FEDERAL COURT OF AUSTRALIA

Vehicle Monitoring Systems Pty Limited v SARB Management Group Pty Ltd trading as Database Consultants Australia (No 3) [2020] FCA 7

ORDERS

THE COURT ORDERS THAT:

1.    Subject to further or other order, and pursuant to s 37AF of the Federal Court of Australia Act 1976 (Cth) (Act), paragraphs [81] – [93] of the Reasons for Judgment delivered on 3 May 2013 (Reasons) are not to be disclosed during the period specified in Order 4 to any person other than the respondent, the external legal representatives of the parties, and the City of Melbourne and its internal and external legal representatives.

2.    Notwithstanding Order 1, paragraphs [81] – [93] of the Reasons can be made available to any person in the form of Annexure A to these orders.

3.    Subject to further or other order, and pursuant to s 37AF of the Act:

(a)    Confidential Exhibit ST-12 to the affidavit of Stephen Andrew Milton Toal made on 31 May 2013, including as exhibited to the affidavit of Stephen Andrew Milton Toal made on 14 May 2019 which has been filed in proceeding NSD 200 of 2019; and

(b)    the transcript of the mention on 3 June 2013,

are not to be disclosed during the period specified in Order 4 to any person other than the respondent, the external legal representatives of the parties, and the City of Melbourne and its internal and external legal representatives.

4.    The period referred to in Orders 1 and 3 is the period from 16 May 2019 to 16 May 2029.

5.    For the avoidance of doubt, leave is granted to the respondent to apply to the Court to extend the period referred to in Order 4.

6.    Orders 1 to 5 are made on the ground that non-disclosure of the information concerned is necessary to prevent prejudice to the proper administration of justice.

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

REASONS FOR JUDGMENT

YATES J:

1    On 4 June 2013, I made non-disclosure orders pursuant to s 37AF of the Federal Court of Australia Act 1976 (Cth) in respect of certain paragraphs, or parts of paragraphs, of the reasons for judgment published on 3 May 2013; Confidential Exhibit ST-12 to the affidavit of Stephen Andrew Milton Toal made on 31 May 2013; and the transcript of a mention before me on 3 June 2013 (collectively, the protected information). The period of non-disclosure was 4 June 2013 to 3 June 2018. I granted leave to the respondent, SARB Management Group Pty Ltd (SARB), to apply to extend that period. However, SARB did not exercise that leave before the period elapsed.

2    On 16 May 2019, SARB moved the Court for orders extending the period of non-disclosure from that date until 16 May 2029. Its principal reasons were that the protected information remained confidential; the protected information could be used by its competitors for their competitive advantage; and that the protected information could be used by “hackers” to avoid parking overstay violations or otherwise cause damage to the operation of SARB’s commercial system. There is evidence before me that SARB will continue to sell and supply vehicle overstay detection systems that operate in the manner described by the protected information, or in a very similar way, at least for the next five years, and that the expected operational life of these systems is between five to eight years.

3    SARB did not seek to explain why it had not moved earlier to extend the period of non-disclosure. However, in correspondence with the Court’s New South Wales District Registry, SARB’s solicitors stated that the “deadline” (meaning, 3 June 2018) was inadvertently overlooked by SARB.

4    There was no “deadline” as such for exercising the leave granted by Order 4 made on 4 June 2013, although it could be expected that, had it wanted to avoid the risk of the protected information being disclosed after 3 June 2018, SARB would have moved before that date. Nonetheless, there is information before me that no non-party has sought access to the Court’s file containing the protected information, including in the period 4 June 2018 to the present time.

5    SARB moved for orders extending the non-disclosure period in this proceeding and in proceeding NSD 200 of 2019, which are fresh infringement proceedings that have been commenced by Vehicle Monitoring Systems Pty Limited (VMS). In the latter proceeding, the order sought would also permit disclosure of the protected information to the City of Melbourne (the second respondent in that proceeding) and its internal and external legal representatives. It is not clear to me why seemingly contradictory orders should be made or why separate orders should be made in the two proceedings. If it is appropriate for the non-disclosure period to be extended then it seems to me that the appropriate course is for one order to be made in this, the original, proceeding – being the proceeding in which the non-disclosure orders were made and in which leave to extend the period of non-disclosure was granted.

6    On the basis of the evidence before me, I am satisfied that it is appropriate that the period of non-disclosure be extended, as sought. I am satisfied that the protected information is confidential and that non-disclosure is necessary to prevent prejudice to the proper administration of justice. The protected information was only provided by SARB for the limited purpose of determining its liability for patent infringement. I accept that wider disclosure would expose SARB to the risk of competitive damage and to the risk that the commercial systems it supplies could be compromised operationally.

7    SARB also seeks an order reserving leave to apply for yet a further extension of the non-disclosure period. I am prepared to grant that leave. I would have thought, however, that only very cogent reasons would support a further extension, given the period of non-disclosure already ordered.

8    I record that VMS has not opposed the present application.

Associate:

Dated:    10 January 2020