Federal Court of Australia

MSA 4X4 Accessories Pty Ltd v Clearview Towing Mirrors Pty Ltd (Discovery) [2025] FCA 375

ORDERS

THE COURT NOTES THAT:

In respect of Order 1 below, the following definitions apply:

(a)    Clearview Easy Slide has the meaning given to it in paragraph 5 of the judgment in MSA 4x4 Accessories Pty Ltd v Clearview Towing Mirrors Pty Ltd [2024] FCA 24.

(b)    Document has the same meaning set out in the Federal Court Rules 2011 (Cth) and includes electronic records such as emails, text messages, WhatsApp messages and computer files.

THE COURT ORDERS THAT:

1.    On or before 9 May 2025, the Cross-Claimant give discovery of (by way of a verified list of documents) and produce all Documents recording or evidencing any sales of any Clearview Easy Slide made or sold by the Cross-Claimant from the Clearview Easy Slide’s introduction date until 31 December 2024, broken down on a monthly basis with such Documents to include the name of the customer corresponding to each sale.

2.    Costs be reserved.

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

REASONS FOR JUDGMENT

DOWNES J:

1    By interlocutory application dated 3 April 2025, the Applicants/Cross-Respondents apply for orders that the Respondent/Cross-Claimant give discovery of certain categories of documents.

2    By orders made on 11 April 2025, discovery was ordered albeit in relation to categories which were redrafted during the hearing.  No reasons were sought in relation to these categories.

3    The outstanding category which was not dealt with at the hearing was category 1(a) which was in these terms:

[i]n native format, one or more documents recording or evidencing all sales of any Clearview Easy Slide made or sold by the Cross-Claimant from the Clearview Easy Slide’s introduction date to present date, broken down on a monthly basis, such documents to include the name of the customer corresponding to each sale.

4    For the following reasons, an order will be made in the terms of category 1(a), but which will include an end date of December 2024.

Background

5    The relevant background appears in MSA 4x4 Accessories Pty Ltd v Clearview Towing Mirrors Pty Ltd [2024] FCA 24, especially at [1]–[10] and [337]–[404].  I adopt the defined terms from that decision.

6    By that decision, findings were made that Mr Miles and MSA had made unjustified threats in contravention of s 128 of the Patents Act 1990 (Cth) and that MSA had engaged in misleading or deceptive conduct in contravention of s 18 of the Australian Consumer Law, being Schedule 2 to the Competition and Consumer Act 2010 (Cth), and that Mr Miles was knowingly involved in that conduct.  

7    The proceeding has now reached the relief phase which relates to the damages claim brought by Clearview.  Judicial Registrar O’Connor has been appointed as referee to conduct this phase of the proceeding.  To date, some orders have been made relating to discovery, and the parties have also engaged in informal discovery, relating to the period 1 January 2019 to 31 December 2023.

8    Clearview filed an expert report by Dr Luke Wainscoat on 29 November 2024 which is in aid of its claim for lost profits (the Wainscoat Report).  The Wainscoat Report contains an estimate of lost sales, based on the sales data of both parties from 1 January 2019 to 31 December 2023.  Dr Wainscoat extrapolates Clearview’s counterfactual market share over the period February 2021 to December 2023.

9    Professor Stephen Gray is the independent expert engaged by the MSA and Mr Miles to respond to the Wainscoat Report. Having reviewed that report, Professor Gray requires additional data to complete his responsive report, and he has provided reasons for requesting that data.  That data is reflected in the terms of category 1(a).

Consideration

10    For the following reasons, the order sought will be made with the amendment referred to above.

11    First, by his letter dated 2 April 2025, Professor Gray has articulated reasons why he considers that further data is necessary.

12    Professor Gray has been provided with the Harmonised Expert Witness Code of Conduct to assist in the preparation of his independent expert report.  The Code of Conduct requires experts to make all inquiries which the expert believes are desirable and appropriate, and that no matters of significance which the expert regards as relevant have, to the knowledge of the expert, been withheld from the Court.

13    No expert evidence was adduced to contradict the reasons provided by Professor Gray as to why the identified further data is necessary to enable him to respond to the Wainscoat Report.

14    Secondly, the quantum of damages sought by Clearview is significant, being some millions of dollars.  The significance of the sum of damages sought by Clearview weighs in favour of ordering discovery to enable MSA and Mr Miles to defend such a substantial claim.

15    Thirdly, there is no evidence or suggestion that it would be oppressive to Clearview to provide the documents sought, and the parties indicated that they would agree a confidentiality regime.

16    Finally, although Dr Wainscoat has provided his expert report based on the sales data commencing from 2019 until 2023, Clearview will not be prejudiced by the discovery order.  If Professor Gray provides evidence in any responsive report which is based on the discovered documents which fall outside of that period (which he might not do), then Dr Wainscoat can respond to that in his reply report if he considers it to be necessary.

17    Although the application sought discovery until (in effect) April 2025, December 2024 is an appropriate end date as it is one year after the end of the period which was the subject of discovery by the parties to date.

Costs

18    As there was a mixed result on the discovery application, with many of the categories of discovery sought being recrafted during the hearing, it is appropriate to order that costs be reserved.

Associate:

Dated:    16 April 2025

SCHEDULE OF PARTIES