in Category 3 which might indicate why Rockwool came to focus or refine its research, or certain of its research, on developing HT fibres (and I do not think such a claim goes beyond speculation).  The existence of documents reviewing or assessing Rockwool’s general research and development options would not of itself provide information which might advance CSR’s case or might be adverse to Rockwool’s case, and the material before me does not lead to the conclusion that Rockwool has not or may not have discovered documents which more directly indicate the development of its research leading to the claims made in the two patents in suit concerning HT fibres.  The Category 4 documents, in my view, attract the same conclusions.  The Project Sleipner umbrella does not identify documents which, prima facie, are relevant to the issues in this proceeding.  And once that request is confined to publications of analysis results, reports, or conclusions or other material about HT fibres, it is not shown that there may be documents beyond those already discovered by Rockwool which should have been, and have not been, discovered by Rockwool.

62                  There is no dispute between the parties that documents of the kind described in Category 6 should be discovered by Rockwool, as they may expose tests to evaluate the validity of the patents in suit.  Rockwool’s response, as noted, was simply that such documents as exist have already been discovered.

63                  The exchange between senior counsel for the parties on this part of CSR’s claim exposed that the documents which Rockwool had discovered under this category may not have been as readily identifiable in Rockwool’s lists of documents as falling within the category as might have been the case.  That is not intended as a criticism of Rockwool, or indeed of CSR for not having identified readily what the relevant discovered documents were.  It is simply an observation derived from the submissions to explain why the issue was, at the time of argument, an ongoing one.  The CSR contention was that research and experimentation documentation had been discovered, but not that relating to the reasons for selecting oxide ranges, or other parameters including the sintering temperature of the viscosity ranges.  In submissions in response, senior counsel for Rockwool identified by discovery number a significant number of documents said to have disclosed such material.  Not unexpectedly, I am not able from the descriptions of those documents to discern whether they do relate to the particular research features or elements upon which CSR focused.  At present, I am therefore unable to decide whether further discovery by Rockwool should be ordered of documents, or certain documents, falling within Category 6.  At present, I am not satisfied that Rockwool has further discoverable documents in that category which it has not discovered.

64                  The Category 9 documents, as noted above, were confined in oral submissions on behalf of CSR to documents passing between Rockwool and its patent advisers on the matters to which Category 6 refers.  I was uncertain from the response of senior counsel for Rockwool whether the documents discovered, and said to fall within Category 6, included all such communications or whether there were some such communications between Rockwool and its external patent advisers which were claimed to be privileged but had not been separately discovered as such.

65                  At present, I am not satisfied that there are documents within Category 9 (as so confined) which have not been discovered or whether the discovered documents said by Rockwool to be encompassed within Category 6 include documents which fall also within Category 9.  I do not anticipate any difficulty in the parties, through their legal representatives, clarifying that position privately.  If then Rockwool has documents within Category 9 which it has discovered but claimed to be privileged from production, or makes such a claim, it can be addressed.

CONCLUSION

66                  At present, I have come to the view for the reasons given that there should be no further order for discovery on CSR’s motion for further and better discovery.

67                  I will stand over the motion to a date to be fixed, with liberty to apply on reasonable notice, in the event that CSR, in the light of these reasons, wishes to pursue the two matters which I have left a little open-ended (concerning Categories 6 and 9 of the documents in respect of which further and better discovery was sought) or in the event that some additional issue arises concerning the adequacy of Rockwool’s discovery, although I do not expect any such additional issue to arise.

68                  I will also hear the parties as to the costs of the motion to date at a time to be fixed.

Associate:

Dated:         17 August 2007