FEDERAL COURT OF AUSTRALIA

Hanwha Solutions Corporation v LONGi Green Energy Technology Co. Ltd [2020] FCA 580

ORDERS

THE COURT ORDERS THAT:

1.    Until further order, pursuant to s 37AI of the Federal Court of Australia Act 1976 (Cth), on the ground that it is necessary to prevent prejudice to the proper administration of justice within the meaning of s 37AG(1)(a) of the Act, access to and disclosure (by publication or otherwise) of the information referred to in Annexure A to these orders be restricted to the Court, including any necessary Court staff, and the following persons:

(a)    the Applicants’ solicitors, counsel and patent attorneys;

(b)    the Respondents' Australian external solicitors, counsel and patent attorneys who have signed a confidentiality undertaking in the form agreed between the Applicants and the Respondents;

(c)    such other persons as the Court may order.

2.    The parties provide short minutes of order to chambers giving effect to the reasons for judgment published on 1 May 2020, by 4.00pm on 15 May 2020.

3.    Any party wishing to make a submission as to the costs of the discovery applications is to file and serve a submission of no more than three pages in length within 14 days.

4.    Any submission in response to a submission filed in accordance with order 3 is to be of no more than three pages in length, and is to be filed and served within 14 days thereafter.

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

Annexure A

1.    The documents discovered and produced by the Applicants, pursuant to order 13 of the orders made by the Court made on 11 October 2019, and marked Confidential in the verified list of documents of Noonshil Chung dated 1 November 2019.

2.    Confidential Exhibit RFG-2 to the second affidavit of Rebekah Gay affirmed 13 February 2020.

3.    Confidential Exhibit JOK-5 to the affidavit of Justin Kardi sworn 13 December 2019.

4.    Confidential letter from Corrs Chambers Westgarth to Herbert Smith Freehills dated 12 November 2019.

5.    Confidential letter from Herbert Smith Freehills to Corrs Chambers Westgarth dated 18 November 2019.

6.    Confidential letter from Clayton Utz to Herbert Smith Freehills dated 22 November 2019.

7.    Confidential letter from Baker & McKenzie to Herbert Smith Freehills dated 27 November 2019.

REASONS FOR JUDGMENT

BURLEY J:

1.    INTRODUCTION

1    This judgment is given in three proceedings brought by the applicants (Hanwha) against LONGi Green Energy Technology Co Ltd and others in NSD 394 of 2019, Jinko Solar Australia Holdings Co Pty Ltd in NSD 395 of 2019 and REC Solar Pte Ltd and others in NSD 458 of 2019 (collectively, respondents). In those proceedings, Hanwha sues the respondents under the Patents Act 1990 (Cth) for infringement of claims 9, 11 and 12 of Australian Patent No 2008323025 (Patent) which is entitled “Method for manufacturing a solar cell with a surface-passivating dielectric double layer, and corresponding solar cell”. It also seeks orders for the alleged contravention of ss 18 and 29 of the Australian Consumer Law, which is Schedule 2 to the Competition and Consumer Act 2010 (Cth). The respondents deny the allegations, and have filed cross claims in which they contend that claims 9, 11 and 12 of the Patent are invalid. For present purposes it is relevant only to note that the grounds of invalidity include: lack of inventive step and lack of novelty based, inter alia, on a United States patent referred to as Bhattacharyya; lack of fair basis; and lack of utility.

2    Somewhat after filing the proceedings, Hanwha filed an interlocutory application seeking leave to amend the Patent pursuant to s 105 of the Patents Act (amendment application). The Annexure to these reasons sets out, in mark-up, the proposed amended claims. In evidence filed in support of the amendment application, Hanwha contends that the amendments are to address the grounds of invalidity raised by the respondents insofar as they concern Bhattacharyya, lack of fair basis and lack of utility.

3    The respondents oppose the amendment application on discretionary grounds, including: that Hanwha has delayed in seeking the amendments; that it has failed to make full disclosure of all matters relevant to the proposed amendments, including when it first knew or ought to have known of the desirability for amendment of the Patent; and that Hanwha has maintained a claim for privilege in respect of redacted material that the respondents contend is prima facie relevant to the discretionary issues.

4    Pursuant to orders made on 11 October 2019, Hanwha was required to give discovery of “all documents relevant to the [a]mendment [a]pplication”. Hanwha provided discovery, but the respondents contend that Hanwha has failed to discover all relevant documents. The respondents have filed interlocutory applications (each in substantially the same form) seeking:

(1)    Orders pursuant to s 23 of the Federal Court of Australia Act 1976 (Cth) (FCA Act) and r 1.32 and r 20.21 of the Federal Court Rules 2011 (Cth), and by way of further and better discovery to the orders made on 11 October 2019, that Hanwha discover and produce (in unredacted form) documents within certain listed categories;

(2)    Orders pursuant to r 20.32 of the Rules that Hanwha produce in unredacted form all of the documents included in Hanwha’s list of documents dated 1 November 2019; and

(3)    Costs,

(collectively, the discovery applications).

5    Prior to the hearing of the discovery applications the parties filed detailed written submissions. With admirable brevity, the respondents co-operated to produce a single set of submissions that presented a uniform approach to the discovery applications, despite there being some differences between the discovery categories that each respondent sought. The documents in respect of which additional discovery is now pressed are identified by reference to categories 1, 2, 4, 5, 6 and 15 set out in the REC discovery application, which was the numbering adopted by the respondents in their joint submissions. In addition, and in modification to (2) above, the respondents seek orders that only five documents in respect of which discovery has been given be supplied to the respondents in an unredacted form. It is those categories and redacted documents that are addressed in these reasons.

6    In the discovery applications, the respondents rely on the affidavit of Justin Kardi (a solicitor employed by Clayton Utz, the solicitors for REC) sworn on 13 December 2019 and the affidavit of Odette Gourley (solicitor for Jinko) sworn on 12 December 2019. The applicants rely on: affidavits affirmed by their solicitor, Rebekah Gay, affirmed on 31 October 2019 (Gay 1) and affirmed on 13 February 2020 (Gay 2); an affidavit affirmed by Noonshil Chung, Deputy General Counsel of Hanwha Q Cells & Advanced Materials Corporation (the patentee) on 1 November 2019; and an affidavit affirmed by Ralf Paugstadt, an IP manager for a related Hanwha entity, on 8 November 2019. Hanwha also relies upon its list of discovered documents, together with a verifying affidavit affirmed by Ms Chung on 1 November 2019.

7    The respondents put their case in two ways. First, they submit that the evidence given by Ms Gay reveals that Hanwha has excluded documents from production on discovery based on a misconception of the case. They contend that this misconception results in a broad entitlement for the Court to go behind the affidavit of discovery, citing Mulley v Manifold (1959) 103 CLR 341 at 343. Secondly, even if they are incorrect on a general level as to the approach taken by Hanwha, further discovery is warranted having regards to the particular categories that they have identified, because each reveals that documents have been incorrectly excluded.

2.    SHOULD ADDITIONAL DISCOVERY BE REQUIRED?

2.1    Alleged misapplication of the test for relevance

8    As to the first point, the respondents contend that Hanwha has misapplied the test for relevance in determining the documents that it would produce on discovery. In Gay 1, Ms Gay stated that the reason for seeking amendments to the patent was “to strengthen [the asserted claims] and potentially to reduce the scope of the issues that may need to be determined in light of the particulars of invalidity relating to Bhattacharyya, fair basis, and utility” and to “reduce the scope of the issues that may need to be determined in light of the [r]espondents’ particulars of invalidity and Jinko’s non-infringement construction position”.

9    In a letter dated 4 December 2019 Hanwha asserted that it had applied a test for determining relevance based on the statement in Apotex Pty Ltd v Les Laboratoires Servier (No 4) [2015] FCA 104; 111 IPR 160 (Rares J) at [168] that the patentee has an obligation which:

…“requires the patentee to put forward the correct reasons for the amendment” but did not impose a general obligation to “trawl through”, and I would add produce, documents to see whether they are relevant to the exercise of the discretion on bases other than the disclosure of the patentee’s reasons for seeking to amend.

(Ms Gay’s emphasis)

10    The respondents contend that the passage so cited was applicable to the duty of candour owed by a patentee seeking to amend, but is too narrow to encompass the obligation to give discovery of relevant documents. The exercise of the discretion to permit an amendment under s 105 of the Patents Act may be exercised adversely to a patentee where it is established that the patentee failed to act promptly after becoming aware of circumstances that would lead a reasonable person to apply to amend earlier. The respondents rely on the statement of Nicholas J in Neurim Pharmaceuticals (1991) Ltd v Generic Partners Pty Ltd (No 2) [2019] FCA 154; 139 IPR 424 at [108]. At this point it is convenient to also set out the preceding paragraph from that decision:

[107]        The discretion arising under s 105 of the Act is broad. However, it is generally exercised by reference to a number of guiding principles that seek to balance the right of the patentee to apply to amend its patent in an appropriate case and the public interest in ensuring that an amendment application is made promptly, for proper purposes, and not so as to allow the patentee to obtain an unfair advantage were it to be allowed. The most well-known statement of the guiding principles appears in the following passage from judgment of Aldous J in Smith Kline & French Laboratories Ltd v Evans Medical Ltd [1989] 1 FSR 561 at 569:

The discretion as to whether or not to allow amendment is a wide one and the cases illustrate some principles which are applicable to the present case. First, the onus to establish that amendment should be allowed is upon the patentee and full disclosure must be made of all relevant matters. If there is a failure to disclose all the relevant matters, amendment will be refused. Secondly, amendment will be allowed provided the amendments are permitted under the Act and no circumstances arise which would lead the court to refuse the amendment. Thirdly, it is in the public interest that amendment is sought promptly. Thus, in cases where a patentee delays for an unreasonable period before seeking amendment, it will not be allowed unless the patentee shows reasonable grounds for his delay. Such includes cases where a patentee believed that amendment was not necessary and had reasonable grounds for that belief. Fourthly, a patentee who seeks to obtain an unfair advantage from a patent, which he knows or should have known should be amended, will not be allowed to amend. Such a case is where a patentee threatens an infringer with his unamended patent after he knows or should have known of the need to amend. Fifthly, the court is concerned with the conduct of the patentee and not with the merit of the invention.

[108]     The fact that a patentee failed to act promptly after becoming aware of facts or circumstances that would lead a reasonable person to apply to amend the claim may provide a sufficient basis for refusing an application to amend. Such facts and circumstances will usually include the state of the prior art and the patentee’s knowledge of it and the scope of the relevant claim including, for example, the absence of any limitation that the patentee may wish to introduce. Ultimately, however, these are matters that must be considered in light of all other facts and circumstances relevant to the exercise of a broad statutory discretion.

See also CSL Ltd v Novo Nordisk Pharmaceuticals Pty Ltd (No 2) [2010] FCA 1251; 190 FCR 522; 89 IPR 288 at [76] (Jessup J).

11    After the discovery applications were filed, Hanwha filed Gay 2, in which Ms Gay said at [12], citing Oxford Gene Technology Ltd v Affymetrix Inc (No 2) [2001] RPC 18 (Aldous LJ) at [317], as applied by Rares J in Apotex at [168], that she understood (emphasis added):

[12]     ... that Hanwha was required to disclose the correct reasons for the proposed amendments and any other facts relevant to the exercise of the Court’s discretion including when Hanwha knew or ought to have known that an amendment along the lines of that proposed should be sought and any unfair advantage of the [Patent] (unamended) taken by Hanwha if it knew that it required amendment.

Ms Gay states in Gay 2 that Hanwha complied with that obligation.

12    The respondents contend that this statement was different to and broader than the test articulated in the 4 December 2019 letter, and that the test so articulated continues to be too narrow and incorrect. At this point I should say that the observation as to inconsistency can go nowhere. Ms Gay was not cross examined, and in Gay 2 she sets out the test that Hanwha applied. The respondents submit that it is sufficient if it appears that a party has excluded documents (or, I add, a search for documents) based on a misconception of the case, citing Mulley at 343. In that passage Menzies J said (emphasis added):

So far as O. 32, r. 13 is concerned, it cannot be shown by a contentious affidavit that the discovery made is insufficient. Before 1912, it was thought that the insufficiency had to appear from the pleadings, the affidavit of documents itself or the documents therein referred to. However, in British Association of Glass Bottle Manufacturers Ltd. v. Nettlefold, it was established that the insufficiency might appear not only from the documents but also from any other source that constituted an admission of the existence of a discoverable document. Furthermore, it is not necessary to infer the existence of a particular document; it is sufficient if it appears that a party has excluded documents under a misconception of the case. Beyond this, the affidavit of discovery is conclusive.

13    I am not satisfied that the respondents have established that Hanwha has applied the wrong test, at least having regard only to the content of the affidavit evidence and the correspondence. The emphasised passage in Gay 2 at [12] indicates that discovery was given not only of documents going to “the correct reasons for the proposed amendments” but also to “any other facts relevant to the exercise of the Court’s discretion including when Hanwha knew or ought to have known that an amendment along the lines of that proposed should be sought and any unfair advantage of the [unamended Patent]”. That is consistent with the guiding principles applicable to the grant of an application to amend as set out in Neurim. Discovery so given accords with the obligation under r 20.14(1)(a) of the Rules, as elucidated by r 20.14(2). The test applied by Hanwha resulted in the discovery of documents upon which Hanwha intends to rely, but also of documents adverse to its case, and documents that support another party’s case. Accordingly, the respondents have not established that at a general level Hanwha’s approach was based on a misconception of the case.

2.2    Specific categories of discovery sought by the Respondents

14    The respondents next contend that, regardless of the test that Hanwha says was applied, it is objectively apparent from the discovery given that it did not correctly apply the test. In this regard the respondents submit that further discovery by categories is warranted on the basis of statements made in Hanwha’s affidavits in support of the amendment application, as identified below.

15    In category 1 the respondents seek discovery of documents recording:

The analysis undertaken by the Hanwha in-house technical expert of the objections raised in prosecution of the US 9,548,405 patent, including in relation to Bhattacharyya, referred to in paragraph 45 of the affidavit of Dr Paugstadt sworn on 8 November 2019, and consideration by Hanwha or its external legal or technical advisors of that analysis and any relevant matter flowing from that analysis.

16    Dr Paugstadt states in [45] of his affidavit that he first became aware of Bhattacharyya in mid-2015 during prosecution of the US 9,548,405 patent (US 405 patent), when Bhattacharyya was cited as prior art. He says that he did not conduct a detailed review of Bhattacharyya at that time, but engaged an in-house expert to consider objections raised on the basis of it. At [46] he says that he did not consider whether Bhattacharyya was potentially relevant to the Patent, or its US equivalent, noting that the US 405 patent is in one patent family (US 405 patent family), while the US equivalent of the Patent is in a different patent family. Dr Paugstadt also explains that one external patent attorney firm was involved in prosecuting the US 405 patent family, while a different external patent attorney firm was involved in prosecuting patents in the same family as the Patent (Patent family). Dr Paugstadt gives evidence at [47] that he first considered Bhattacharyya in relation to the Patent, and the Patent family, at the beginning of June 2019.

17    The respondents submit that the effect of this evidence is to assert that Hanwha’s related entities had no actual knowledge of the need to strengthen the Patent in light of Bhattacharyya before June 2019. They submit that this does not address the further relevant question of when Hanwha was first exposed to “facts from which it was, or ought reasonably ought to have been, apparent” that the Patent claims should be strengthened in light of Bhattacharyya. The respondents contend that discovery should not stop at documents going to Dr Paugstadt’s knowledge. They contend that it is “critical” for Hanwha to discover documents exposing the in-house expert’s consideration of Bhattacharyya. On the facts put forward in the present application, I disagree.

18    There is no dispute that Hanwha did not include within production documents within this category. Ms Gay expresses the view that she considered such documents not to be relevant to the amendment application.

19    The US 405 patent does not belong to the Patent family. It is unnecessary to address the differences in detail. The highest that the respondents put the relationship between the two is that both are for a “solar cell” and that they share some “common features”, one of which is an aluminium oxide layer. There is no doubt that the invention claimed in the US 405 patent is a different combination of elements to that in the Patent. No doubt the in-house expert and the patent attorney firm mentioned by Dr Paugstadt read Bhattacharyya carefully and performed an analysis of the disclosure of that document against the US 405 patent. One may ask, rhetorically, what relevance would that analysis be to the Patent, or the exercise of the discretion under s 105 of the Patents Act? If it is to establish that in 2015, Bhattacharyya had been read and analysed and compared against the US 405 patent by persons within the organisation, then as much may be inferred from the evidence of Dr Paugstadt. If, as the respondents’ submissions suggest, it is because there is a prospect that within the analysis produced, someone somewhere suggested that Bhattacharyya may be relevant to the Patent, then the further category is best described as a fishing expedition. It is perhaps possible such a document exists, but the prospect does not rise above that. The objective evidence is that it is unlikely. In that regard, I note that:

    Bhattacharyya was not cited during the examination of the PCT application or any of the national phase examinations of the Patent or its equivalent in Australia, the United States, Europe, China or Malaysia. Nor was Bhattacharyya cited in any of the five European opposition proceedings commenced in May 2017 concerning the equivalent of the Patent, or any patent within the Patent family.

    It was not until May 2019 that Bhattacharyya was cited against an equivalent of the Patent. Prior to that time, despite Bhattacharyya being published and relied upon in relation to the US 405 patent family, it was not relied upon as a citation against any patent in the Patent family.

These matters are mentioned because they suggest that third parties had not considered that Bhattacharyya was a relevant citation to the Patent or its equivalents until relatively recently. Whether or not Bhattacharyya is a relevant citation is a contention that may or may not be well based (a subject on which I make no comment or finding). However, in terms of considering the likely relevance of the production of the documents that the respondents seek, those matters support the view that the respondents are seeking to require the patentee to trawl through a category of documents on the off chance that something may turn up. That is not an indication of relevance.

20    Additionally, one should be cautious in arriving at the view that amendments made by a patentee to a foreign patent, even when the claims are equivalent to the claims in suit, may or will provide a basis for inferring that the patentee should have been aware of the need to make the amendments to an Australian claim. The patents laws and procedures of foreign jurisdictions are frequently different to those of Australia. The basis for seeking changes may be related to the validity requirements in other jurisdictions that are different to those applicable in Australia. Where, as here, the claims are not equivalent, the relevance of the motivation for the change is likely to become sufficiently remote to be removed from relevance.

21    Finally, it is apparent from the evidence in Gay 2 that Ms Gay reviewed the US 405 patent and formed the view that documents relating to the consideration of Bhattacharyya in the light of that patent were not relevant, inter alia, because they involve consideration of that document in relation to an unrelated patent, with claims to a different invention. For the reasons set out above, the respondents have not established that Hanwha took an incorrect approach to relevance. Accordingly, there is no warrant to go behind the affidavit of discovery: Mulley at 343.

22    Category 2 seeks production of:

Consideration by Hanwha or its external legal or technical advisors of whether or not to “make any of the amendments proposed in the Amendment Application, or any similar amendments, in any other jurisdiction, either before or after the grant of any other patent or patent application in the Patent Family” referred to in paragraph 43 of the affidavit of Ms Chung affirmed on 1 November 2019 and paragraph 48 of the [affidavit of Dr Paugstadt sworn on 8 November 2019], including without limitation:

(a)    the amendment proposed in Auxiliary Request No. 4 [AR 4] to the European Patents Office dated 11 July 2017 to amend claim 13 of European patent EP 2 220 689 to claim a solar cell according to any of claims 9 to 12, wherein the second dielectric layer has a thickness of more than 100nm;

(b)    the amendment proposed in Auxiliary Request No. 5 [AR 5] to the European Patents Office dated 26 February 2016 to amend claim 9 of European patent EP 2 220 689 to claim a solar cell having (relevantly) metal contacts (7, 9) on one front side and one rear side of the solar cell; and

(c)    the amendment proposed in Auxiliary Request No. 3 [AR 3] to the European Patents Office dated 26 February 2016 to amend claim 9 such that it requires the second dielectric layer to be thicker than the first dielectric layer.

23    In their statement of grounds and particulars of opposition to Hanwha’s amendment application the respondents include the contention that the patentee (by its predecessor in title) has been aware of facts from which it was, or ought reasonably to have been, apparent that claims 9 to 12 of the Patent might well be invalid, such that it was necessary for Hanwha to make the proposed amendments, since no later than the events listed in Annexure A to the statement of grounds. Annexure A includes as items 2, 3 and 4 reference to applications to amend the European equivalent to the Patent in February 2016 and July 2017. These are the “auxiliary requests” identified as ARs 4, 5 and 3 in category 2.

24    In their affidavits in support of the amendment application, each of Dr Paugstadt and Ms Chung give evidence that Hanwha has not sought to make any of the amendments proposed to be made to the Patent “or any similar amendments” in any other jurisdiction either before or after the grant of any other patent or patent application in the Patent family. By this category, the respondents wish to test that assertion by reference to the three ARs, which they supply as examples of Hanwha’s failure to appreciate its discovery obligations.

25    Hanwha accepts that ARs 4, 5 and 3 are requests lodged by Hanwha to amend a patent in the Patent family. Hanwha also accepts that if amendments were made to a patent within the same family that were “the same or similar” to those currently in issue, then documents concerning those amendments should be discovered, in accordance with orthodox principle. The dispute between the parties lies at where the line may be drawn between amendments that are “similar” to those sought in the present proceedings, and those which are not.

26    The respondents contend that the debate as to whether the amendments are the same or similar is a substantive question that falls to be determined at the hearing of the amendment application itself, not at an interlocutory application seeking discovery. Hanwha contests this, and submits that it is not even reasonably arguable that the amendments the subject of the auxiliary requests are “the same as, or similar to” the amendments that it is seeking in these proceedings.

27    Ms Gay explains for each of ARs 4, 5 and 3 her reasons for concluding that they were not relevant for the purposes of giving discovery. In the present application the onus lies on the respondents to satisfy the Court that her decision was based on a misconception of the correct approach such that the provision of additional discovery is warranted. The respondents attempt to illustrate the misconception by reference to ARs 4, 5 and 3. In the reasoning that follows, and at the urging of the parties, I review the amendments proposed to be made to certain claims in the Patent and in ARs 4, 5 and 3, based solely on the text of the changes, and do not purport to construe the claims or express any concluded view as to their scope.

28    The amendments proposed to claim 9, and consequential amendments to claims 12 and 13, of EP 2220689 (EU patent) in AR 4 in July 2017 are as follows:

9. Solar cell comprising:

a silicon substrate (1);

a first dielectric layer (3) comprising aluminium oxide on a surface of the silicon substrate (1);

characterized by

a second dielectric layer (5) on a surface of the first dielectric layer (3), wherein the materials of the first and second dielectric layers differ and wherein hydrogen is included in the second dielectric layer,

wherein the first dielectric layer has a thickness of less than 50nm,

where in the second dielectric layer has a thickness of more than 50nm.

…

12. Solar cell according to one of claims 9 to 11, wherein the first dielectric layer has a thickness of less than 50nm, preferably less than 30 nm and more preferably less than 10 nm.

13. Solar cell according to one of claims 9 to 12, wherein the second dielectric layer has a thickness of more than 50nm, preferably more than 100nm and more preferably more than 150 nm.

29    It is apparent on the face of the amendments that they have the effect of narrowing the scope of claim 9. Exhibited to Gay 2 is a submission made on behalf of Hanwha in relation to AR 4, to the effect that the amendment was made to differentiate claim 9 of the EU patent from prior art patent WO 2008/065918 (Isaka).

30    The respondents draw attention to Hanwha’s proposed new claim 13 in the Patent, which is as follows (see also the Annexure to these reasons):

Solar cell according to any one of claims 9 to 12, wherein the second dielectric layer has a thickness of more than 100nm.

31    The respondents submit that proposed new claim 13 in the Patent is substantially identical to the form of claim 13 as amended by AR 4. They submit that because of that level of similarity, it necessarily follows that discovery of documents concerning Hanwha’s consideration of AR 4 is directly relevant to whether Hanwha knew or ought reasonably to have known that the Patent might well have been invalid unless it similarly included a dependent claim limiting the thickness of the second layer to 100nm. They submit that by making the same or similar changes to proposed new claim 13, discovery of documents relating to Hanwha’s consideration of AR 4 should be provided.

32    The addition of proposed new claim 13, when appended to claim 9 of the Patent, has the consequence that the second dielectric layer of claim 9 of the Patent must be of a thickness of more than 100nm. The amendment introduced by AR 4 to claim 13 to the EU patent appears to be to the same effect.

33    Hanwha submits that the amendments made by AR 4 to claim 9 of the EU patent explain why it is that claim 13 of the EU patent was amended: namely, because the narrowing of claim 9 meant that if the equivalent integer remained in claim 13 it would have been redundant. Hanwha submits that the amendments brought about in AR 4 bring claim 9 of the EU patent more into line with the claims of the Patent without amendment, and the amendment to claim 13 in AR 4 was “consequential only”. Hanwha submits that the reason for the amendment sought in AR 4 concerned Isaka, and those reasons are unrelated to the amendments now sought to be made to the Patent. That explanation is put forward on the basis of submissions made by Hanwha in support of the amendments at the time that they were made.

34    There are three difficulties with Hanwha’s submissions. The first is that the effect of the amendment in AR 4 is not only to move integers from claims 12 and 13 into claim 9. Claim 13 (when read with claim 9) appears to impose a new limitation on the second dielectric later, namely that it must be more than 100nm in thickness. Whilst the removal of “more than 50nm, preferably” removes a redundancy, it also imposes that limitation. The second is that the amendment does not bring the amended EU claims “in line” with the Patent before amendment. That is because the Patent before amendment has no second dielectric layer limited to 100nm. It is only proposed amended claim 13 that includes that limitation. Accordingly, it seems to me that the respondents have established, for the purposes of the present application, that there is sufficient similarity between the amendments to warrant additional discovery.

35    The third is that were I to adjudicate on the correctness of Hanwha’s position insofar as it purports to explain the reasons for the AR 4 amendments, I would in effect be determining in favour of Hanwha the very subject matter of the dispute on the amendment application. Hanwha has, by the evidence of Ms Chung and Dr Paugstadt, made relevant documents pertaining to amendments that are “the same or similar” to those currently proposed in the amendment application. I am satisfied that documents concerning AR 4 are relevant, and that discovery in the form sought in category 2(a) is appropriate.

36    In relation to AR 5, the respondents made no written submissions, but advanced a submission in oral argument to the effect that it should be able to investigate whether the “real reason” for the amendment to the Patent was awareness of Bhattacharyya, and not any other reason(s).

37    The amendments proposed to claim 9 of the EU patent in AR 5 were as follows (bold emphasis added):

9. Solar cell comprising:

a silicon substrate (1);

a first dielectric layer (3) comprising aluminium oxide on a surface of the silicon substrate (1);

metal contacts (1, 9) on a front and a back of the solar cell;

characterized by

a second dielectric layer (5) on a surface of the first dielectric layer (3), wherein the materials of the first and second dielectric layers differ and wherein hydrogen is included in the second dielectric layer,

wherein the first dielectric layer (3) has a thickness of less than 50nm.

38    A consequential amendment, removing the reference to “less than 50nm” in claim 12, was also proposed.

39    In submissions advanced to the European Patent Office in support of AR 5, Hanwha contended that the effect of this proposed amendment would differentiate the claimed invention from Isaka and four other citations, none of which is Bhattacharyya. Ms Gay summarises the submission as being that “a key aspect of the amendments in AR 5 was to introduce a claim limitation that specified the solar cell had metal contacts on both the front and back of the cell”.

40    Ms Gay goes on to give evidence that (emphasis added):

None of the amendments proposed in the [a]mendment [a]pplication introduce … a claim limitation [that specifies the solar cell has metal contacts on both the front and back of the cell]. While proposed claim 14 in the [a]mendment [a]pplication does include features relating to metal contacts, these features are concerned with the arrangement of the metal contacts relative to the first and second dielectric layers, not whether they are at the front or back of the solar cell. Further, as set out in paragraph 47(a) of [Gay 1], the reason for this proposed new claim was to further differentiate the claimed invention from the invention described in Bhattacharyya, not to address Isaka or any of the prior art [being the other four citations]. Therefore, in compiling the Hanwha Discovery, I concluded that documents relating to AR 5 were not relevant to the [a]mendment [a]pplication.

41    The respondents draw attention to Hanwha’s proposed new claim 14, which is as follows (see also the Annexure to these reasons):

Solar cell according to any one of claims 9 to 13, further comprising a plurality of metal contacts, wherein the metal contacts pass through the first dielectric layer and the second dielectric layer.

42    Proposed new claim 14 in the Patent would appear to have the effect of narrowing claims 9 to 12 by adding the requirement of metal contacts passing through the layers identified. That is a difference to the amendment proposed in AR 5, because the amendment there was to add a requirement that the metal contacts be on the front and the back of the solar cell. No integer in AR 5 required the contacts to pass through the first and second dielectric layers. The changes cannot on their face be said to be “the same”.

43    The respondents contend that proposed new claim 14 is “similar” to AR 5, and that the amendment by way of the addition of proposed new claim 14 may not in fact be to overcome Bhattacharyya, but to overcome Isaka. However, the respondents provide no metric by which it may be said that the amendments may be characterised as “similar” beyond the broad suggestion that they both concern metal contacts. The amendments do not appear to the otherwise untutored eye to be “similar”, and absent further instruction I am unable to reach the conclusion that they are so similar. The onus lies on the respondents in this respect. Having regard to the materials before me, I am not satisfied that additional discovery of documents within category 2(b) is warranted.

44    AR 3 proposed to amend claim 9 of the EU patent to add, in lieu of the final integer added in AR 5 (as set out in underline at [37] above), the following integer:

wherein the first dielectric layer (3) is deposited with a thickness of less than 50nm, wherein the second dielectric layer (5) is thicker than the first dielectric layer (3).

45    The respondents have advanced no substantive written or oral submissions in support of this category. No amendment to the Patent would appear to be required to achieve a combination including this integer, because existing claim 12, which is dependent upon claims 9 to 11, supplies effectively the same integer (ie that the second dielectric layer has a thickness of more than 50nm). Proposed new claim 13 in the Patent adds a different requirement, namely that the second dielectric layer has a thickness of more than 100nm. I am not persuaded, on the basis of the materials presently before me, that proposed new claim 13 is the same or similar to the amendments proposed in AR 3 or, for that reason, that the respondents have established that additional discovery is warranted.

46    Category 4 seeks further and better discovery of various communications that are identified in Hanwha’s affidavit evidence. Category 5 seeks documents recording the consideration by members of Hanwha’s internal legal team including Mr Cho, Mr Moon, Mr Ku, Mr Seo or Ms Chung, between mid-August 2019 and mid-September 2019, of “the potential to amend the Australian Patent” as referred to in the affidavit of Ms Chung. The premise upon which the respondents contend that they are entitled to production of these documents is that Hanwha has generally applied the wrong test for relevance in the sense that I have considered in section 2.1 of these reasons.

47    Hanwha has provided verified discovery of documents falling within these categories. Furthermore, Ms Gay deposed in Gay 2 to making further enquiries in relation to these categories, and has confirmed that there are no further documents in existence that fall within these categories.

48    The respondents press for an order that Hanwha, not its solicitor, provide an affidavit verifying that fact. However, I am not satisfied that the respondents have advanced a basis upon which one could go behind the affidavit of discovery: Mulley at 343.

49    In Category 6 the respondents seek discovery of any document or documents recording (italic emphasis added):

Internal Hanwha communications, communications between Hanwha and its external legal or technical advisors, internal Herbert Smith Freehills communications, briefs, memoranda and communications from Herbert Smith Freehills to counsel, communications from counsel to Herbert Smith Freehills, communications between Herbert Smith Freehills and FPA Patent Attorneys, and communications between counsel, in relation to the reasons for each of the patent amendments sought by Hanwha in its amended interlocutory application dated 1 October 2019 12 February 2020, including without limitation all earlier or other versions of them and all drafts of the amendments and all earlier and other versions of them, and consideration of those versions and drafts

50    The underlined words were added by amendments made to the discovery applications after Gay 2 had been affirmed. There is a slight difference in the form of LONGi’s proposed category, insofar as LONGi presses for discovery of documents relevant to both the original interlocutory application dated 1 October 2019 as well as documents relevant to the amended interlocutory application dated 12 February 2020.

51    Hanwha submits that it has given verified discovery of all non-italicised documents falling within the scope of the category. In Gay 2, Ms Gay deposes that she reviewed that discovery in the light of the discovery applications, and confirmed that save for two documents (which have now been produced) discovery had been given.

52    The respondents advance three bases upon which additional discovery in accordance with this category should be given. First, they submit that Hanwha has wrongly excluded from discovery documents going to the 12 February 2020 amendment to Hanwha’s amendment application. By that amendment Hanwha abandoned an earlier proposal to amend the Patent by adding a draft claim 15 to the Patent, as shown in mark-up in the Annexure to these reasons. By this category, the respondents seek discovery of documents going to that decision. That basis for further discovery must be rejected. The application to amend the Patent that is before the Court is that set out in the amendment application, as amended on 12 February 2020. It does not include a request for leave to include draft claim 15. The discretionary considerations applicable to the grant of leave to amend a claim do not extend to the decision to withdraw a proposed amendment. That proposal is no longer before the Court.

53    Secondly, the respondents submit that the documents in italics remain to be discovered. These are internal Herbert Smith Freehills (HSF) communications, and communications between HSF and FPA Patent Attorneys, that were prepared, but not supplied to Hanwha. The respondents have provided no cogent reason why such documents would be discoverable. They are internal working drafts. To the extent that drafts of documents were supplied to Hanwha, they are included within the discovery already provided. In relation to the drafts that have not been supplied to Hanwha, their relevance has not been established. Indeed, it is likely that production of such documents would only lead to unnecessary costs. I am not persuaded that Hanwha has not applied the correct test of relevance in concluding that these documents should not be discovered.

54    Thirdly, the respondents contend that Hanwha has otherwise misapplied the scope of its obligations as to the production of relevant documents. The respondents give as an example that no discovery has been given which “adequately explains the basis for the proposed amended claim 11”. Claim 11 is proposed to be amended as follows:

Solar cell according to claim 9 or 10, wherein the second dielectric layer comprises a material selected from the group comprising silicon nitride, silicon oxide and silicon carbide.

55    They submit that the claim leaves only silicon nitride as the material for the second dielectric layer of the solar cell, but the purpose of that amendment cannot be to distinguish the claim from Bhattacharyya, which discloses silicon nitride. The respondents contend that no explanation for this amendment has been given.

56    However, I have rejected the general premise that Hanwha has misconceived the scope of its discovery obligation. The example given takes the matter no further. It is not sufficient to isolate one integer from a combination to assert that the combination remains disclosed by Bhattacharyya. Ms Gay has confirmed in Gay 2 that discovery has been given of all documents that fall within the scope of category 6. The absence of documents does not provide a proper basis for seeking to challenge the discovery provided, and I am not persuaded that it is appropriate to go behind the affidavit of discovery.

57    Category 15 seeks discovery of Dr Paugstadt’s deposition in a complaint filed by the patentee in relation to the US equivalent of the Patent in the United States International Trade Commission (US ITC proceedings), and any preparation for or consideration of that deposition by Hanwha or its external legal or technical advisors, insofar as it concerns:

(a)    Any of the topics raised in categories 1 and 2 of the discovery applications;

(b)    When and how Hanwha became aware of Bhattacharyya;

(c)    The materiality of Bhattacharyya to:

(i)    The claims in US Patent 9,893,215 and any foreign equivalents; and/or

(ii)    The prosecution of any patent that claims priority from German Patent Application No 10 2007 054 384, and which was filed as a national phase entry from International Patent Application No. PCT/EP2008/065067; and

(d)    Hanwha’s knowledge in relation to Bhattacharyya and any action taken by or on behalf of Hanwha in light of this knowledge.

58    The respondents submit that any evidence that Dr Paugstadt has given in the US ITC proceedings concerning the topics listed is directly relevant to when Hanwha or its predecessors first knew, or ought reasonably to have known, of the desirability of amending the Patent to address Bhattacharyya. Hanwha contends that for the same reasons that documents within categories 1 and 2 should not be required to be produced, nor should the deposition. Furthermore, Hanwha disputes the relevance and proportionality of any discovery concerning documents beyond the deposition itself.

59    I have found above that documents concerning the amendment identified by reference to category 2(a) should be discovered. If Dr Paugstadt has supplied sworn evidence in relation to that amendment, then that evidence should be discovered. To the extent that Dr Paugstadt has also given sworn evidence going to the matters identified in 15(b), that evidence is also relevant, as is any sworn evidence that he has given in relation to the materiality of Bhattacharyya to a claim set that is equivalent to the Patent’s within category 15(c). To the extent that category 15(d) seeks the production of documents beyond those that I have identified in relation to categories 15(a), (b) and (c), category 15(d) is not relevant.

60    Otherwise, I accept the submission advanced by Hanwha that materials beyond the sworn evidence of Dr Paugstadt should not be produced in circumstances where the respondents have not explained why discovery of them is necessary or proportionate in these proceedings. Accordingly, the discovery required in relation to this category is confined to Dr Paugstadt’s sworn deposition.

3.    REDACTED DOCUMENTS

61    The respondents contend that discovered documents that they have identified by reference to numbers 5, 9, 10, 15 and 18 have been over-zealously redacted. They submit that the redacted portions should be removed. Hanwha maintains a claim to legal professional privilege and confidentiality in respect of each of these documents.

62    Ms Gay deposes that at the time of compiling the Hanwha discovery, she reviewed the documents in detail and formed the view that some of the documents contained sections that were not relevant to the amendment application, and as a result she caused those sections that were not relevant to be redacted so as to maintain legal professional privilege in those parts. She deposes that after the discovery applications were filed, she again reviewed the redactions for relevance and privilege, and remains of the view that the redactions are appropriate.

63    The respondents submit that the documents appear to include redaction of content that is relevant to the amendment application, or at least relevant to enabling a proper understanding of the unredacted material that has been disclosed. Hanwha submits that the documents at issue all contain material that would ordinarily benefit from legal professional privilege. It accepts that such privilege is waived insofar as it concerns questions relevant to the amendment application, but submits that it is entitled to take steps to redact materials that are not relevant to that application and that would otherwise benefit from privilege that has not been waived, citing CSL Ltd v Novo Nordisk Pharmaceuticals Pty Ltd [2010] FCA 671 at [24] – [25]. It submits that there is no occasion for the Court to go behind the affidavit of Ms Gay in this regard.

64    I was taken during the course of oral submissions to each of the documents that has been redacted. Some have been very significantly redacted. Nevertheless, each of the documents singled out is plainly a communication that would, but for the present application, benefit from legal professional privilege. The respondents invited the Court to review the redacted documents in order to consider whether a broader disclosure was warranted. After the hearing I asked Hanwha to supply documents numbered 10, 15 and 18 in unredacted form. I have now inspected them in that unredacted form. Having regard to my review of those documents, the context of the redactions generally and the affidavit evidence of Ms Gay, I am satisfied that the redactions are warranted. The respondents’ application in this respect fails.

4.    INTERIM CONFIDENTIALITY ORDERS

65    At the hearing of the discovery applications, Hanwha asked for interim confidentiality orders to be made in respect of certain obviously confidential documents. I am satisfied it is appropriate to make those orders in accordance with s 37AI of the FCA Act.

5.    CONCLUSION

66    I have concluded that for the most part the respondents’ application fails, but that in the two limited respects the provision of additional discovery is warranted. The parties should, within 14 days, confer and supply draft short minutes of order giving effect to my reasons.

67    My preliminary view is that the respondents should pay Hanwha’s costs with a reduction of 25 per cent to account for the measure of success that they have achieved. Any party contending for a different view should file and serve a submission of no more than 3 pages within 14 days, with any answering submissions of no more than 3 pages to be filed within 14 days thereafter.

Associate:

Dated:    1 May 2020

Annexure

1.    Method for manufacturing a silicon solar cell, including the following steps:

providing a silicon substrate (1);

depositing a first dielectric layer (3) on a surface of the silicon substrate by means of atomic layer deposition, wherein the first dielectric layer comprises aluminium oxide; and

depositing a second dielectric layer (5) on a surface of the first dielectric layer (3), the materials of the first and the second dielectric layer differing and hydrogen being embedded into the second dielectric layer.

2.    Method according to claim 1, wherein, for depositing the first dielectric layer, the silicon substrate is firstly flushed with an aluminium-containing compound comprising at least one of the components Al(CH3)3, AlCl3, Al(CH3)2Cl and (CH3)2(C2H5)N:AlH3, so that an aluminium-containing layer is deposited on the surface of the silicon substrate, and wherein the aluminium-containing layer is subsequently oxidised to higher valency in an oxygen-containing atmosphere.

3.    Method according to one of claims 1 or 2, wherein the second dielectric layer comprises a material selected from the group comprising silicon nitride, silicon oxide and silicon carbide.

4.    Method according to one of claims 1 to 3, wherein the second dielectric layer is manufactured by means of a PECVD method.

5.    Method according to one of claims 1 to 4, wherein the second dielectric layer is deposited in such a way that it has a hydrogen content of at least 1 at. %, preferably at least 2 at. % and more preferably at least 5 at. %.

6.    Method according to one of claims 1 to 5, wherein a high-temperature step is carried out at temperatures above 600 °C, preferably above 700 °C and more preferably above 800 °C, after the depositing of the second dielectric layer.

7.    Method according to one of claims 1 to 6, wherein the first dielectric layer is deposited at a thickness of less than 50 nm, preferably less than 30 nm and more preferably less than 10 nm.

8.    Method according to one of claims 1 to 7, wherein the second dielectric layer is deposited at a thickness of more than 50 nm, preferably more than 100 nm and more preferably more than 150 nm.

9.    Solar cell comprising:

a silicon substrate (1);

a first dielectric layer (3) comprising aluminium oxide on a surface of the silicon substrate (1) wherein the first dielectric layer has a thickness of less than 50 nm, preferably less than 30 nm and more preferably less than 10 nm;

a second dielectric layer (5) on a surface of the first dielectric layer (3), the materials of the first and the second dielectric layer differing and hydrogen being embedded into the second dielectric layer.

10.    Solar cell according to claim 9, wherein the first dielectric layer is deposited by means of atomic layer deposition, so that it is substantially atomically tight.

11.    Solar cell according to claim 9 or 10, wherein the second dielectric layer comprises a material selected from the croup comprising silicon nitride, silicon oxide and silicon earbide.

12.    Solar cell according to one of claims 9 to 11, wherein the second dielectric layer has a thickness of more than 50 nm, preferably more than 100 nm and more preferably more than 150 nm.

13.    Solar cell according to any one of claims 9 to 12, wherein the second dielectric layer has a thickness of more than 100 nm.

14.    Solar cell according to any one of claims 9 to 13, further comprising a plurality of metal contacts, wherein the metal contacts pass through the first dielectric later and the second dielectric layer.

15.    Solar cell according to any one of claims 9 to 14, wherein the surface of the silicon substrate is oxidised.

16.    Solar cell according to any one of claims 9 to 15, wherein the surface of the silicon substrate is passivated by hydrogen.

17.    Solar cell according to any one of claims 9 to 16, wherein the first dielectric layer passivates a region of the silicon substrate of conduction type p.

18.    Solar cell according to claim 17, wherein the surface of the silicon substrate is at the back of the solar cell.

19.    Solar cell according to claim 18, wherein the second dielectric layer forms part of a back surface reflector.

20.    Solar cell according to claim 19, wherein the back surface reflector further comprises a metal coating over a back surface of the second dielectric layer.

21.    Solar cell according to any one of claims 9 to 20, wherein the thickness of the first dielectric layer is more than about 2 nm.

22.    13. Solar cell manufactured using a method according to one of the preceding claims 1 to 8.