FEDERAL COURT OF AUSTRALIA

Fortescue Limited v Element Zero Pty Limited (No 3) [2025] FCA 1295

ORDERS

THE COURT ORDERS THAT:

1.    Prayer 1 of the amended interlocutory application filed by the applicants on 19 September 2025 (Amended IA) is dismissed.

2.    The applicants are to pay the respondents’ costs of:

(a)    prayer 1 of the Amended IA; and

(b)    prayers 3 and 3A of the Amended IA.

3.    If any party wishes to apply to vary Order 2(b) that party is to file and serve submissions, not exceeding two pages in length, setting out the nature of and grounds for the variation by 30 October 2025.

4.    The text of the reasons for judgment published today is to be published and disclosed only to the parties and their legal advisors.

5.    By midday AEDT on 27 October 2025 the parties are to confer and to inform the Associate to Markovic J of any redactions that they propose are to be made to the reasons as a result of and in accordance with orders made to date in this proceeding pursuant to s 37AF of the Federal Court of Australia Act 1976 (Cth).

THE COURT NOTES THAT:

6.    The reasons for judgment will be published on 29 October 2025 at 10 am AEDT and any redactions made in the reasons are made in accordance with the orders made to date in this proceeding pursuant to s 37AF of the Federal Court Act.

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

REASONS FOR JUDGMENT

MARKOVIC J:

1 By prayer 1 of an interlocutory application filed on 17 June 2025 (IA) and amended on 19 September 2025 (Amended IA) the applicants, Fortescue Limited, Fortescue Future Industries Pty Ltd and FMG Personnel Services Pty Ltd (together Fortescue), seek an order for leave to inspect the “Listed Things” seized (Seized Material) in executing search orders made on 14 May 2024 pursuant to r 7.42 and r 7.43 of the Federal Court Rules 2011 (Cth) (Search Orders), with such inspection to occur in a form and manner to be notified by the applicants. The “Listed Things” are set out in Schedule A to the Search Orders.

2 The respondents to the proceeding and to the Amended IA are Element Zero Pty Limited, Bartlomiej Piotr Kolodziejczyk and Michael George Masterman as first, second and fourth respondents respectively and Bjorn Winther-Jensen as third respondent.  For ease, I will refer to the first, second and fourth respondents, who are jointly represented, collectively as the EZ respondents and, where applicable to the first, second, third and fourth respondents collectively as the respondents.

3 While the Amended IA in fact seeks five orders, the relief sought in prayer 2 (which challenges claims for legal privilege in documents which have been discovered by the respondents) has been referred to be heard by a different judge, at the hearing of the Amended IA Fortescue abandoned prayers 3 and 3A (which sought further discovery in categories identified in schedules to the Amended IA) and the respondents did not oppose the relief sought in prayer 3B (which concerned redactions to be made to a document which has been discovered by Fortescue) such that an order was made in the terms sought at the conclusion of the hearing of the Amended IA.

4 Thus, these reasons address prayer 1 of the Amended IA.

BACKGROUND

Procedural history

5 The history of the proceeding leading up to the making and execution of the Search Orders and the EZ respondents’ application to discharge those orders (Discharge Application) is set out in Fortescue Ltd v Element Zero Pty Ltd (No 2) [2024] FCA 1157 at [1]-[10] and a summary of Fortescue’s claim as then pleaded is set out in Fortescue (No 2) at [11]-[13].

6 Since the publication of reasons in Fortescue (No 2) and insofar as they are relevant to the resolution of the Amended IA the following further steps have been taken and orders made in this proceeding.

7 On 23 October 2024 Fortescue filed a further amended statement of claim (FASoC).  The summary of Fortescue’s claim in Fortescue (No 2) at [11]-[13] is not materially impacted by reason of the amendments reflected in the FASoC.

8 On 21 November 2024 Fortescue filed an interlocutory application seeking discovery from the respondents (Fortescue’s Discovery IA).

9 On 22 November 2025 Dr Winther-Jensen filed an interlocutory application seeking discovery from Fortescue (Dr WJ’s Discovery IA).

10 On 25 November 2024 the EZ respondents filed an interlocutory application seeking discovery from Fortescue (EZ respondents’ Discovery IA).

11 I will refer to Fortescue’s Discovery IA, Dr WJ’s Discovery IA and the EZ respondents’ Discovery IA collectively as the Discovery Applications.

12 The Discovery Applications were heard over two days on 6 and 20 February 2025.

13 On 26 February 2025 I made orders, among others, requiring the respondents to provide discovery (Discovery Orders) to Fortescue, subject to modification in some cases in 12 of the categories sought in Fortescue’s Discovery IA (Discovery Categories and each one a Discovery Category). Fortescue was unsuccessful in obtaining discovery in four of the categories it sought.  For ease I attach as Annexure A to these reasons a copy of Sch 1 to the Discovery Orders which sets out the Discovery Categories.

14 On 29 April 2025 the EZ respondents filed and served three verified lists of documents (EZ Lists of Documents): one on behalf of Element Zero verified by Dr Kolodziejczyk; one on behalf of Dr Kolodziejczyk which he verified; and one on behalf of Mr Masterman which he verified.  On the same day the EZ respondents produced the non-confidential documents in the EZ Lists of Documents to Fortescue together with a confidentiality undertaking to be signed and returned by its legal representatives.

15 On 30 April 2025 the proceeding was listed for case management hearing.  According to Rebecca Dunn, partner at Gilbert + Tobin with joint carriage of the proceeding on behalf of the EZ respondents, as at that date Fortescue’s lawyers had not accessed the non-confidential documents produced by her clients via Mimecast, the large file sharing system used by Gilbert + Tobin.

16 On 1 May 2025, after receipt of signed confidentiality undertakings, the EZ respondents produced the confidential documents in the EZ Lists of Documents to Fortescue.

17 On 9 May 2025 Davies Collison Cave Law (DCC), the lawyers for Fortescue, sent a letter to Gilbert + Tobin requesting the EZ respondents to provide their discovery in native format and to provide descriptions for each document in parts 2 and 3 of the EZ Lists of Documents.  On 13 May 2025 the EZ respondents provided their discovery in native format.

18 On 19 May 2025 Dr Winther-Jensen filed and served his verified list of documents (Dr WJ’s List of Documents) and on 20 and 30 May 2025 respectively Dr Winther-Jensen produced both the non-confidential and confidential documents in that list.

19 On 13 June 2025 the EZ respondents filed and served supplementary lists of documents which reproduced part 1 of the EZ Lists of Documents and provided additional descriptions of the documents in parts 2 and 3 of those lists.

20 By letter dated and sent on 16 June 2025 DCC first notified Gilbert + Tobin and MinterEllison of alleged deficiencies in their respective clients’ discovery and on 17 June 2025 DCC served the IA. Thereafter, Gilbert + Tobin exchanged correspondence with DCC in relation to the EZ respondents’ claims for privilege in the EZ Lists of Documents.

21 On 19 June 2025 the proceeding was listed for case management hearing.  At the time I made orders leading to a hearing of the IA (now the Amended IA) (19 June Orders).

22 By letters dated 4 July 2025 (First Deficiency Letter) and 14 July 2025 (Second Deficiency Letter) DCC notified the respondents of the alleged deficiencies in their respective discovery.  In all, Fortescue itemised 486 alleged deficiencies in the EZ respondents’ discovery and 50 alleged deficiencies in Dr Winther-Jensen’s discovery. On 24 July 2025 the respondents provided their responses to the First Deficiency Letter and the Second Deficiency Letter.

The EZ respondents’ approach to discovery

23 Ms Dunn has been responsible for the EZ respondents’ discovery.  She provides a summary of the process she caused to be undertaken in relation to the preparation of the EZ Lists of Documents.

24 Ms Dunn gave the following unchallenged evidence:

(1)    first, she caused documents to be searched for and obtained from several sources, including directly from the EZ respondents and the Seized Material;

(2)    once processed, there were approximately 3 million records in the Seized Material on which searches (which Ms Dunn describes) were run.  Where a Discovery Category identified specified documents (for example Discovery Categories 2A(e), 2A(f), 2A(g) and 6), searches for those specific documents were carried out using the Seized Material.  The file names, as well as any folder names and MD5 checksums, where available, were used to conduct searches for specific documents in the Seized Material.  Where it was appropriate to use search terms for a category (for example Discovery Categories 1 and 6A), searches were carried out using search terms Ms Dunn determined to be appropriate which included searches for documents as well as any artefacts of access (such as a Jump List or Link File).  Where Ms Dunn considered it appropriate, in light of the contents of the categories, she caused searches for technical documents to be undertaken across the EZ respondents’ records (for example in Discovery Categories 11, 12 and 13);

(3)    Ms Dunn also caused searches to be undertaken of documents in Mr Masterman’s possession, including his personal devices, relevant to the Discovery Categories.  This was because Mr Masterman was not a recipient of the Search Orders; and

(4)    lawyers at Gilbert + Tobin under Ms Dunn’s supervision, and with her input, reviewed documents using the document review platform known as Relativity.  Ms Dunn personally reviewed the documents to be produced by way of discovery.

25 In all, Ms Dunn says that the EZ respondents’ discovery was a large-scale exercise that required approximately 400-500 hours on the part of Gilbert + Tobin in assisting the EZ respondents to comply with their discovery obligations and in responding to queries raised by Fortescue in relation to that discovery.

26 Ms Dunn has provided a summary of the numbers of documents produced by the EZ respondents in each Discovery Category and gives the following further detailed evidence of the way in which she identified the searches to be undertaken for some of the Discovery Categories, and other steps which were undertaken:

(1)    Discovery Category 1 (research involving Ionic Liquid) – searches were conducted of the Seized Material for documents created between 25 March 2019 and 12 November 2021 containing the words “ionic liquid”, “molten salts”; “eutectics”; “molten hydroxide-based electrolytes”; “molten carbonate-based electrolytes”; “hydroxide alkali melt”; “eutectic melt”; “molten hydroxide eutectic”; “electrowinning”; “electroplating”; “electrolyte”; or “electrochemical reduction process”.  These search terms were identified by Ms Dunn and lawyers working under her supervision based on the definition of the term “Ionic Liquid” in the Discovery Orders;

(2)    Discovery Categories 2A(a) and (b) (documents alleged to have been taken or copied by Dr Kolodziejczyk or Dr Winther-Jensen from Fortescue, and documents said to be copied by Dr Kolodziejczyk while working from home in October and November 2021) – based on the terms of these subcategories, Ms Dunn was of the view that there were no search terms that could be used for the categories. Thus, she caused Dr Kolodziejczyk to search his Gmail account in relation to his work product, and documents in answer to the categories were identified and produced, namely the documents Dr Kolodziejczyk received from and sent to Matthew Roper of Fortescue;

(3)    Discovery Categories 2A(c) and (d) (“Local Drive” documents) – given that the laptop referred to in these subcategories was returned to Fortescue by Dr Kolodziejczyk on his resignation from Fortescue and thus is in Fortescue’s possession, and without a record of the contents of the local drives, Ms Dunn was of the opinion it was not possible to conduct searches by reference to search terms.  Ms Dunn was informed by Dr Kolodziejczyk that he had no recollection of the documents which were stored on the local drives of his Fortescue laptop and no recollection of copying any Fortescue documents from those local drives.  To the extent the local drives contained documents which were saved in the TempSD folder, Ms Dunn refers to the searches undertaken in relation to subcategory 2A(e) (see below);

(4)    Discovery Category 2A(e) (TempSD documents) – the documents in this category, which are documents on the “TempSD” folder of the Fortescue laptop returned by Dr Kolodziejczyk to Fortescue, are identified in a report prepared by Rod McKemmish, an independent computer expert appointed for the purposes of the Search Orders, and the spreadsheet entitled “AU24024 - Chronology of activity” (TempSD spreadsheet) annexed to the affidavit of Adrian Huber, Fortescue’s senior legal counsel, sworn on 1 May 2024.  Ms Dunn caused searches to be undertaken of the Seized Material for the TempSD documents using the TempSD spreadsheet.  Those documents were then manually reviewed by lawyers at Gilbert + Tobin cross-checking documents in the TempSD spreadsheet (for the name and file date) and responsive documents were produced.  Ms Dunn also caused Mr Masterman to review the TempSD spreadsheet and identify any documents within his control;

(5)    Discovery Category 2A(f) (USB documents) – this category seeks documents on two USBs: Toshiba USB device (serial 07080A078F186304) and Kingston USB device (serial 900042ACAE668708).  Mr McKemmish’s report describes documents which were accessed on the Toshiba USB and the Kingston USB from Dr Kolodziejczyk’s computer.  Ms Dunn caused searches to be undertaken of the Seized Material and of Dr Kolodziejczyk’s devices for each of the documents listed in Mr McKemmish’s report.  She also caused Mr Masterman to review the documents described in Mr McKemmish’s report and identify any documents within his control;

(6)    Discovery Category 2A(g) (documents emailed by Dr Winther-Jensen) – as Gilbert + Tobin does not act for Dr Winther-Jensen and has no access to his devices, Ms Dunn caused searches to be undertaken by reference to the documents particularised in [20] of the FASoC (which are also captured under the definition of “First Specified Documents” in Discovery Category 6).  Thus, Ms Dunn relies on the searches she undertook in relation to Discovery Category 6 (see below) in relation to this category;

(7)    Discovery Category 3 (location and storage of documents responsive to Discovery Categories 1 and 2A) – Ms Dunn caused searches of the Seized Material to be undertaken for all emails containing the documents which were identified as responsive to Discovery Categories 1 and 2A.  She says that this is consistent with Fortescue’s intention in seeking Discovery Category 3, as evidenced by its argument on the hearing of the Discovery Applications, and reflects the notation on the Discovery Orders that this category does not require forensic investigation by the EZ respondents;

(8)    Discovery Category 5 (confidentiality of documents responsive to Discovery Categories 1 and 2A) – Ms Dunn caused searches to be undertaken for the term “confidential” within any of the documents identified as being responsive to Discovery Categories 1 and 2A.  Ms Dunn manually reviewed each of the documents which were identified as using the term “confidential” and determined whether they referred to the confidentiality of documents referred to in Discovery Categories 1 and 2A;

(9)    Discovery Category 6 (First Specified Documents) – Ms Dunn caused searches of the Seized Material and of Mr Masterman’s personal devices to be undertaken for the 106 documents identified by Fortescue as “First Specified Documents”.  One relevant document was identified, being an excel spreadsheet entitled “Ore Composition After Drying”;

(10)    Discovery Category 6A (Fortescue plant documents) – Ms Dunn caused searches to be undertaken of the Seized Material for any document containing the words “Fortescue” and “plant” during the relevant period, which she identified as broad search terms that would produce any documents responsive to the category.  Ms Dunn manually reviewed all documents which contained those words and determined whether they were relevant to Discovery Category 6A.  In addition, Dr Kolodziejczyk and Mr Masterman informed Ms Dunn that they did not have any documents in their possession, custody or control falling within Discovery Category 6A, and that they did not recall taking or copying any such documents when employed by Fortescue.  No documents falling under Discovery Category 6A were identified;

(11)    Discovery Categories 7 and 8 (Second Specified Documents and use or disclosure) – there was one document to produce in answer to Discovery Category 6 (see above).  According to Ms Dunn, the searches of the Seized Material undertaken for the First Specified Documents would also have returned results for documents referring to any of the First Specified Documents contained in the Seized Material (such as a version of the document which was saved in a different location or an email attaching that document).  Ms Dunn says that no documents or access artefacts which referred to the spreadsheet “Ore Composition After Drying” were identified;

(12)    Discovery Categories 11(a), (b) and (f) (plant and process documents) – Ms Dunn caused searches to be undertaken of the EZ respondents’ records for basis of design documents, or any documents describing the design of Element Zero’s trial and pilot plants, piping and instrumentation documents and documents recording the research and development of the Element Zero process;

(13)    Discovery Category 11(c) (laboratory books) – Ms Dunn explains that all laboratory books which were seized during execution of the Search Orders were produced by the EZ respondents.  Dr Kolodziejczyk informed Ms Dunn that there were no further laboratory books to produce and that he does not, and did not, use a laboratory book;

(14)    Discovery Category 11(d) (documents provided to Playground Ventures) – Ms Dunn caused emails to or from the playground.global domain and Element Zero addresses to be extracted from the Seized Materials.  She also caused searches to be conducted of Mr Masterman’s personal devices and of Element Zero’s data room, which contained documents provided to Playground Global during due diligence.  Those documents were then manually reviewed by lawyers at Gilbert + Tobin and responsive documents were produced;

(15)    Discovery Category 11(e) (documents recording Dr Winther-Jensen’s “retirement project” and other matters referred to in his affidavit affirmed 8 July 2024 (Dr Winther-Jensen’s 8 July Affidavit) – Ms Dunn explains that Gilbert + Tobin does not act for Dr Winther-Jensen and thus she was not able to obtain instructions from him in relation to Discovery Category 11(e).  She observed that there appeared to be a
cross-over between Discovery Categories 11(e) and 11(f) and took the view that, to the extent the EZ respondents had documents in their control relevant to the Element Zero process (which could also have been relevant to the retirement project), they would be produced under Discovery Category 11(f);

(16)    Discovery Category 12 (expenditure on pilot or trial plants) – Ms Dunn notes that two documents were produced under this Discovery Category.  Ms Dunn caused Melissa Gravina, Element Zero’s corporate and finance operations manager, to prepare these from information extracted from Element Zero’s accounting system;

(17)    Discovery Category 13 (patents and patent applications) – Ms Dunn explains that the EZ respondents produced copies of all patent applications and patents in which Dr Kolodziejczyk was named as an inventor that he worked on since 2019.  Ms Dunn obtained copies of the final patents from Dr Carolyn Rolls from Oxygene IP (Element Zero’s patent attorney).  The EZ respondents produced five documents in Part 1 of the EZ Lists of Documents and 25 documents in Part 2 of the EZ Lists of Documents, being documents which are the subject of patent attorney privilege; and

(18)    Discovery Category 14 (use of documents in Discovery Categories 1, 2A, 6 and/or 7) – based on Ms Dunn’s review of the categories and her understanding of the searches conducted over the Seized Material, Ms Dunn formed the view that the searches for Discovery Categories 1, 2A, 3, 6, 7 and 8 would have caught any use of the documents in Discovery Categories 1, 2A, 6 and/or 7 in answer to this Discovery Category.  Ms Dunn was informed by Dr Kolodziejczyk that none of the documents produced in answer to Discovery Categories 1, 2A or 6 were used for preparing or inventing any of the patents or patent applications (noting no documents were produced in answer to Discovery Category 7).

Dr Winther-Jensen’s approach to discovery

27 Michael Geoffrey Hales, a partner of MinterEllison with carriage of the proceeding on behalf of Dr Winther-Jensen, gives evidence about the steps taken by his firm on behalf of Dr Winther-Jensen and by Dr Winther-Jensen in providing discovery.  In particular as part of that process:

(1)    532,915 documents were searched using technology;

(2)    7,557 documents were then reviewed personally;

(3)    Dr Winther-Jensen reviewed the proposed discovery; and

(4)    Dr Winther-Jensen produced 2,525 documents for inspection (including 13 documents in response to alleged deficiencies identified by DCC after Dr WJ’s List of Documents was served).

28 In terms of time spent, Mr Hales says that MinterEllison spent approximately 360 hours on the discovery exercise up to inspection of the documents and has spent approximately 90 additional hours responding to issues raised by Fortescue in relation to Dr Winther-Jensen’s discovery.

The alleged deficiencies in the respondents’ discovery

29 Paul Alexander Dewar, a principal of DCC with the conduct of the proceeding on behalf of Fortescue, gives evidence about the alleged deficiencies in the respondents’ discovery.  Ms Dunn and Mr Hales respond to that evidence.  Combined, their evidence is extensive, and, to the extent it is necessary to consider it, it is set out below in considering the alleged inadequacies in discovery in the nominated Discovery Categories.

30 In short, the parties are at odds in relation to whether there are any deficiencies as alleged or, at the very least the extent of those deficiencies (in some cases the respondents have reviewed the material and provided further discovery in response to an issue raised by Fortescue) and whether, to the extent there are or were deficiencies (which have now been remedied) they are of the nature that would permit Fortescue to have access to the Listed Things in the Seized Material as sought in prayer 1 of the Amended IA.

DR JACOBSEN’S AFFIDAVIT

31 In support of the Amended IA Fortescue also sought to rely on an affidavit affirmed on 20 August 2025 by Dr Grant Jacobsen which was served on the same date.  While there was a dispute about the date by which the Dr Jacobsen’s affidavit was to be served, there was no dispute that it was served late and that Fortescue required leave to rely on it.

32 The respondents opposed the grant of leave.  Because of the nature of Dr Jacobsen’s evidence, I heard argument and determined the question of leave prior to the hearing of the Amended IA.  I set out below my reasons for declining to grant leave to Fortescue to rely on Dr Jacobsen’s affidavit.

33 Dr Jacobsen is an inorganic chemist and an Australian patent attorney.  From 1987 to 2001 he was employed by The Dow Chemical Company and from 2001 to 2006 he worked for BP Chemicals in fundamental chemistry and chemical process research and development (R&D) roles.  In 2007 he commenced work as a trainee patent attorney and completed a masters of intellectual property law in 2012.  From 2017 to 2023 Dr Jacobsen was a principal at Watermark Patent & Trade Mark Attorneys which merged into Griffith Hack and then FPA Patent Attorneys.  Since 2023 he has practised as a consultant at FPA.

34 Dr Jacobsen’s affidavit comprised 69 pages (267 paragraphs) and the annexures to it comprised a further 850 pages.  In broad terms in his affidavit Dr Jacobsen:

(1)    described (in part B) the nature of chemical R&D projects, record keeping practices of chemists when conducting chemical R&D and of chemical R&D organisations generally and the records a patent attorney would generally expect to receive from a client when drafting the specification for a patent application, including a provisional application, concerning a chemical process;

(2)    considered (in part C) the respondents’ R&D undertaken in the period 1 January 2022 to 20 October 2022 as follows:

(a)    provided an explanation of electrochemistry,

(b)    considered what the documents discovered by the respondents in relation to Discovery Categories 11(c), (e) and (f) for the period 1 January 2022 to 20 October 2022 (pre-provisional documents) disclose about the work undertaken on a chemical R&D project (CR&D project) he was instructed was undertaken by the respondents, or some of them (EZ CR&D project) prior to the filing of the 2022 Provisional Application no AU 2022903090 disclose;

(c)    considered whether the record keeping evident from the pre-provisional documents is what he would expect for a CR&D project; and

(d)    considered whether the pre-provisional documents appeared to be a complete record of the work he would expect to have been undertaken and recorded on the EZ CR&D project during the pre-provisional period (which is the period prior to the filing of the 2022 Provisional) and, if not, whether he considered that there would be additional documents recording the EZ CR&D project during the pre-provisional period;

(3)    considered (in part D) whether the examples in the 2022 Provisional reflect the experiments recorded in the pre-provisional documents;

(4)    commented (in part E) on whether the documents discovered by the EZ respondents and Dr Winther-Jensen recording R&D conducted in 2022 were consistent with the documents he would expect to have been created and kept during the initial period of R&D into the Element Zero process (or what would become the Element Zero process);

(5)    considered (in Part F) documents discovered by the respondents in relation to Discovery Categories 11(c), (e) and (f) during the period 21 October 2022 to 19 October 2023, the specification of the 2023 Provisional Application no AU 2023902103 and the PCT patent application no WO 2024/082020 and provided his opinion in relation to:

(a)    whether examples 1-3, 6 and 8-10 of the PCT were taken from the material recorded in the documents; and

(b)    whether examples 2-3 of the 2023 Provisional were taken from the material recorded in the documents; and

(6)    explained (in part G) in relation to experiments or data referred to in specific documents included in an additional bundle of documents provided by Fortescue’s solicitors to him:

(a)    his understanding of the experiments or data in the specific documents to the extent they contained matters relevant to his expertise;

(b)    whether, in view of the experiments or data referred to in the documents, he would expect other experimental records to exist and be in possession of the respondents;

(c)    where the answer was yes, what information he would expect those other experimental records would contain; and

(d)    whether he would consider those other experimental records to be documents recording R&D of the EZ CR&D project and process and, if so, why.

35 The EZ respondents contended that, because of its nature and its late service, Fortescue required leave to rely on Dr Jacobsen’s affidavit.  In short, they argued that Fortescue should not be granted leave to rely on Dr Jacobsen’s affidavit at the hearing of the Amended IA for two interrelated reasons.  First, because it is in truth an expert’s report which, in turn, gives rise to the capacity of the Court in regulating proceedings before it not to permit reliance on evidence where to do so would disrupt the hearing or which do not accord with general case management considerations.  Secondly, because Dr Jacobsen’s affidavit was served late, at the time of its service the respondents had two weeks under the existing Court timetable to prepare and file any evidence in reply and, even if the timetable was extended, the respondents would not be in a position to prepare evidence in response to Dr Jacobsen’s evidence.

36 Fortescue submitted that leave ought to be granted.  It submitted that Dr Jacobsen’s evidence is relevant if it “could rationally affect (directly or indirectly) the assessment of the probability of the existence of” other relevant documents, referring to s 55(1) of the Evidence Act 1995 (Cth).  It submitted that it is necessary to understand the scientific content of Element Zero’s patents and other discovered documents in order to engage with their contentions about the deficiencies in the respondents’ discovery, a proper understanding of these documents requires knowledge of chemistry, especially electrochemistry, and it is commonplace and appropriate for the Court to derive assistance from expert evidence from a person skilled in the relevant art to understand what these documents disclose, including whether they admit the existence of other relevant documents.  Fortescue submitted that Dr Jacobsen’s affidavit sought to assist the Court in that task.

37 In both its written and oral submissions, Fortescue referred to parts of Dr Jacobsen’s affidavit.  Among other things Fortescue submitted, by reference to the PCT application and the priority date claimed therein, that the process of invention the subject of the PCT must have been complete by 20 October 2022, the date on which the 2022 Provisional was filed.  It said that a central factual inquiry for the trial is whether the respondents’ contention that all of their R&D undertaken to get to their invention the subject of the PCT took place between July and October 2022 is correct.

38 Fortescue submitted that at the heart of their application (as framed in the Amended IA) is that an examination of the experiments disclosed in the PCT shows significant gaps in the documents discovered to date and Dr Jacobsen’s evidence assists the Court to understand the nature of the experiments undertaken and to identify where records of those experiments do or do not exist in the discovered documents.

39 Fortescue next submitted that Dr Jacobsen is an experienced industrial chemist, with a PhD in electrochemistry, 24 years of postdoctoral R&D experience in academy and industry between 1982 and 2006 and 18 years experience as a patent attorney.  It submitted that the respondents could not seriously argue that Dr Jacobsen is not qualified to explain what is disclosed in the discovered R&D documents and whether what is disclosed supports the existence of other documents or that Dr Jacobsen is not a “person skilled in the art” for the purpose of reading the 2022 Provisional, the PCT and the 2023 Provisional.

40 Finally, Fortescue submitted that the probative value of Dr Jacobsen’s evidence outweighed any prejudice to the respondents or time taken up by the affidavit.  It contended that the respondents made a bare assertion of prejudice but that Dr Jacobsen’s affidavit was served 35 calendar days before the hearing of the Amended IA, well beyond the usual time required under the Rules for evidence in support of an interlocutory application or even summary judgment, no real prejudice arose from the fact it was filed six calendar days after the due date agreed between the parties (there was a dispute as to whether any such agreement was in fact reached but it was not necessary for me to resolve that dispute) and, in any event, the respondents refused the offer for an extension of time.  Fortescue submitted that if there was any good reason for Dr Winther-Jensen or Professor Abbott, who have comparable experience in electrochemistry to Dr Jacobsen, to contradict Dr Jacobsen’s evidence as to what is disclosed by the respondents’ discovered documents and patents, they have had ample time to do so.

41 In relation to the length of Dr Jacobsen’s affidavit, Fortescue submitted that, except for GPN-EXPT, his CV, the patents and a table of document dates, all other annexures to his affidavit are the respondents’ own discovery to which he refers to explain his opinions.

42 Fortescue submitted that the just resolution of the dispute over prayer 1 of the Amended IA favoured admission of Dr Jacobsen’s affidavit which helps the Court understand what is disclosed in the documents discovered and whether what is disclosed admits the existence of other documents.  It contended that requiring the Court to undertake this analysis without the assistance of Dr Jacobsen’s expert electrochemical evidence, by reference only to the bare documents and patents, would be an inefficient use of the Court’s resources and contrary to the just determination of the proceeding according to law under s 37M of the Federal Court of Australia Act 1976 (Cth) (FCA Act).

43 In Comcare v John Holland Rail Pty Ltd (No 5) (2011) 195 FCR 43; 283 ALR 111; [2011] FCA 622 Bromberg J considered whether the Court should grant leave to call a particular witness (Mr Rozen).  The facts of that case were different to those before me in that the intention to call Mr Rozen (who was in fact counsel for the applicant in the case) only arose during the trial.  However, his Honour set out a summary of legal principles which underpinned the application for leave to call the proposed witness in that case and in doing so addressed submissions put by the respondents, John Holland Rail Pty Ltd and John Holland Pty Ltd (together John Holland), about the Court’s power to restrict the evidence sought to be adduced by a party to a proceeding.  Justice Bromberg rejected John Holland’s submissions relevantly saying at [19] and [21]-[22]:

[19]    I reject each of those submissions. They suggest that a party has a right to conduct its case in the manner it sees fit to the exclusion of a court’s power to prevent the misuse of its procedures. Parties have the right to invoke the jurisdiction and powers of the court in order to seek a resolution of their dispute: Aon Risk Services Australia Ltd v Australian National University (2009) 239 CLR 175; 258 ALR 14; [2009] HCA 27 at [96] (Aon). Just as there is no right given to a party to amend its pleadings at will (Aon at [96]), the capacity to call a witness or adduce other evidence may be regulated by the court’s power to control and supervise the proceeding and the requirement upon the court that it take into account case management considerations, including those required by s 37M of Federal Court of Australia Act 1976 (Cth) (“the Federal Court Act”).

…

[21]    The Court’s inherent power to supervise and control the proceeding, including so as to avoid an abuse of process, is also a basis upon which the Court can determine an application such as this. Courts have an inherent power to prevent misuse of their procedures in a way which would avoid unfairness to a party to the litigation or would otherwise bring the administration of justice into disrepute: Aon at [33]. Case management considerations may have a role to play in a court determining whether leave should be given to a party to call a witness, particularly where the calling of the witness is out of step with procedural orders previously made and threatens to disrupt the trial. Attorney-General of Botswana v Aussie Diamond Productions Pty Ltd (No 2) [2009] WASC 301 (Attorney-General of Botswana) per Murphy J and Clifford v Vegas Enterprises Pty Ltd (No 4) [2010] FCA 326 (Clifford) per Barker J are both instances of a court exercising its inherent power to supervise and control the proceeding before it. In both cases the court took into account case management considerations in the context of a late application to call a witness in disconformity with prior procedural orders. Both of those judgments refer to and rely upon Aon and, in Clifford, upon s 37M of the Federal Court Act.

[22]    What is required by s 37M is the facilitation of the “just resolution” of the dispute. The just resolution of a dispute does not require that a party be permitted to raise any arguable case at any point of the proceedings: Aon at [98]. Similarly, the just resolution of a dispute does not require a court to permit a party to call a witness at any point in the proceedings. As the judgment in Aon makes abundantly clear, the discretion to be exercised by the court in dealing with the procedural issues raised by a proceeding requires that the need for a “just resolution” be understood in light of the purposes and objectives of a provision such as s 37M of the Federal Court Act: Aon at [98].

44 At [25] of Comcare Bromberg J observed that whether a party should be entitled to adduce the additional evidence could be assessed by examining whether a legitimate forensic purpose exists for the calling of the evidence and, if so, the likely importance of the evidence to the determination of the proceeding.  His Honour went on to note, by reference to the decision in Aon Risk Services Australia Ltd v Australian National University (2009) 239 CLR 175; 258 ALR 14; [2009] HCA 27, that, even if importance can be demonstrated, a balancing exercise which takes into account the cost, delay and prejudice to the other party in the context of the litigation as it stands at the time must be undertaken.

45 Here, the relevance of Dr Jacobsen’s evidence was to be assessed against the test which at the time of argument (albeit not at the time of the hearing of the Amended IA),  the parties agreed was to be applied to the question of whether discovery is inadequate as stated in Procter v Kalivis [2009] FCA 1518; (2009) 263 ALR 461 at [33], namely that there are reasonable grounds for being fairly certain that there are other relevant documents.

46 Dr Jacobsen’s evidence goes no higher than to express his opinion that certain documents which he would expect to see recording experiments referred to in, for example, the PCT are not in the bundle of documents provided to him.  His expectation of the types of documents he would expect to see is assessed against his experience working for Dow and BP, two large companies, as opposed to, relevantly, a start-up.

47 Further, in Procter Besanko J recognised (at [34]) there are limits to the material that a court can consider in determining the sufficiency of an affidavit of discovery (and it follows the discovery given).  His Honour referred to Mulley v Manifold (1959) 103 CLR 341 where, among other things, Menzies J said (at 343) that insufficiency in discovery could not be shown by a “contentious affidavit” (see [71] below).

48 Dr Jacobsen’s evidence is speculative and arguably contentious.  He does not express a view that a document exists which has not been discovered because it is referred to in another document which has been discovered.  Rather he points to the 2023 Provisional and the PCT to say that certain experiments are described therein which in his view are not described in the material discovered and that, by way of example, in his view “it is reasonable to assume that other records of the R&D that Dr Winther-Jensen conducted into the Element Zero process … in 2022 exist beyond what has been discovered”.  Dr Jacobsen’s affidavit is replete with similar speculative conclusions.

49 Evidence of that nature is of very little, if any, assistance in determining whether there are reasonable grounds for being fairly certain that there are other relevant documents that should have been discovered by the respondents.

50 In addition, Dr Winther-Jensen has previously given evidence in the proceeding that when he resigned from Fortescue, it was his intention to retire to pursue matters for his personal intellectual curiosity and enjoyment.  It was within that prism that he says he created, as a “retirement project” in his garage, the Element Zero process.  It was not and is not necessary for me to form a view as to the veracity of that evidence for present purposes.  It is sufficient simply to note that that evidence was not provided to Dr Jacobsen.  Had it been, it is unclear the impact, if any, that it may have had on his expectation as to the existence of certain documents.  That further diminishes the utility of Dr Jacobsen’s evidence to the determination of the Amended IA.

51 As Dr Winther-Jensen submitted, Dr Jacobsen’s evidence implicitly invites him to detail the work that he undertook in devising the Element Zero process in order to explain why documents that Dr Jacobsen would expect to exist do not.  Clearly, that is a matter for determination at final hearing.

52 On the other hand, the countervailing considerations of cost, delay and prejudice were acute and outweighed any potential relevance of Dr Jacobsen’s affidavit: first, the respondents would need to consider whether to file evidence in reply to Dr Jacobsen’s affidavit and would need time to do so.  The consideration of that factor and the preparation of any evidence in reply, should they choose to do so, would have necessitated vacation of the hearing date for the Amended IA which was allocated on 19 June 2025; secondly, even if the respondents, after consideration of Dr Jacobsen’s evidence, determined not to file evidence in reply, the likelihood is that with the addition of that evidence, including any successful application to cross-examine Dr Jacobsen, the hearing of the Amended IA could not be complete in the one day allocated which would not only cause delay but add to the parties’ costs; thirdly, the costs and delay that would be occasioned if Fortescue was given leave to rely on Dr Jacobsen’s evidence would be disproportionate to the issues in dispute on the Amended IA; fourthly, the proceeding is set down for hearing commencing on 25 May 2026.  The dates for hearing have been provisionally allocated since 30 April 2025.  Any delay in resolving outstanding issues in relation discovery would likely jeopardise the hearing; fifthly, it is not consistent with s 37M and s 37N of the FCA Act to permit an adjournment, particularly in circumstances where the evidence sought to be relied on is, at best, of marginal assistance to a resolution of the issues to be determined on the Amended IA and where the parties have been on notice of the need to resolve outstanding discovery issues as efficiently as possible for some time; and sixthly, Dr Jacobsen’s evidence raises various issues which are in reality matters for final hearing.

STATUTORY FRAMEWORK AND LEGAL PRINCIPLES

53 Section 23 of the FCA Act confers a broad power on the Court “in relation to matters in which it has jurisdiction, to make orders of such kinds, including interlocutory orders, and to issue, or direct the issue of, writs of such kinds, as the Court thinks appropriate”.

54 There was no dispute that s 23 of the FCA Act empowers the Court to make an order for access to, or inspection of, material seized under a search order made under r 7.42 of the Rules. However, the parties were not agreed on the test to apply when considering whether, after discovery has been provided by the party the subject of a search order, an order should be made to access the material seized pursuant to the search order.

55 Fortescue contends that the relief sought in prayer 1 of the Amended IA is not a discovery application and that the relevant test to apply in determining whether access should be granted to the seized material is whether there is “material that cast[s] doubt on the adequacy of the discovery that has actually been given”, citing Rauland Australia Pty Ltd v Johnson (No 2) [2019] FCA 1175 at [53] (Stewart J).  The respondents do not agree.  They submit that the relevant test for determining whether access should be granted to all of the material seized pursuant to a search order is the more stringent test of whether there are reasonable grounds for being fairly certain that there are other relevant documents which have not been discovered, referring to Procter at [33].

56 In order to resolve the question, it is necessary to examine both those authorities which consider when a court will grant access to material seized pursuant to a search order and those which consider the circumstances in which a court will order further and better discovery.

57 The analysis begins with Metso Minerals (Australia) Ltd v Kalra (No 3) [2008] FCA 1201.  In that case there were three notices of motion before the Court for resolution.  The issues to be resolved by the notices of motion were summarised by Flick J at [2] as follows:

(a)    whether there should be any continued inspection and access to the materials seized in December 2007 pursuant to the O 25B order; and, if so

(b)    upon what terms.

58 The “O 25B order” referred to by his Honour was a search order made ex parte pursuant to O 25B of the Federal Court Rules 1979 (Cth) (repealed) (Former Rules) in December 2007 (see Metso Minerals v Kalra [2007] FCA 2093) and subsequently varied against the first to fourth respondents (see Metso Minerals (Australia) Ltd v Kalra (No 2) [2007] FCA 2108) (Metso search order): Metso (No 3) at [3]-[6].

59 By the time of the hearing of the notices of motion, the applicants’ solicitors had inspected the seized documents and, as a result, had been able to identify a number of documents relevant to the causes of action to be relied upon and to verify that some documents seized were not relevant and should be returned: Metso (No 3) at [10].  Against that background, Flick J had to resolve the parameters of any further inspection to be permitted and upon what terms.  At [21] Flick J observed that the applicants’ purpose in wanting to continue to access the seized materials was “as an aid to the discovery process and in order to be able to further particularise their claims” and, “[a]lthough not expressed in these terms, the application [was] presumably an application for leave to inspect (or to continue to inspect) the documents as envisaged by Practice Note 24” (which was the practice note in force at the time).

60 The respondents opposed the application and submitted that to permit continued access for the purposes identified by the applicants was “not authorised or, (alternatively) as a matter of discretion, should not be permitted” and was “inconsistent with principle”: Metso (No 3) at [22].

61 At [24] Flick J observed that the determination of the ambit of the Court’s discretion to grant leave to an applicant to inspect material seized pursuant to a search order, and the way in which that discretion is to be exercised, must necessarily start with an acknowledgment of the extraordinary nature of the relief which may be granted by the Court pursuant to, at that time, O 25B.  In that regard, at [25] his Honour referred to Microsoft Corp v Goodview Electronics Pty Ltd [1999] FCA 754 at [9], 46 IPR 159 at 161 where Branson J cited with approval the following observations of Powell JA (with whom Meagher and Handley JJA agreed) in Long v Specifier Publications Pty Ltd (1998) 44 NSWLR 545 at 547:

Reduced to its essentials, an Anton Piller order is an order that the defendant to whom, or to which, it is directed, should permit the persons specified in the order to enter upon his, or its, premises, and to inspect, take copies of, and to remove, specified material, or classes of material, indicating, where appropriate, documents, articles or other forms of property. It is an extraordinary remedy, designed to obtain, and to preserve, vital evidence pending the final determination of the plaintiff’s claim in the proceedings, in a case in which it can be shown that there is a high risk that, if forewarned, the defendant, would destroy, or hide, the evidence, or cause it to be removed from the jurisdiction of the court. For this reason, such orders are invariably made ex parte.

His Honour also noted that Branson J went on to observe in Microsoft Corp at [26]:

The court must, in my view, be careful to avoid the extraordinary jurisdiction of the court to make an Anton Piller order from being subverted to a mere investigatory tool for applicants or indeed, from being used for any purpose other than the preservation of vital evidence pending the hearing and determination of a proceeding.

62 Justice Flick observed that, while the parties accepted that leave may be granted to the applicants to inspect the seized documents, beyond their high level submissions, they had not identified the consideration relevant to the exercise of the discretion to do so.  That being so, his Honour held (at [28]) that the discretion to allow an applicant to inspect seized documents may be exercised to permit:

(a)    an assessment to be made as to whether or not there has been compliance with the order as made and (possibly) whether any further order pursuant to O 25B may be warranted;

(b)    the identification and separation from the entirety of those documents that were in fact seized, those documents which do or may provide evidence pending the hearing and determination of a proceeding; and

(c)    the identification and separation from the entirety of those documents that were in fact seized, those documents which do not provide such evidence so that those documents may be returned.

And, in identifying those documents which should be preserved pending the final hearing and determination of a proceeding:

(d)    the search is not limited to those documents directly related to the precise cause of action then known: cf Aristocrat Technologies Australia Pty Ltd v Global Gaming Pty Ltd [2006] FCA 862 at [6]–[7] per Allsop J; Aristocrat Technologies Australia Pty Ltd v Global Gaming Supplies Pty Ltd [2006] FCA 1707 at [4] per Jacobson J.

There may well be other reasons for granting leave to an applicant to inspect seized documents. All of the purposes identified, however, have one thing in common — they allow the documents which have been seized to be inspected in order to ensure that the search order has been complied with and to ensure that only evidence which should be preserved is in fact preserved pending the final determination of a proceeding.

63 Justice Flick then returned to the issue before him, namely whether a review of the seized material could proceed in tandem with, and as an adjunct to, discovery and as an aid to the provision of particulars.  His Honour concluded that this was not a course which was either permitted by the Court’s rules or, even if permitted, was one which as a matter of discretion should be endorsed in the circumstances of the proceeding: Metso (No 3) at [29]-[31].

64 His Honour next considered the limits of the discretion.  After referring to the primary object and purpose of O 25B as the preservation of evidence pending final determination of a proceeding, Flick J said that in his view it was no part of the object or purpose of the relevant rules of Court to facilitate the discovery processes otherwise authorised by the Former Rules or to facilitate the provision of further particulars Metso (No 3) at [32]-[34].  His Honour relevantly observed at [34] that:

To construe those provisions as extending to such a purpose would erode both the importance attached by the common law to protecting the privacy of individuals and the constraints otherwise imposed by the Rules upon the discovery process.

His Honour set out in further detail his reasons for forming that view.

65 Metso (No 3) was considered by Besanko J in Lamond (No 4) [2017] FCA 820 in which the applicant, Mr Lamond, sought and obtained urgent relief before the start of the proceeding in the form of search orders.  After the search orders were executed, the parties agreed, and orders were made by consent, for access to the seized materials.  By interlocutory application Mr Lamond sought orders for production of certain categories of documents organised under various headings, including orders for “[a]dditional searches of seized electronic material”, which were opposed.  In addressing that category of relief, Besanko J held that, in light of Metso (No 3), the orders sought should be refused.  At [20]-[21] his Honour said:

20    As I said, it seems to me that access to the documents is sought for the purposes of gathering evidence for use in the winding up proceeding or the proposed proceeding. It is not sought for the purposes identified by Flick J in paragraph 28 of Metso Minerals. The documents are being sought as substitute for discovery or in tandem with, or as an adjunct to, the discovery process. As Flick J said in Metso Minerals, this course is not permitted (at [36], [43] and [49]).

21    Even if that is not correct, I would exercise my discretion to refuse the orders sought for the following reasons:

(1)    by consent, there has already been substantial access to the seized materials;

(2)    there has been sufficient access to the seized materials by Mr Lamond to enable him to draw a detailed proposed statement of claim in SAD 93 of 2017;

(3)    should the company be wound up, the proposed proceeding may never be brought, or never brought in the form in which it now appears; and

(4)    if, as I consider to be the case, the real purpose of the further access orders is to collect evidence in connection with the winding up proceeding and application for leave under s 237 of the Corporations Act, then Mr Lamond should use such discovery and disclosure procedures as are available to him in those proceedings, rather than possibly wider “discovery” or “disclosure” by an order for access to the seized materials.

66 The issue for resolution in Findex Group Ltd v iiNet Ltd [2018] NSWSC 1567 was whether the plaintiffs should be permitted to have access to documents obtained quite some time prior on the execution of a search order made by another judge of the Supreme Court of New South Wales.  In that case there had been earlier inspection of the relevant documents pursuant to a confidentiality regime but further access was sought to enable the plaintiffs’ lawyers to obtain proper instructions in relation to what was described as a “broad array” of potential causes of action against the fourth defendant: Findex at [3].

67 After referring to the nature of the power to grant a search order Ward CJ in Eq (as her Honour then was) said at [120]-[123] (emphasis added):

120    The ambit of the discretion of the Court to grant leave to an applicant to inspect seized documents, and the manner in which that discretion is to be exercised, was set out in Metso Minerals at [24]-[28] by Flick J (which, as noted, was approved by Besanko J in Lamond (No 4) [19]-[20]), as set out earlier.

121    In Metso Minerals, Flick J considered, inter alia, an application for discovery in respect of documents which had been previously seized pursuant to a search order. While his Honour was dealing with the rules relating to search orders contained in the Federal Court Rules 1979 (Cth) (O 25B and Practice Note 24) (now, Federal Court Rules 2011 (Cth) rr 7.42, 7.43), they are in identical terms to UCPR r 25.19 and Practice Note SC Gen 13. Indeed, the procedure in relation to search orders is now the subject of harmonised rules across Australia.

122    Taking into account the “extraordinary” nature of relief granted in the form of a search order, Flick J (at [28]) considered that the discretion to allow an applicant to inspect seized documents is to be exercised in order: to ensure that the search order has been complied with; and to ensure that only evidence which should be preserved is in fact preserved pending the final determination of the hearing. His Honour emphasised (at [36]) that access to documents seized pursuant to a search order “should be confined to the purpose for which that power was conferred”.

123    The plaintiffs maintain (see T 11.15) that the purpose of the search order was that of “obtaining documents for use in anticipated proceedings including, but not limited to, the proceedings of the kind that were identified at the time” and that this purpose will not be fulfilled “until the plaintiffs have looked at the documents”. That, to my mind, conflates the purpose of preserving evidence (for use in anticipated proceedings) and the function of inspection of that material (as to which it is clear there is no absolute right). It is not a purpose or object of search order provisions to facilitate discovery processes otherwise authorised by rules or to facilitate the provision of further particulars. In Metso Minerals at [34], Flick J warned that construing search order provisions as extending to such a purpose would erode the importance attached by the common law to protecting the privacy of individuals and the constraints otherwise imposed by the rules governing discovery process.

68 At [129] and [131] Ward CJ in Eq continued:

129    As Flick J emphasised in Metso Minerals at [49], to enable a party to obtain a search order and thereafter permit the party to “rummage through” the seized documents in order to make an assessment as to those documents which that party considers would be or should be discoverable, extends beyond the purpose for which a search order is made and defeats the perimeters within which discovery is to be made by a party.

…

131    In light of the above principles, it is clear that if I were to accede to the plaintiffs’ application for access to the seized documents for the purpose of facilitating discovery or of ascertaining what other potential causes of action they or any of them may have against the fourth defendant (relevantly, a purpose which is different to the purpose which the search order was originally granted to assist and different from the accepted purpose of search orders) it would be endorsing an approach that courts have consistently rejected.  That is, it would be allowing the “extraordinary” nature of relief granted pursuant to UCPR r 25.19 to be subverted to an investigatory tool.

69 Her Honour dismissed the application.  An application for leave to appeal from Findex was dismissed: see Findex Group Ltd v McKay [2019] NSWCA 93 (Findex Appeal).  In doing so Basten JA (with whom Sackville and Emmett AJJA agreed) observed at [26] that, as the primary judge had correctly accepted, the purpose of a search order pursuant to r 25.19 of the Uniform Civil Procedure Rules 2005 (NSW) is to secure or preserve evidence, not to provide discovery, whether at a preliminary stage or in the course of proceedings.  His Honour continued:

… Counsel for the applicants was at pains to avoid reference for this purpose to the terms of r 25.19. It provided, he submitted, no guidance as to what was to be done with the documents once seized in terms of access and inspection. That is only true to the extent that one finds no assistance from the express identification of the purpose of a search order. Having regard to that purpose provides an implied constraint on the use which is to be made of the seized documents. …

70 Also relevant to a resolution of the question of the applicable test and ultimately the determination of prayer 1 of the Amended IA is the test to be applied when a party seeks further and better discovery.

71 Procter concerned an application for preliminary discovery under O 15A r 6 of the Former Rules.  After discovery was given, among other things, the applicants sought leave to cross-examine the deponents of the affidavits verifying the discovery and further and better discovery in identified categories.  Commencing at [29] Besanko J referred to authorities which identified the grounds on which affidavits of discovery can be challenged.  His Honour relevantly observed at [31]-[34]:

31    In British Association of Glass Bottle Manufacturers, Limited v Nettlefold [1912] AC 673 at 714, the Lord Chancellor, Lord Haldane, spoke in terms of there being reasonable grounds for being fairly certain that there are other relevant documents.

32    In Mulley v Manifold (1959) 103 CLR 341 (“Mulley v Manifold”) (at 343), Menzies J said in a well-known passage:

“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.”

33    I refer also to the detailed discussion of the authorities by Menhennitt J in Beecham Group Ltd v Bristol-Myers Co [1979] VR 273. I think reasonable grounds for being fairly certain that there are other relevant documents is a good workable test and is a test supported by the authorities.

34    As the passage from Mulley v Manifold set out above makes clear, there are limits on the material which may be considered by a Court in determining the sufficiency of an affidavit of discovery. The most significant is that the insufficiency cannot be established by a contentious affidavit.

72 At [44] of Procter Besanko J referred to these principles when considering whether there should be an order for further and better discovery.  His Honour observed that to make such an order he must be satisfied that there are reasonable grounds for being fairly certain that discoverable documents exist: see too Basetec Services Pty Ltd v Leighton Contractors Pty Ltd (No 3) [2015] FCA 767 at [9] (Besanko J) and Watson v Kriticos (Further Discovery and Adjournment) [2023] FCA 793 at [18]-[22] (Perram J).

73 In Watson, the applicant, Mr Watson, applied to vacate the upcoming hearing on two bases, the first of which was that the second respondent, Whitewater West Industries Ltd, had failed to give proper discovery.  In considering the question of whether further discovery was warranted, Perram J first referred to r 20.21 of the Rules, titled “Order for particular discovery”, and its predecessor in O 15 r 8 of the Former Rules.  At [17]-[18] his Honour relevantly observed:

17    For some time there was controversy about whether the affidavit of discovery was conclusive and whether the deponent of the affidavit could be cross-examined. However, even under the former O 15 r 8 it had come to be accepted that:

(a)    the affidavit of discovery is not conclusive;

(b)    the usual remedy for deficient discovery, where it is demonstrated, is the ordering of a further affidavit of discovery; but

(c)    in limited circumstances, cross-examination of the verifying deponent may be ordered.

…

18    Thus r 20.21 should be understood as a statement of the principles in Procter. There then arises the question of the appropriate standard to be applied on an application such as the present. That standard would appear to be that there are reasonable grounds for being fairly certain that there are other relevant documents. This test has its origins in a decision of Viscount Haldane LC in British Association of Glass Bottle Manufacturers Ltd v Nettlefold [1912] AC 709 at 714 (for a useful discussion of the authorities see Beecham Group Ltd v Bristol Myers Co [1979] VR 273 at 279 per Menhennitt J). This was the standard applied by Besanko J in Procter at [33]. It has since been applied in several decisions of the Court: see Guy Carpenter & Company Pty Ltd v Grove (No 2) [2011] FCA 1190 at [5] per Jagot J; Basetec Services Pty Ltd v Leighton Contractors Pty Ltd (No 3) [2015] FCA 767 at [9] per Besanko J; Shoreform (Qld) Pty Ltd v Millenium Coal Pty Ltd [2013] FCA 645 at [18] per Robertson J. None of these cases explicitly referred to r 20.21 but I do not think that this alters their significance.

74 Finally, I turn to the line of authority relied on by Fortescue to contend that the test for access to material seized pursuant to a search order after there has been discovery is not as set out in Procter.  

75 In Metso Minerals (Australia) Ltd v Kalra [2009] FCAFC 57 (Metso FC) a Full Court of this Court (Emmett, Jacobson and Perram JJ) considered an application for leave to appeal from a judgment of Flick J in which he again dismissed an application for access to documents that had been seized pursuant to the Metso search order.  Commencing at [2] Emmett J (with whom Jacobson and Perram JJ agreed) set out the procedural history leading to the orders the subject of the application for leave to appeal.  It is convenient to set out the events following the publication by Flick J of Metso (No 3).  Relevantly:

(1)    on 11 September 2008, Flick J made orders to give effect to the reasons in Metso (No 3) which provided for general discovery by the parties with verified lists to be exchanged on or before 17 October 2008 and documents to be produced by 24 October 2008.  The parties served their verified lists, albeit late;

(2)    on 10 December 2008, the applicants filed and served a further notice of motion in which they sought an order that, subject to first executing a confidentiality undertaking, solicitors, counsel and independent experts and two named officers of the second applicant be granted access to the documents that had been seized in the execution of the Metso search orders and, in the alternative, an order that the respondents serve on the applicants, by way of further and better discovery, lists of documents in their possession, custody or power, falling into a number of categories, including certain of the documents that had been seized in the execution of the Metso search order; and

(3)    the notice of motion was argued before Flick J on 22 and 23 December 2008 at which time his Honour dismissed it.  It is that dismissal which was subject to the application for leave to appeal.

76 Justice Flick did not give separate reasons at the time of dismissing the notice of motion, a matter about which no complaint was made.  The Full Court hearing the application for leave to appeal had the benefit of the transcript of the hearing before Flick J.  Having regard to the transcript, Emmett J relevantly observed at [9]:

Significantly, his Honour observed, during the course of argument, that he did not think that there was any reason to vary the orders made for the reasons given in August. His Honour considered that those reasons sufficiently set forth the purpose for which access to the seized documents could be pursued. His Honour did not think that anything had changed, such that access should then be given, notwithstanding that it had been refused in August. His Honour considered that it was contrary to principle to order that access be given to the seized documents, but also said that, in the absence of a decision of the Court indicating that such access was permissible, his Honour would not be prepared to make the order claimed in the motion that was in issue.

77 At [10] of Metso FC Emmett J noted that the proceeding before Flick J had progressed since the making of the orders the subject of the application for leave to appeal and that, among other things, there was a regime in place for the respondents to give discovery in accordance with orders made on 23 December 2008, for the parties to exchange proposed categories of documents for further discovery and for the applicants to file and serve their evidence in chief.  The proceeding was provisionally set down for hearing for three weeks commencing on 28 September 2009.

78 At [11]-[12] Emmett J summarised the applicants’ submissions: first, that they wished to raise an important question of principle, as to what access by an applicant to documents seized pursuant to search orders should be permitted, and what use may be made of such documents by an applicant.  They contended that Flick J erred insofar as he refused to grant access because of a lack of power; secondly, no party drew Flick J’s attention to Bucyrus Australia Pty Limited v ANI Mining Service Limited [1999] FCA 1193; thirdly, while Flick’s J’s orders of 23 December 2008 were interlocutory in nature, they did not go to a mere matter of practice and procedure; and fourthly, the regime in place in the proceeding required them to file and serve their evidence in circumstances where orders had not yet been made for the provision of full discovery and “delaying the filing of their evidence to enable full discovery to be given prior to the filing of evidence could lead to a further delay of the proceeding and the possibility of vacation of the hearing dates”.

79 Justice Emmett continued at [13]:

Having regard to the circumstances relating to the dismissal of the motion in December 2008, it is difficult to be entirely certain as to the reasoning of his Honour in making that order.  On the other hand, it is clear enough that his Honour indicated, in the course of argument that his reasons were as stated in August, and that nothing material had changed in the meantime.  However, the applicants complain that his Honour failed to take account of a change in circumstances between August and December, in that, in December, there was material before his Honour to indicate that there were deficiencies in the discovery given by the respondents to that time.  One of the bases upon which his Honour refused relief in August was that there was to be an order for discovery and there was therefore no justification for access to the seized documents to be ordered at that stage.

80 Justice Emmett was not persuaded that any substantial injustice would accrue to the applicants as a result of the order from which leave to appeal was sought.  His Honour found that there was no present utility in referring the matter back to the primary judge to determine whether, assuming he had power to grant access to the seized documents, he would do so in the exercise of his discretion: Metso FC at [14]-[15].  After coming to that view Emmett J said at [16]-[17]:

16    In essence, the dispute appears to me to be a dispute concerning discovery.  That is not to say that the question of access to the seized documents is not of significance.  It may well be that, if there were material that cast doubt on the adequacy of discovery that has actually been given by the respondents, it would be appropriate to grant access to some or all of the seized documents.  I would not endorse a view, if that is the view that his Honour expressed, that the Court would not have power to grant access to the seized documents, in those circumstances.

17    Section 23 of the Federal Court of Australia Act 1976 (Cth) (Federal Court Act), to which his Honour does not appear to have been taken in any substance, would authorise an order granting access to seized documents, if that were considered appropriate for the purposes of ensuring that the proceeding be adequately and properly prepared, and for the purpose, if need be, of testing whether proper discovery had been given and whether discovery that had been given was adequate.

81 In Rauland the applicant, Rauland Australia Pty Ltd, sought an order for access to forensic images of devices seized from, and an email account of, the first respondent, Ms Johnson, by an independent computer expert.  The forensic images were obtained and the email account accessed pursuant to search orders obtained before commencement of the proceeding in which the access orders were sought. The orders sought by Rauland envisaged the expert being able to search the images of the devices and the email account for documents, or information in the form of metadata, related to the pleaded issues in the case and to disclose what he found to the applicant but not to disclose anything else: Rauland at [2].

82 In considering the application, Stewart J first referred to the purpose of a search order namely, to secure or preserve evidence and observed at [46]:

Rule 7.43(c)(ii) provides that one of the matters on which the Court must be satisfied in making a search order is that “there is a real possibility that the respondent might destroy such material, or cause it to be unavailable for use in evidence in a proceeding or anticipated proceeding before the Court”. That requirement also reveals that the principal purpose of a search order is to preserve the evidence, and it implies that that which is preserved may only be made available for use in evidence in the event that the respondent does not otherwise make it available.

83 At [48] his Honour said:

The fact that a search order preserves evidence for use in a proceeding in due course bears with it the unavoidable implication that there are circumstances in which the preserved evidence will be made available to a party requiring it in order to then make it available in the proceeding; were it otherwise, there would be no purpose to making search orders. It is therefore not the case that a search order will only serve the purpose of preserving evidence, always insulating that evidence from use in the subsequent proceeding. If the evidence is not otherwise produced in the proceeding, there will be a need to access that which was preserved so that it can be adduced in the proceeding. There may also be a need to access what was preserved in order to ascertain whether what has been produced pursuant to, say, discovery procedures is all that had to be produced. But none of that means that access will necessarily be granted at a stage prior to discovery.

84 Commencing at [49] Stewart J referred first to Metso (No 3) and then to Metso FC.  His Honour drew the following conclusion from the authorities he had considered at [55]:

It is apparent from the above authorities that the Court has a discretion to order access to documents that have been preserved under a seizure order. In the case of access to the seized material for the purpose of formulating a claim, or as an aid to discovery, or to particularise a claim, that discretion may be exercised only in narrow circumstances.  However, where parties have already furnished discovery and questions arise as to the adequacy of discovery or discovery has not produced the seized material (which is otherwise assumed to be relevant and not subject to a valid objection to production such as privilege), the discretion might be more readily exercised.

85 Fortescue focuses on the statement in Metso FC at [16] where Emmett J said that it may well be that access may be granted to material seized pursuant to a search order “if there were material that cast doubt on the adequacy of discovery that ha[d] actually been given by” a respondent.  That statement was referred to in Rauland at [53], where Stewart J referred to the findings in Metso FC and at [55] where, as I have already observed, Stewart J drew together the principles in the authorities to which his Honour had earlier referred.  But in neither Metso FC or Rauland, in referring to the decision in Metso FC, was the Full Court or this Court setting a new test against which adequacy of discovery was to be considered in the context of a search order.

86 In Metso FC Emmett J, in obiter remarks, was simply observing that access to material seized pursuant to a search order may be granted where doubts were cast on the adequacy of discovery.  His Honour did not need to and did not go on to consider how an applicant might establish the requisite lack of adequacy.  That said, it is clear that his Honour was not saying that in those circumstances and in order to establish those doubts the accepted and orthodox test as set out in Procter, and the cases referred to therein, did not apply.  Namely that, the court must be satisfied that there are reasonable grounds for being fairly certain that other relevant or discoverable documents exist.

87 That that is so can be tested in another way.  The authorities referred to above accept that the purpose of a search order is preservation and security of material.  They also accept that search orders are an “extraordinary nature of relief” and by their nature invasive.  They are not to be made lightly, and they are not, when made, to be used as an investigatory tool.  That being so, it would be incongruous if a less onerous test was to be applied in determining the question of adequacy of discovery in the context of access to material seized pursuant to a search order than in the more usual and less invasive context of an application for further and better discovery.

88 It follows from the above that the test to be applied in determining whether Fortescue should be granted access to the Seized Material is as set out in Procter and the authorities referred to at [72] above.  That is, access to the Seized Material may be granted if I am satisfied that there are reasonable grounds for being fairly certain that other relevant documents exist, beyond those which have been discovered by the respondents.  As an aside I observe that this result may not come as a surprise to Fortescue.  At the time the parties appeared before me and made submissions in relation to the admissibility of Dr Jacobsen’s evidence (which I have addressed above), which was one week before the hearing of the Amended IA, both Fortescue and the respondents accepted that this was the test to be applied on the hearing of prayer 1 of the Amended IA.

89 Finally, I should address Fortescue’s oft repeated submission that the Amended IA was not a discovery application.  In the strict sense that may be so.  Fortescue seeks access to the materials seized on execution of the search orders.  But it does so after the Discovery Orders were made, in circumstances where it alleges that the discovery provided pursuant to those orders was inadequate and where, if it is successful on this application, it proposes a regime for access to the Seized Material which will result in the production of documents which respond to search terms to be specified but which fall within the Discovery Categories.

IS THE RESPONDENTS’ DISCOVERY INADEQUATE?

90 In order to obtain the relief sought in prayer 1 of the Amended IA Fortescue must first establish that there are reasons to doubt the adequacy of the respondents’ discovery by, in turn, establishing that there are reasonable grounds for being fairly certain that there are other relevant documents that have not been discovered.  Thereafter, the question of exercise of the discretion to grant access to the Seized Material arises for consideration.

91 Despite its position on the application of a less stringent test, Fortescue submits that the evidence in any event establishes that there are reasonable grounds for being fairly certain that there are other relevant documents that have not been discovered and that the respondents’ discovery falls short having regard to that more stringent test.  The respondents do not accept that to be the case.

92 On 17 September 2025 I made an order requiring that the parties organise their submissions in relation to prayer 1 of the Amended IA by reference to the alleged deficiencies in the respondents’ discovery set out at [37] of Mr Dewar’s affidavit affirmed 19 August 2025 (referred to in these reasons as Dewar 10).  There Mr Dewar identifies a number of alleged deficiencies about which he gives evidence in sections C.2 to C.14 of Dewar 10.  For ease, I will adopt the same approach in these reasons and address each alleged deficiency, to the extent Fortescue relies on it, adopting the numbering in Dewar 10 and in Fortescue’s submissions.

93 At the commencement of the hearing Fortescue abandoned some of the alleged deficiencies in the respondents’ discovery leaving eight categories to consider.

94 As will become clear, I am satisfied that prayer 1 of the Amended IA should be dismissed.  In particular, Fortescue has failed to establish in relation to each of the remaining alleged deficiencies in the respondents’ discovery that there are reasonable grounds for being fairly certain that other relevant or discoverable documents exist.  It follows that the question of whether I would exercise my discretion to grant access to the Seized Material does not arise.

C.2: the respondents’ admitted deficiencies in their respective discovery

C.3: deficiencies for which the EZ respondents will produce further documents

95 These categories can be addressed together.

96 In relation to category C.2, Mr Dewar gives evidence that the EZ respondents admitted five deficiencies in their discovery and Dr Winther-Jensen admitted two deficiencies in his discovery notified by Fortescue.  In relation to category C.3, Mr Dewar’s evidence is that the EZ respondents indicated as at the date of Dewar 10 that they would produce further documents for 12 deficiencies notified by Fortescue “without admission as to relevance”.

97 For the EZ respondents:

(1)    the five alleged admitted deficiencies concern a failure to discover:

(a)    documents in response to Discovery Category 11(f) which were discovered by Dr Winther-Jensen and which were sent or received by, or copied to, one or more of the EZ respondents;

(b)    five appendices to the “Overview Feasibility Study Report” in response to Discovery Category 11(a);

(c)    some of the appendices to the “Class 4 Estimate Update” in response to Discovery Category 11(a);

(d)    a “revision B” referred to in another document which was discovered in response to Discovery Category 11(b); and

(e)    the appendix to the document produced in response to Discovery Category 11(d) titled “Project Proposal for Location in the Boodarie Strategic Industrial Area”; and

(2)    the 12 alleged deficiencies repeat the allegation of a failure to discover documents which had been discovered by Dr Winther-Jensen (which documents the EZ respondents indicated they would produce “without admission as to relevance”) and raise 11 additional matters which concern documents involving an entity called Playground Ventures and documents involving the Element Zero process research and development.

98 Ms Dunn explains that:

(1)    insofar as C.2 is concerned, the EZ respondents have not admitted that their discovery was deficient.  Rather, upon being notified of the issues by DCC, the EZ respondents acknowledged that a small number of documents were not produced and agreed to produce those documents;

(2)    insofar as C.3 is concerned, in an attempt to resolve the issues that arose, the EZ respondents agreed to conduct a small number of additional searches and to produce the documents which were produced by Dr Winther-Jensen, without admission as to relevance, which they did.

99 In total, the EZ respondents produced a further 550 documents.  Gilbert + Tobin’s letter dated 9 September 2025 under cover of which those documents were produced included:

As set out in Gilbert + Tobin’s letter dated 24 July 2025, the Element Zero Respondents are prepared to produce an additional set of documents to [Fortescue], without admissions as to relevance, in order to resolve your clients concerns with the Element Zero Respondents’ discovery.

…

We confirm that of the 565 of documents:

    490 documents are being produced on the basis that they were produced by [Dr Winther-Jensen] in relation to categories 11(d) and 11(f).

    75 documents are documents referred to in the Element Zero Respondents’ response to Items 2, 376-378, 379, 380, 381, 384, 387, 396-398, 399, 407, 408, 425, 426, 428-429, 430, 448, 493 and 494 which have not previously been produced to [Fortescue].

Ms Dunn explains that there was a typographical error in the second bullet point extracted above in that a further 60, rather than 75, documents were produced.

100 For Dr Winther-Jensen, the alleged admitted deficiencies concern a failure to discover:

(1)    attachments or the data referred to in an email dated 13 September 2023 from Robert Kerr to Dr Winther-Jensen (Kerr Email); and

(2)    the photo attached to an email dated 9 September 2022.

101 Mr Hales explains:

(1)    in relation to the failure to discover the attachments or data referred to in the Kerr Email, the email and its attachment were inadvertently omitted from Dr Winther-Jensen’s discovery.  The two documents were provided on 6 August 2025.  Mr Hales believes that the email and attachment were omitted from Dr Winther-Jensen’s discovery due to human error on the part of his firm and notes that, in any event, the omitted email was included in two email chains that were produced and thus DCC always had it;

(2)    in relation to the omitted photo, on 24 July 2024 MinterEllison informed DCC that Dr Winther-Jensen would discover a photograph, which Mr Hales was informed is of an iron ore deposition, that was attached to an email dated 9 September 2022 and the email (which was included in email chains that had already been discovered but which did not include the omitted photograph).  Other than its subject line which provides “FYI”, the email attaching the photograph has no text.  Mr Hales believes that the original email and its attachment were omitted from the discovery because, as the email has no text, it did not respond to any of the search terms used.  He notes that “FYI” is not ordinarily used as a search term.  These two documents were provided on 6 August 2025; and

(3)    in attempting to locate the original photograph, Dr Winther-Jensen searched his computer and, in doing so, opened his microscope program to see whether it would indicate whether he had used it on the date of the original email.  As a result, he discovered nine additional images stored in his microscope program.  Without any admission that he was required to do so, Dr Winther-Jensen produced the nine additional images of microscopic views of iron ore depositions on 6 August 2025 to avoid the costs associated with further inquiries.

102 In all Dr Winther-Jensen produced a further 13 documents.

103 Fortescue submits that by reason of these deficiencies and the further production the respondents have conceded that their discovery was deficient and that it is well established that prior deficiencies tell against the sufficiency of the entire discovery process.  Fortescue contends that, notwithstanding the further production, the respondents have not filed verified lists of documents for the additional production, which is yet another deficiency which casts doubt on the adequacy of the discovery provided, and that the EZ respondents produced the additional documents “without admission” in circumstances where, in the case of production by the EZ respondents of the documents produced which had previously been discovered by Dr Winther-Jensen but not them, there could be no question that those documents were in Element Zero’s control.

104 As Fortescue submits the further documents produced by the EZ respondents and Dr Winther-Jensen have not to date been included in any supplementary lists of documents and, in the case of the EZ respondents and the nine additional images of microscopic views of iron ore depositions produced by Dr Winther-Jensen, were produced “without admission”.  There are reasons for that approach.  First, as Ms Dunn explains, while her clients produced the documents which had been discovered by Dr Winther-Jensen, it did so without admission as to their relevance.  That an assessment of relevance may differ in relation to particular documents in a large scale and complex discovery process undertaken by different legal practitioners and/or respondents does not in my view support a conclusion that there has been a deficiency in the entire discovery process to the degree alleged by Fortescue.  Secondly, the timing of the further production.  That is, the further documents were produced after Fortescue served the IA in which it sought an order for access to the Seized Material.  In those circumstances it is hardly surprising that the respondents did not wish to concede any alleged deficiency in their discovery.

105 As a matter of fact, there has been no concession by the respondents that, by reason of their failure to discover the documents in any of the categories identified by DCC their discovery is deficient.  Nor would I infer that to be so.  The evidence before me establishes that in each case the omission of the documents later produced was either inadvertent or the documents were not produced because the EZ respondents did not consider that they were relevant to the identified Discovery Category.  As to the former, that a limited number of documents might be overlooked or missed in a large and complex discovery exercise is, although not an answer to the obligation to produce these documents, hardly surprising.  As to the latter, as I have already observed, there is always a possibility that two parties will form different views about the relevance of a document to a category of discovery.  Neither lead me to doubt the sufficiency of the discovery process undertaken by the respondents.  To the contrary, the evidence before me establishes that both the EZ respondents and Dr Winther-Jensen took steps to ensure that they complied with their obligations to discover documents pursuant to the Discovery Orders and that their respective solicitors undertook considered searches and implemented plans to ensure that was so.

106 Further, as soon as Fortescue identified issues or matters which it considered to be deficiencies in the discovery, the EZ respondents and Dr Winther-Jensen undertook further searches and produced additional documents.  In the case of the EZ respondents the vast majority of the additional documents produced were copies of those already produced by Dr Winther-Jensen.  In the case of Dr Winther-Jensen, who produced an additional 13 documents, nine of which were provided out of an abundance of caution, the omission was plainly inadvertent and, in part, caused by the oversight of his solicitors.

107 Fortescue raised a further matter in relation to Dr Winther-Jensen.  It says that there is a clear inconsistency between the evidence given by Dr Winther-Jensen in Dr Winther-Jensen’s 8 July Affidavit (filed in support of the Discharge Application) and his affidavit verifying Dr WJ’s List of Documents.

108 In particular, Fortescue relies on [57] of Dr Winther-Jensen’s 8 July Affidavit in which Dr Winther-Jensen affirms (my emphasis):

My personal external hard drive also contains unpublished and confidential research from previous collaborations and my own work, including with commercial parties and educational institutions, which is unrelated to the issues in this proceedings.

109 Fortescue contends that should be understood as Dr Winther-Jensen’s evidence that the external hard drive did not contain any document related to the issues in this proceeding.

110 Fortescue submits that cannot be so in circumstances where Dr Winther-Jensen has produced over 1000 documents that were located on the external hard drive as identified and verified in Dr WJ’s List of Documents.

111 Dr Winther-Jensen contends that Fortescue’s allegation is unfounded and that it ought to be rejected.  He says that:

(1)    [57] of Dr Winther-Jensen’s 8 July Affidavit must be read in context, most relevantly with the other paragraphs under the heading “Materials obtained during execution of Search Orders” in that affidavit.  There, Dr Winther-Jensen:

(a)    sets out what was seized during the execution of the Search Orders (at [51]-[53]);

(b)    refers to evidence given by Dr Kolodziejczyk in support of the Discharge Application in which Dr Kolodziejczyk sets out his concerns about the materials that were seized from his premises during execution of the Search Orders, including by providing non-exhaustive examples of the basis for his concern (at [54]); and

(c)    by reference to the non-exhaustive examples given by Dr Kolodziejczyk, provides examples of the basis of his concern about the materials that were seized from his premises (at [55] and [57]);

(2)    on its face Dr Winther-Jensen’s 8 July Affidavit merely seeks to demonstrate his concerns in relation to the materials that were seized from his premises during execution of the Search Orders but at no point did he purport to provide an exhaustive example of all material on his external hard drive; and

(3)    as a matter of procedural fairness I ought not accept a submission that is tantamount to an allegation of perjury, advanced by Fortescue for the first time at the hearing of the Amended IA without notice to Dr Winther-Jensen, in circumstances where he has been given no opportunity to answer it, either by way of further evidence or in cross-examination.

112 I accept the submissions advanced by Dr Winther-Jensen.  Plainly, [57] of Dr Winther-Jensen’s 8 July Affidavit must be understood on its terms and read in context having regard to the balance of that affidavit and the nature of the Discharge Application.  As to the former, it is clear that Dr Winther-Jensen was not providing an exhaustive summation of the material on the hard drive.  He explains that the hard drive “also” contained material unrelated to the issues in the proceeding.  As to the latter, as Dr Winther-Jensen submits, this requires consideration of the evidence given by Dr Kolodziejczyk (to which Dr Winther-Jensen refers) and of Dr Winther-Jensen’s 8 July 2024 Affidavit, each of which was relied on to demonstrate concerns held by the respondents in relation to the materials that were seized in the context of the Discharge Application. Viewed in this light, the submissions advanced by Fortescue must be rejected.

C.4: the EZ respondents’ failure to discover documents that are or have been in their control by reason of Dr Winther-Jensen’s roles in Element Zero

113 Mr Dewar’s evidence is that Discovery Categories 2A, 6, 6A and 7 are directed to showing that Dr Kolodziejczyk and Dr Winther-Jensen copied documents or information from Fortescue and Discovery Category 8 is directed to showing misuse of those documents.  He says that Dr Winther-Jensen discovered 1,067 unique documents in response to Discovery Categories 2A, 6, 6A and 7 and no documents in response to Discovery Category 8.

114 Mr Dewar observes that the documents discovered by Dr Winther-Jensen contain file path metadata and that he caused DCC’s e-discovery provider, TransPerfect, to build a file path index based on the metadata of Dr Winther-Jensen’s discovery.  Mr Dewar has put in evidence the file path structure in “/24EA019BC/24EA019BC_Subset.ad1/24EA019BC1.E01: Partition 1 [953867MB]: TOSHIBA EXT [NTFS]”.  Mr Dewar understands, from an affidavit sworn by Stephen Klotz, the independent lawyer who was appointed for the purpose of executing the Search Orders, that device 24EA019BC is a Toshiba hard disk drive belonging to Dr Winther-Jensen which was collected during execution of the Search Orders.

115 Based on the file path built by TransPerfect (see above), Mr Dewar believes that:

(1)    Dr Winther-Jensen copied material from Fortescue on 23 October 2021, the date that is:

(a)    one day after Dr Kolodziejczyk gave his notice of resignation to Fortescue on 22 October 2021; and

(b)    less than two weeks before Dr Winther-Jensen gave his notice of resignation to Fortescue on 4 November 2021;

(2)    the material copied by Dr Winther-Jensen from Fortescue on 23 October 2021 comprised his electrochemistry research at Fortescue (“FFI electrochem” in the file path), organised in a systematic way; and

(3)    Dr Winther-Jensen retained the electrochemistry research material he copied from Fortescue throughout the period he researched and developed Element Zero’s process and throughout the period he worked at Element Zero.

116 Mr Dewar sets out searches he instructed TransPerfect and his team at DCC to undertake of those documents discovered by Dr Winther-Jensen in Discovery Categories 2A, 6, 6A and 7.

117 First, Mr Dewar had TransPerfect compare the file names of the documents Dr Winther-Jensen produced in response to Discovery Categories 2A, 6, 6A or 7 against the file names in the EZ respondents’ discovery and identify documents that have identical file names.  That search identified one document with the file name “ore composition after drying.xlxs” (Ore Composition Document), which is a confidential Fortescue document.

118 Dr Winther-Jensen discovered two copies of the Ore Composition Document dated 7 May 2021 and 19 January 2023 for which Mr Dewar provided details of their respective file paths.  Having regard to the file paths Mr Dewar notes the following in light of Mr Klotz’s evidence about execution of the Search Orders and information provided to him by Kevin Huang, a solicitor in the employ of DCC involved in the review of the respondents’ discovery:

(1)    device 24EA019BA is a HP laptop belonging to Dr Winther-Jensen collected during execution of the Search Orders;

(2)    device 24EA019BC is a Toshiba hard disk drive belonging to Dr Winther-Jensen collected during the execution of the Search Orders;

(3)    Lenovo is the brand of computers used by most staff at Element Zero; and

(4)    NewPro is a reference to NewPro Consulting & Engineering Services Pty Ltd, an engineering consulting firm engaged by Element Zero in relation to the development of its pilot plant.

119 Mr Dewar caused the DCC review team to compare a copy of the Ore Composition Document provided by Fortescue against the three copies discovered by the respondents and has been informed by a member of that team that the documents are the same.

120 Having regard to his evidence about the Ore Composition Document Mr Dewar gives evidence about how he believes the respondents used the Ore Composition Document.  I do not intend to set out that evidence.  The question of alleged use of that or any other document by the respondents is clearly a matter for trial.

121 Secondly, Mr Dewar had TransPerfect compare the file names of the documents marked as responding to Discovery Categories 2A or 6 in Dr Winther-Jensen’s discovery against the documents in that discovery having a file path containing “Element Zero”, “EZ” or “ElementZero”, and identify documents with identical file names.  He then caused the DCC review team to review the documents with identical file names.  Other than the Ore Composition Document, the relevant documents with identical file names are 11 presentation-style documents named or titled “Technology base” (collectively referred to as Technology Base Presentations), each of which Mr Dewar believes Dr Winther-Jensen authored and each of which contain a slide discussing Fortescue’s research on the electrochemical reduction of iron ore and a photograph that appears to be Fortescue’s laboratory.

122 Mr Dewar believes that the EZ respondents did not discover the Technology Base Presentations for the following reasons:

(1)    the file name comparisons undertaken by TransPerfect;

(2)    Dr Winther-Jensen’s email to Dr Kolodziejczyk attaching a Technology Base Presentation was notified by DCC in the First Deficiency Letter as part of the notification of alleged deficiencies in the EZ respondents’ discovery; and

(3)    the EZ respondents’ response was that an unknown number of documents were “inadvertently omitted” from their discovery and that they would produce an unknown number of documents in answer to the alleged deficiency.  I pause to note that Ms Dunn disputes the characterisation of her clients’ response to the identified deficiencies in relation to Discovery Category 11(f) and that her clients’ position is that the documents are not relevant but that they would nevertheless be produced because they were discovered by Dr Winther-Jensen.

123 The issues identified by these searches were raised by Fortescue with the EZ respondents who provided a response.  Having regard to that response, Mr Dewar believes that, in giving discovery, the EZ respondents have not sufficiently searched for or considered the discoverability of documents that are or were in their control by reason of Dr Winther-Jensen’s roles in researching and developing Element Zero’s process and at Element Zero, at least including the documents in Dr Winther-Jensen’s discovery identified as responding to Discovery Categories 2A, 6, 6A and 7, which affected the EZ respondents’ discovery in response to Discovery Category 8.  Mr Dewar sets out the reasons for having formed that belief.

124 Ms Dunn also gives evidence in relation to this category of alleged deficiency in the EZ respondents’ discovery.  She does not agree that there is a “general deficiency” in production by the EZ respondents because they have not discovered documents that Dr Winther-Jensen has discovered in Discovery Categories 2A, 6, 6A, and 7, or any documents in Discovery Category 8.

125 Ms Dunn notes that the EZ respondents discovered one copy of the Ore Composition Document with a different file path to that referred to by Mr Dewar, which she sets out.  Ms Dunn was informed by Mr Masterman that:

(1)    from prior to on or around 7 May 2023, Dr Winther-Jensen used his personal device for his work at Element Zero;

(2)    from on or around 7 May 2023 onwards, Dr Winther-Jensen used a laptop owned by Element Zero which is branded Lenovo;

(3)    in or around January 2024 (following Dr Winther-Jensen’s resignation from Element Zero), Dr Winther-Jensen returned the Element Zero laptop to Element Zero;

(4)    in or around March 2024 Element Zero copied all of the contents stored locally on Dr Winther-Jensen’s Element Zero laptop to Element Zero’s cloud-based document storage platform, in a folder labelled “Bjorn Computer”; and

(5)    in or around April 2024 the laptop was wiped so that it could be used by another Element Zero employee.

126 Ms Dunn observes that the file path for the version of the Ore Composition Document discovered by the EZ respondents indicates to her that it formed part of the upload of Dr Winther-Jensen’s laptop to Element Zero’s cloud-based storage platform.  She gives the following further evidence about the Ore Composition Document:

(1)    there are no documents in the possession of the EZ respondents that indicate use of the Ore Composition Document, based on their response to Discovery Category 8;

(2)    she has been informed by Dr Kolodziejczyk and Mr Masterman that they did not see the Ore Composition Document until they were undertaking their discovery in February 2025 and were shown the document by Gilbert + Tobin; and

(3)    in any event, the information in the Ore Composition Document is of a type that is publicly available.

127 In relation to the Technology Base Presentations, Ms Dunn notes that one of those documents produced by Dr Winther-Jensen appeared to have been emailed by him to Dr Kolodziejczyk on 25 July 2025.  While this was not a document identified by the EZ respondents in providing discovery pursuant to the Discovery Orders, following receipt of Dr Winther-Jensen’s discovery, Ms Dunn caused searches for the email to be conducted over the Seized Material.  The email was not identified by those searches.

128 Ms Dunn has reviewed the Technology Base Presentations and, having regard to their content, says that it is not clear to her why they were produced in answer to Discovery Category 2A (which calls for documents copied, taken or otherwise obtained by Dr Kolodziejczyk and Dr Winther-Jensen during a specified period of their employment at Fortescue).  She says that, to the extent the document contains information that Dr Winther-Jensen copied, took or otherwise obtained, that was not a matter known to the EZ respondents or their lawyers at the time they produced their discovery.

129 Neither Dr Kolodziejczyk or Ms Dunn, following their respective reviews, believe that the Technology Base Presentations record research and development of Element Zero’s process and thus they do not consider they fall within Discovery Category 11(f).

130 Fortescue submits that Dr Winther-Jensen was a co-developer of Element Zero’s process and a founder, director and the R&D manager of Element Zero until late 2023/early 2024, he discovered 1,067 unique documents in Discovery Categories 2A, 6, 6A and 7 and, save for one exception, the EZ respondents discovered none of the documents discovered by Dr Winther-Jensen in those categories, despite the entirety of Dr Winther-Jensen’s Element Zero laptop having been copied to Element Zero’s cloud-based server.

131 Fortescue submits that the EZ respondents’ own evidence admits this deficiency in relation to the chapeau of Discovery Category 2A because Ms Dunn’s evidence in relation to that Discovery Category demonstrates that the EZ respondents made no attempt to search for documents that would be responsive to the chapeau.  They only searched for documents in sub-paras (a)-(g).  Fortescue contends that this failure to search for documents in the chapeau constitutes an exclusion of documents under a misconception of Discovery Category 2A.

132 This aspect of alleged deficiency in the EZ respondents’ discovery relies on the fact that Dr Winther-Jensen has discovered documents which were not discovered by the EZ respondents.  In contending that to be the case Fortescue seems to overlook the fact that until May 2023 Dr Winther-Jensen used his own laptop for work he undertook for Element Zero and only used a laptop issued by Element Zero from May 2023 until his resignation in January 2024.  Dr Winther-Jensen also used an external hard drive.  The documents produced by him in answer to Discovery Category 2A came from the latter.  Relevantly, Mr Hales explains:

(1)    while Dr Winther-Jensen worked at the laboratory and office rented by Fortescue Future Industries at the University of Western Australia, he did not have access to Fortescue’s backup system;

(2)    to ensure that he did not lose any research, he adopted a habit of periodically backing up the desktop of his Fortescue laptop to an external hard disk. He typically performed this backup at home, where his backup drive was located;

(3)    each time he performed this backup, he replaced the previous backup. Accordingly, the backup performed on 23 October 2021 was the last backup prior to his departure; and

(4)    as the folder “Toshiba Desktop 23-10-21” was a backup of his Fortescue laptop, Dr Winther-Jensen discovered the entire contents of this folder in response to Discovery Category 2A.

133 Those facts explain why the EZ respondents did not discover any of the documents discovered by Dr Winther-Jensen in answer to the Discovery Categories in issue, and particularly Discovery Category 2A.

134 The second aspect of this category of alleged deficiency concerns the searches in fact undertaken by the EZ respondents in relation to Discovery Category 2A (see Annexure A).  Ms Dunn’s evidence about the searches she undertook in relation to each of the subcategories in Discovery Category 2A is recorded at [26(2)-(6)] above.

135 As Fortescue points out, Ms Dunn did not cause any searches to be carried out in relation to the chapeau to Discovery Category 2A which provides:

All documents, and all documents recording information, copied or taken or otherwise obtained by [Dr Kolodziejczyk] or [Dr Winther-Jensen] from Fortescue (including Fortescue’s network, system or devices) in the period from September 2021 to November 2021, including:

136 That is hardly surprising.  The chapeau to Discovery Category 2A is general in nature and is informed and qualified by the subcategories that follow.  Absent the subcategories that follow it is on one view meaningless and on another would approach an order for standard discovery.  The Discovery Orders, which were the subject of much debate between the parties and rulings by the Court, were not intended to be general in nature but were intended to be tied to the matters in dispute between the parties. Fortescue’s contended for construction of Discovery Category 2A, treating the chapeau in isolation, would result in a category which is inconsistent with the intent of the Discovery Orders which, relevantly, were made pursuant to, r 20.15 of the Rules.

137 The chapeau does not lend itself to the identification of discernible search terms and Fortescue does not suggest otherwise by, for example, setting out those search terms which they say could be identified and applied.  Against that Ms Dunn gives evidence of the way in which she identified the search terms for each of the subcategories in Discovery Category 2A and how they were applied.  I am satisfied that the steps taken were sufficient and are not undermined by any alleged failure to apply search terms to the chapeau to Discovery Category 2A.

C.5: no documents produced by the EZ respondents in response to Discovery Categories 2A(a), 11(e) and 14

138 Fortescue’s complaint in this category is centred around the fact that the EZ respondents have not discovered any documents in response to Discovery Categories 2A(a), 11(e) and 14.  Despite the EZ respondents informing Fortescue that they had given proper discovery in answer to, among others, these Discovery Categories, and that they had conducted extensive searches for documents in these Discovery Categories, including across the Seized Material, Mr Dewar considers that documents in Discovery Categories 2A(a), 11(e) and 14 must exist and be, or were in, the EZ respondents’ control.

139 I consider each of these Discovery Categories in turn below.

Discovery Category 2A(a)

140 Discovery Category 2A(a), in effect, requires the EZ respondents to produce documents which Dr Kolodziejczyk obtained and copied from Fortescue while working from home in October and November 2021.

141 Mr Dewar observes that, in summary, Dr Kolodziejczyk asserts in his affidavit sworn on 19 June 2024 relied on in support of the Discharge Application that he was asked to take Fortescue documents to use when working from home after he handed in his Fortescue-issued laptop.  Despite this, the EZ respondents have not discovered these documents, nor have they included them in part 3 of the EZ Lists of Documents or in their supplementary lists of documents.

142 Mr Dewar observes that Discovery Categories 2A(a) and 2A(b) have some overlap but that no documents relevant to Discovery Category 2A(a) were discovered by Dr Kolodziejczyk in Discovery Category 2A(b).  He says that the EZ respondents discovered 43 documents in Discovery Category 2A(b) which comprise:

(1)    four emails from Dr Kolodziejczyk to Mr Roper, attaching the finished work product, rather than any document copied by Dr Kolodziejczyk to create that work product;

(2)    six attachments to the four emails referred to in the preceding subparagraph; and

(3)    the remaining files, which are 33 image files, which appear to be email signature images.

143 Mr Dewar thus opines that the EZ respondents have not produced any documents reflecting the documents Dr Kolodziejczyk took to “finish off [his] work for Fortescue” as referred to in his affidavit sworn on 19 June 2024.  By way of example, Mr Dewar says that he considers that Dr Kolodziejczyk must have at least taken drafts of the documents he eventually emailed to Mr Roper.

144 Fortescue submits that, unlike searches in other categories, the EZ respondents’ solicitors ran no searches over the Seized Material for Discovery Categories 2A(a) and (b).  Rather, Dr Kolodziejczyk personally ran unspecified “searches” over his Gmail account which was part of the Seized Material and which, Fortescue contends, should have been searched by the solicitors, which can otherwise “seriously ameliorate” concerns about discovery being undertaken personally by a search order respondent.  Fortescue submits that Discovery Category 2A(a) is not limited to emails, so a search of emails only is on its face inadequate and a misconception of the subcategory.

145 Fortescue submits, in addition, that the EZ respondents have misconceived Discovery Category 2A(a) as it does not seek the “work product” created by Dr Kolodziejczyk while working from home but seeks documents copied by him while working from home in October and November 2021.

146 The searches undertaken by the Element Zero respondents to comply with their obligations to discover documents in Discovery Category 2A(a) (and 2A(b)) are set out at [26(2)] above.  In particular, Dr Kolodziejczyk undertook searches of his Gmail account for correspondence with Fortescue employees in relation to his work in that period.  While that account was part of the Seized Material, there is no reason why Dr Kolodziejczyk could not assist in the process of discovery by reviewing his own email account, particularly in circumstances where he is more likely to be familiar with the material on which he was working in the period October and November 2021.

147 Fortescue refers to A v B [2019] EWCH 2089 (Ch) at [30].  That case concerned the interrogation of imaged digital data taken during the execution of a search and seizure order (SSO).  The question which arose in two similar cases for resolution was: who goes first in inspecting and interrogating that data (after the filtering out of privileged material) – the claimant or the defendant?  Relevantly the orders made provided for each claimant’s solicitor to carry out first inspection of the material seized pursuant to the applicable SSO.  In answering the question posed, Mann J considered the nature of a SSO and its juridical basis including earlier decisions, applicable legislation and court rules.  At [21] his Honour observed that “the question of what should now happen in relation to inspection” should be answered “by going to the central purpose of a search and seizure order, by reference to the authorities and statute, and carefully considering how it fits into the normal established way of conducting litigation”.

148 At [25]-[26] Mann J said:

25    In my view that informs an assessment of what should normally be done with an image of digital data once it is secured. Once the image is taken the documents on it are preserved and safe from the risk of destruction, and it is that wish which the order was primarily intended to meet. It is not necessary to carry out any searching or identification for that purpose; the image is safe. Any searches carried out in relation to those documents cannot be justified on the footing that it is necessary for the preservation of those documents. I can see no justification for a search of those documents being, as a general rule, carried out by the claimant and/or at that stage.

26    I therefore agree with the submissions of the defendants in both cases that if there is to be an inspection of documents on the images at this stage and by the claimants then it needs to be justified as a separate exercise, and analysed in terms of the disclosure jurisdiction. The process of looking for relevant documents is akin to disclosure if it is not actual disclosure (as that process is understood under the CPR). I do not accept the submissions of Mr Cavender QC, for the claimant in A v B, that the inspection of the image is ancillary to the SSO, or at least it is not ancillary in any meaningful way. If anything, the search and seizure order is ancillary to disclosure, because it enables documents to be preserved for that purpose, but without necessarily determining who should do the disclosure. That would be another way of expressing the views of Templeman J (see above).

149 In A v B at [30], to which Fortescue expressly refers, Mann J observed that the decision whether to allow a claimant to first inspect the seized material “like any other dispute about disclosure, has to be dealt with on the basis of the particular facts of a particular case”, noting that there “will be many factors potentially in play” including six that his Honour then lists.  Fortescue focuses on the first of those namely that:

The order will have been obtained in the first place on the basis of a strong prima facie case of not only the dishonesty of the defendant but also the propensity of the defendant to cover his or her tracks by destroying evidence. That may mean that the defendant should not necessarily be trusted to carry out the disclosure (inspection) exercise properly, though this factor may be seriously ameliorated by the defendant’s solicitors being involved in the process.

150 That observation was made in the context of a completely different application: whether the claimant should have first access to material seized pursuant to a search order, before the defendant. The present application concerns access to seized material in circumstances where Fortescue says that the discovery provided to date is inadequate.  The Seized Material has been quarantined and preserved.  While the requirements to make a search order include that the court must be satisfied that that there is a real possibility that the respondents may destroy the material in question, there is no evidence that Dr Kolodziejczyk did not undertake a proper search or review of the Gmail account or that Gilbert + Tobin did not give him adequate instructions to enable him to do so.  Those solicitors have clearly been involved in overseeing the whole of the discovery process.

151 In response to Mr Dewar’s view that Dr Kolodziejczyk must have taken drafts of the documents he emailed to Mr Roper, Ms Dunn has been informed by Dr Kolodziejczyk, that he does not recall taking drafts of the documents and believes that he drafted them from memory and that it is likely that any documents he did take to complete his work for Fortescue were located on the Toshiba and Kingston USBs.  Ms Dunn has been informed that any such documents that may have been on the Toshiba and Kingston USBs are no longer has in Dr Kolodziejczyk's possession (see [26(5)] above in relation to searches undertaken for Discovery Category 2A(f)).  In undertaking the searches for Discovery Category 2A(f) no documents falling within category 2A(a) were identified. There is nothing to suggest that Gilbert + Tobin misunderstood Discovery Category 2A(a).  It is simply the case that, having undertaken the searches described, no documents answering that category were identified.

152 It is also evident from Ms Dunn’s evidence that the searches undertaken were not limited to a search of Dr Kolodziejczyk’s email account.  The searches undertaken of the Toshiba and Kingston USBs were also considered but did not identify any documents relevant to Discovery Category 2A(a).

Discovery Category 11(e)

153 The alleged deficiency in relation to Discovery Category 11(e) is not limited to a failure to discover any documents in the category.  Fortescue says that the deficiency extends to the EZ respondents’ failure to discover any documents in the category in circumstances where Dr Winther-Jensen discovered documents in response to Discovery Category 11(e) which had been received by, sent or copied to one or more of the EZ respondents.

154 Mr Dewar notes that when the deficiencies in relation to Discovery Category 11(e) were raised with the EZ respondents in the First Deficiency Letter, Gilbert + Tobin responded on behalf of their clients, insofar as the complaint related to failure to produce documents which Dr Winther-Jensen had produced in answer to this category, as follows:

The Element Zero Respondents’ position is that they have provided proper discovery in answer to category 11(e).

The Element Zero Respondents do not know what documents Dr Winther-Jensen considers record his “retirement project” the “work[] with nickel [and] iron”, and the “work that eventually led to the creation of Element Zero” as referred to in paragraph 40 of [Dr Winther-Jensen’s] affidavit.

To the extent such documents recorded the research and development of the Element Zero process, they would be produced by the Element Zero Respondents in answer to category 11(f). See also response to item 52 - 375 below.

155 Mr Dewar is of the view that this response does not address the substance of the notified deficiencies in relation to Discovery Category 11(e) for the following reasons:

(1)    Discovery Category 11(e) is not “documents Dr Winther-Jensen considers [record the] retirement project” etc: but calls for “documents recording or evidencing the retirement project” etc;

(2)    the assertion that the EZ respondents “do not know what documents Dr Winther-Jensen considers record his ‘retirement project’[,] the ‘work[] with nickel [and] iron’, and the ‘work that eventually led to the creation of Element Zero’” is inconsistent with the EZ respondents’ case.  This assertion is based on aspects of the EZ respondents’ defence, the FASoC and the fact that the EZ respondents relied on Dr Winther-Jensen’s affidavit referred to in Discovery Category 11(e) in support of the Discharge Application;

(3)    it is not the case that “documents recorded the research and development of the Element Zero process… would be produced by the Element Zero Respondents in answer to category 11(f)” because:

(a)    the EZ respondents’ discovery is deficient in Discovery Category 11(f);

(b)    Discovery Category 11(f) requires production of:

documents recording the research and development of: (i) the “Element Zero Process” referred to in paragraph 29 of [the EZ respondents’] defence; or (ii) the “Element Zero process” referred to in paragraphs 29(b)-(c) of Dr Winther-Jensen’s defence, during the period from January 2022 to February 2024.

(c)    Dr Winther-Jensen says he started research and development of the Element Zero process in March 2022 (Dr Winther-Jensen’s 8 July Affidavit at [40]);

(d)    by contrast, in their defence at [29] the EZ respondents define the “Element Zero Process” as the process researched and developed by Dr Kolodziejczyk and Dr Winther-Jensen “since around July 2022”;

(e)    the EZ respondents’ definition of the “Element Zero Process” means that the early 2022 documents discovered by Dr Winther-Jensen in response to Discovery Category 11(e) might fall outside the “since around July 2022” limitation.  Mr Dewar notes that for the period January-June 2022, the EZ respondents discovered 14 documents in response to Discovery Category 11(f) while, for the same period, Dr Winther-Jensen discovered 164 documents marked Discovery Category 11(e) and 168 documents in response to Discovery Category 11(f).; and

(f)    as further examples, at least two documents discovered by Dr Winther-Jensen in response to Discovery Category 11(e) were not discovered by the EZ respondents at all, both of which were emails sent or copied to Dr Kolodziejczyk; and

(4)    based on their response, it is unclear what, if anything, the EZ respondents did to search for and consider the discoverability of documents in Discovery Category 11(e). It appears from the response provided that the EZ respondents’ position is, because Dr Winther-Jensen is separately represented, Gilbert + Tobin were “not in a position to take instructions from [Dr Winther-Jensen] in relation to what of the work he undertook in 2022 … falls into” Discovery Category 11(e), and that represented the totality of their efforts to give discovery in that category.  Given Dr Winther-Jensen’s roles in researching and developing Element Zero’s process and his previous roles in Element Zero, including as director, Mr Dewar considers that position is unreasonable.

156 Fortescue submits that no separate search was conducted for Discovery Category 11(e) documents because Ms Dunn wrongly assumed that category was coterminous with Discovery Category 11(f).  Fortescue contends that is another misconception; they are not coterminous.

157 Fortescue observes that the EZ respondents say they do not know “what documents Dr Winther-Jensen considers” meet the description in Discovery Category 11(e) and their solicitors could not take instructions from him.  Fortescue submits that this involves misreading Discovery Category 11(e) by adding a subjective gloss to it and that the asserted lack of knowledge is inconsistent with the fact that the EZ respondents retained the entire contents of Dr Winther-Jensen’s Element Zero laptop as well as their pleading that Drs Kolodziejczyk and Winther-Jensen together researched and developed the Element Zero process, the individual respondents’ roles as founding directors of Element Zero and the EZ respondents’ reliance on Dr Winther-Jensen’s 8 July Affidavit.

158 Ms Dunn provides an explanation for why there was no separate search undertaken for Discovery Category 11(e).  In short, that is because that Discovery Category concerns work undertaken by Dr Winther-Jensen to develop the Element Zero process.  That this is so is evident from the reference in Discovery Category 11(e) to [40] of Dr Winther-Jensen’s 8 July Affidavit where he gives the following evidence:

In March 2022 (after returning to Perth in early February) I started setting up electrochemical gear in my garage. This was driven by curiosity and to have a small retirement “project” exploring the footsteps of Humphry Davy’s and Michael Faraday’s work from 1807 on electrodeposition from molten hydroxides. I worked with nickel initially but then branched into iron in about July 2022. It was this work that eventually led to the creation of Element Zero.

159 I can discern no deficiency in the approach taken by the EZ respondents in relation to Discovery Category 11(e) given Dr Winther-Jensen’s evidence about the work done in March 2022 in his garage as part of his retirement project.  That category is clearly focussed on work undertaken by Dr Winther-Jensen alone.  Gilbert + Tobin do not act for Dr Winther-Jensen.  No wrong assumption was made, nor was there any misreading of Discovery Category 11(e) by Ms Dunn – she considered and came to a view about Discovery Category 11(e) which was clearly open to her.

160 The EZ respondents have discovered documents in response to Discovery Category 11(f), which calls for documents recording the research and development of Element Zero’s process.  As those documents include documents in the period January to June 2022, when Dr Winther-Jensen was undertaking his “retirement project” in his garage, there is no foundation for the criticism that documents falling in this category dated in January to June 2022 may not be discovered.

Discovery Category 14

161 Discovery Category 14 refers to use of the documents in Discovery Categories 1, 2A, 6 and/or 7 for or in preparing the patents or patent applications referred to in Discovery Category 13 (see Annexure A).  The EZ respondents did not discover any documents in response to Discovery Category 14.

162 Fortescue submits that, given the EZ respondents’ discovery was deficient for Discovery Categories 1, 2A, 6 and 7 in the ways described by Mr Dewar (in Dewar 10), it follows that their discovery in Discovery Category 14 was also deficient.  Fortescue contends that this is confirmed by Ms Dunn who says that no separate searches were undertaken for Discovery Category 14 and Dr Kolodziejczyk’s untested assertion that no documents in Discovery Categories 1, 2A or 6 were used to prepare/invent patents.

163 The searches carried out in relation to Discovery Categories 1, 2A, 6 and 7 are set out at [26(1)-(6), (9) and (11)] above.  Fortescue has not demonstrated that those searches were inadequate, and, in any event, I do not accept that to be the case (see relevantly [113]-[137] above in relation to Discovery Categories 2A, 6 and 7 and [166]-[181] below in relation to Discovery Category 1).

164 As for Discovery Category 14 Ms Dunn explains that, based on her review of the Discovery Categories and her understanding of the searches conducted over the Seized Material, she formed the view that the searches for Discovery Categories 1, 2A, 3, 6, 7 and 8 would have caught any use of the documents in Discovery Categories 1, 2A, 6 and/or 7 for the purposes of Discovery Category 14.  Given the way in which Ms Dunn proceeded, it is not the case that no searches were carried out in relation to Discovery Category 14.  Rather given the terms of that category, Ms Dunn formed the view, sensibly in my opinion, that any use of the documents in Discovery Categories 1, 2A, 6 and/or 7 for the purpose of patent applications, would be identified in undertaking the searches for those categories and Discovery Categories 3 and 8.

165 Further, Ms Dunn was informed by Dr Kolodziejczyk that none of the documents produced in answer to Discovery Categories 1, 2A or 6 were used for preparing or inventing any of the patent or patent applications (no documents were produced by the EZ respondents in answer to Discovery Category 7).  As Dr Kolodziejczyk was involved in the preparation of the patents, Ms Dunn sought instructions from him as an adjunct to the searches carried out under her supervision.  To that end, Dr Kolodziejczyk’s assertion about the use of documents in Discovery Categories 1, 2A and 6 was not untested as Fortescue contends.

C.6: failure to discover relevant documents in Discovery Category 1

166 Mr Dewar notes that the EZ respondents have discovered 205 documents in response to Discovery Category 1 but says, based on a review of those documents by the DCC review team, none of them are responsive to Discovery Category 1.  Mr Dewar says that, in summary, the documents discovered relate to Dr Kolodziejczyk’s contributions to external publications on subject matter not related to an electrochemical reduction process involving Ionic Liquid (as defined), are plainly not relevant to Discovery Category 1 and suggest that the EZ respondents have misunderstood the scope of the category.

167 Ms Dunn observes that the definition of “Ionic Liquid” for the purpose of the Discovery Orders is much broader than the definitions of Ionic Liquid R&D and Ionic Liquid R&D Information in the FASoC relied on by Fortescue.  That assertion is not disputed by Fortescue.

168 Ms Dunn says that, because of the very broad definition of “Ionic Liquid” in the Discovery Orders and in order to ensure that any documents responsive to the category were produced, the EZ respondents adopted search terms reflecting the various words and phrases in the definition of “Ionic Liquid” as ordered.  Those words and phrases (see [26(1)] above) were searched across the Seized Material.  Ms Dunn says that a manual review of the results by lawyers under her supervision, and by her, resulted in the documents which were ultimately produced under Discovery Category 1.

169 Ms Dunn says that it is correct that the documents produced in answer to Discovery Category 1 are documents relating to Dr Kolodziejcczyk’s contributions to external publications and research and explains that this is because:

(1)    those documents involved work undertaken by Dr Kolodziejczyk during the relevant period;

(2)    those documents contained words or phrases that arose from the very broad definition of Ionic Liquid included in Discovery Category 1; and

(3)    given the broad definition of “Ionic Liquid” in the Discovery Orders, the approach taken to the category was deliberately broad.

170 On that basis, Ms Dunn does not agree that the documents that have been produced are not relevant to Discovery Category 1, or that the EZ respondents (or she) misunderstood the scope of the category.  Ms Dunn says that the very broad definition of “Ionic Liquid” required production of the documents that were ultimately produced by the EZ respondents in response to Discovery Category 1.  The fact that they are not relevant to the case does not mean that they are not responsive to the category and required to be produced.

171 Fortescue submits that it is apparent from Ms Dunn’s evidence that the EZ respondents misapprehended what was required of Discovery Category 1, affecting their searches which led to discovery of documents that they admit are irrelevant to the case and their misconception of the category raises concerns as to the adequacy of their discovery.

172 Fortescue contends that the keywords identified for Discovery Category 1 are deficient because they appear to search exact phrases and do not permit even simple permutations, abbreviations used by the EZ respondents (“ILs” for “ionic liquids”), or basic chemical notations such as “NaOH”, “KOH” which are terms for the ionic liquid compositions relevant to this proceeding.  They submit that the terms used by the EZ respondents would fail to retrieve documents identified by Dr Winther-Jensen as responsive to Discovery Category 1 and, further, the EZ respondents’ lawyers determined the keywords for themselves and did not seek instructions as to the appropriateness of those keywords against the requirements of the category or obtain the input of chemical expert Professor Abbott, whom they had previously engaged to give evidence explaining the meaning of “ionic liquid”.

173 Ms Dunn’s evidence does not reveal any misunderstanding of Discovery Category 1.  She explains how she determined the search terms to be used to identify documents responsive to Discovery Category 1 having regard to the definition of “Ionic Liquid” (which was proposed by Fortescue) in the Discovery Orders.  No criticism can be made of Ms Dunn for adopting the very terms used in that definition as search terms.  It was not incumbent on Ms Dunn to consult Professor Abbott or any other expert in circumstances where a definition had been included in the Discovery Orders.

174 According to Mr Dewar, Fortescue also relies on “admissions” in documents by Dr Kolodziejczyk as to the existence of documents in Discovery Category 1, which was the subject of Fortescue’s evidence in support of the Search Orders and summarised in Fortescue (No 2).  Mr Dewar refers to Fortescue (No 2) at [67] where I observed:

Contrary to the EZ respondents’ submissions, a number of these documents could be described as “significant” and, in any event, demonstrate that work had been undertaken including by laboratory testing and that there was an intention to scale up to a commercial system…

175 Ms Dunn says there are no “admissions” in the documents referred to by Mr Dewar.  The documents in issue were annexed to an affidavit affirmed by Dr Anand Bhatt.  Ms Dunn gives the following evidence based on the EZ respondents’ defence and correspondence between Gilbert + Tobin and DCC:

(1)    the EZ respondents’ defence dated 30 October 2024 at [13] denies that any Ionic Liquid R&D was undertaken and that there was any Ionic Liquid R&D Information;

(2)    in response to the alleged deficiency when first raised, the EZ respondents said, among other things:

We reject the characterisation of comments by Dr Kolodziejczyk as “admissions” that Ionic Liquid R & D documents exist. See Defence dated 30 October 2024 paras 12(e)-(f) and 13 (b), and 14(b)(iii).

(3)    Fortescue (No 2) at [67] does not record any admission by Dr Kolodziejczyk.

176 Mr Dewar also says that Fortescue relies on the fact that Dr Winther-Jensen discovered documents in Discovery Category 1, and that the file path metadata in Dr Winther-Jensen’s discovery appears to show that Dr Winther-Jensen copied research on ionic liquids and molten salts (“ILs and molten salts”) from Fortescue on 23 October 2021.

177 As to documents produced by Dr Winther-Jensen in Discovery Category 1, Ms Dunn says:

(1)    none of the documents produced by Dr Winther-Jensen appear to record research on ionic liquids and molten salts undertaken by Dr Kolodziejczyk or Dr Winther-Jensen;

(2)    Mr Dewar does not say that he reviewed the documents produced by Dr Winther-Jensen in Discovery Category 1 and does not identify any document that Dr Winther-Jensen has produced relating to ionic liquids and molten salts;

(3)    Mr Dewar instead relies on a reconstruction of file path metadata.  Even if that file path is correct, it is not clear whether Dr Winther-Jensen downloaded any documents from that file path;

(4)    she has caused Dr Winther-Jensen’s discovery to be searched in an attempt to identify the document to which Mr Dewar may be referring.  There is no document entitled “ILs and molten salts” in his discovery; and

(5)    Mr Dewar seems to suggest that the document (which he does not identify) was saved onto a Toshiba external hard drive by Dr Winther-Jensen.  To the extent that is correct, Dr Winther-Jensen’s conduct is not relevant to the EZ respondents’ compliance with Discovery Category 1.

178 Fortescue submits that Discovery Category 1 documents must exist because: Dr Kolodziejczyk’s 2020 emails and documents, already reviewed by the Court, describe the work which took place; Dr Winther-Jensen (who worked with and reported to Dr Kolodziejczyk at Fortescue) discovered documents in response to Discovery Category 1; and the file path metadata in Dr Winther-Jensen’s discovery shows he copied research on ionic liquids and molten salts from Fortescue on 23 October 2021.

179 Fortescue (No 2) concerned the Discharge Application.  Commencing at [59] I considered the EZ respondents’ contention, in relation to the claim about the “Fortescue Process CI”, that no Fortescue employee gave evidence as to the nature and scope of the alleged work undertaken by Dr Kolodziejczyk in relation to the Ionic Liquid R&D and that there were no significant internal documents or the type of documents that would be expected e.g. board papers or reports.  In relation to the latter, at [66] I set out a number of internal documents that were in evidence before me about the nature and scope of the work.  Having done so I made the observation at [67] (see [174] above).

180 The finding in Fortescue (No 2), based on the evidence before me at the time, does not amount to an admission by Dr Kolodziejczyk.  At its highest it is a finding in relation to evidence that demonstrated that work had been undertaken by Dr Kolodziejczyk in late 2020 and early 2021 while he was an employee of Fortescue as recorded in those documents.

181 Contrary to Fortescue’s submissions, it is not the case that Discovery Category 1 documents “must exist”.  It does not follow that because Dr Winther-Jensen has produced documents in this category, the EZ respondents must also have documents (beyond those they have discovered) which come within Discovery Category 1.  Ms Dunn has reviewed the documents produced by Dr Winther-Jensen produced in answer to Discovery Category 1 and is of the view that they do not record research on ionic liquids and molten salts undertaken by Dr Kolodziejczyk or Dr Winther-Jensen, nor can she locate the document recording research on “ILs and molten salts” or a document of that description.  Fortescue’s submission in this regard is not made out.

C.7: the EZ respondents have admitted that they failed to search Dr Kolodziejczyk’s and Mr Masterman’s non-Element Zero email addresses

182 Fortescue contends that in responding to specific deficiencies in the First Deficiency Letter, the EZ respondents admitted that they failed to search properly Dr Kolodziejczyk’s and Mr Masterman’s non-Element Zero email addresses.

183 The specific deficiencies raised in the First Deficiency Letter were at items 41 to 46 and concerned an allegation that the EZ respondents had not discovered documents which were discovered by Dr Winther-Jensen in response to Discovery Category 11(d) in circumstances where those documents were sent or received by, or copied to, one or more of the EZ respondents.  In response to those specific deficiencies the EZ respondents, without admission as to their relevance and in order to progress the matter, agreed to produce further documents by reference to Dr Winther-Jensen’s discovery in answer to Discovery Category 11(d) and indicated that they would conduct further searches by reference to the non-Element Zero email addresses belonging to Dr Kolodziejczyk and Mr Masterman and produce any additional documents in answer to Discovery Category 11(d), if identified.

184 Mr Dewar believes, from the EZ respondents’ response to these specific deficiencies, that the EZ respondents did not search or properly search Dr Kolodziejczyk’s and Mr Masterman’s non-Element Zero email addresses for documents falling within the Discovery Categories generally.  Mr Dewar’s reasons for his belief include that, while Dr Winther-Jensen discovered emails to and from Dr Kolodziejczyk’s and Mr Masterman’s non-Element Zero email addresses, a search of the EZ respondents’ discovery of those email addresses only returned three results, being emails which included Mr Masterman’s non-Element Zero email address and which were produced in response to Discovery Category 11(d).

185 Ms Dunn gives evidence in response to Mr Dewar.  She says that, as set out in Gilbert + Tobin’s response to the specific deficiency raised at items 41 to 46 in the First Deficiency Letter, upon notification of the deficiency, she and lawyers under her supervision, with her input, reviewed the documents produced by Dr Winther-Jensen but not by the EZ respondents in answer to Discovery Category 11(d).  They identified that the additional documents produced by Dr Winther-Jensen involved emails to and from non-Element Zero email addresses belonging to Dr Kolodziejczyk and Mr Masterman.  Once that was identified, Ms Dunn caused further searches to be conducted across those additional email addresses for any communications between those addresses and Playground Global.  The EZ respondents indicated that they would produce any further relevant documents as a result of those searches, which they have now done, producing a further 10 documents.

186 Ms Dunn gives the following further evidence in response to this alleged deficiency and the EZ respondents’ approach to Discovery Category 11(d):

(1)    it was reasonable to search Element Zero email addresses for communications with Playground Global given any documents were being provided to Playground Global on behalf of Element Zero;

(2)    the EZ respondents’ approach to this category was appropriate and reflected a reasonable approach to responding to the category;

(3)    when Ms Dunn identified the issue in relation to the non-Element Zero email addresses, she took steps to resolve it and provide any further discovery in the category;

(4)    this is a minor issue in what has been a large discovery exercise and has now been rectified; and

(5)    for these reasons, Mr Dewar is wrong in his belief that this issue is not limited to Discovery Category 11(d) and extends across all of the Discovery Categories.

187 Discovery Category 11(d) (see Annexure A) concerns documents provided by the respondents to Playground Ventures containing certain types of information which are set out.  Insofar as that category is concerned, when notified of the discrepancy between the documents they had discovered and those discovered by Dr Winther-Jensen, the EZ respondents, through their solicitors, took steps to address the issue raised.

188 Fortescue’s criticism in this regard is not focused on a failure to search Dr Kolodziejczyk’s and Mr Masterman’s non-Element Zero email addresses in Discovery Category 11(d), a matter which in any event the EZ respondents have addressed and according to Fortescue “remedied”, but concerns a more general allegation of failure to search Dr Kolodziejczyk’s and Mr Masterman’s non-Element Zero email addresses in relation to any of the Discovery Categories.

189 In that regard Fortescue submits that the deficiency arises at least because of Ms Dunn’s erroneous assumption that Element Zero communications were only sent to/from Element Zero email addresses, which Dr Winther-Jensen’s discovery shows is incorrect.  Fortescue contends that Dr Kolodziejczyk’s and Mr Masterman’s non-Element Zero email addresses are Listed Things in the Search Orders and the EZ respondents’ failure to discover emails from those email addresses engages the second aspect of Rauland at [55], namely where the discovery has not produced the Seized Material.

190 A proper understanding of Ms Dunn’s evidence in relation to this alleged deficiency shows that her assumption about communication to or from Element Zero email addresses was limited to Discovery Category 11(d).  Upon being informed that there may be documents relevant to that Discovery Category which were sent from non-Element Zero email addresses, Ms Dunn took the steps described.

191 Contrary to Fortescue’s submission, while Dr Kolodziejczyk’s non-Element Zero email address is a Listed Thing, Mr Masterman’s email address per se is not.  Rather, Mr Masterman’s non-Element Zero email address is listed in item 6 of the Listed Things in Schedule A to the Search Orders which concerns “any document recording or evidencing communications to which any two or more of the Second to Fourth Respondents are parties”.  In any event there is no proper basis for me to conclude that those email addresses were not searched more generally in relation to other Discovery Categories.  Ms Dunn’s evidence insofar as Discovery Category 11(d) is concerned is that Mr Masterman’s personal devices were searched, more generally she says that Mr Dewar’s belief is wrong and the searches undertaken (described above) show that the Seized Material was searched.

C.8: the EZ respondents took an inappropriately narrow view of Discovery Category 11(f)

192 Fortescue submits that Ms Dunn concedes that there were documents in Discovery Category 11(f) that should have been discovered but were not, which is an admission of deficiency.  It contends that the EZ respondents failed to discover these documents because, based on his opinion they were not relevant, Dr Kolodziejczyk failed to provide documents to Gilbert + Tobin for review.  Fortescue says that this undermines the integrity of the searches for documents in Discovery Category 11(f), which strikes at the heart of Fortescue’s case.

193 The basis for this alleged deficiency is that Dr Winther-Jensen produced documents in answer to Discovery Category 11(f) that were not produced by the EZ respondents.  The steps taken by the EZ respondents to comply with Discovery Category 11(f) are set out at [26(12)] above.

194 Ms Dunn has reviewed the documents produced by Dr Winther-Jensen but not by the EZ respondents in answer to Discovery Category 11(f) and is of the view that the majority of the documents produced by Dr Winther-Jensen are not relevant to the category and, by way of example refers to Dr Winther-Jensen’s weekly timesheets, flight details and meeting logistics, invoices, award applications, pitches made by respondents to obtain funding from venture capital firms, and negotiations about the execution of non-disclosure agreements which he produced.  However, there were also a small number of documents that Ms Dunn considers are relevant to Discovery Category 11(f), which were documents that Dr Kolodziejczyk had not previously provided to Gilbert + Tobin.  Ms Dunn was informed by Dr Kolodziejczyk that he did not provide those documents as he did not consider them relevant to the research and development of the Element Zero process.  Ms Dunn notes that, as foreshadowed to Fortescue, the EZ respondents produced further documents in response to Discover Category 11(f) following their review.

195 Ms Dunn and thus the EZ respondents accept that there was an oversight in responding to Discovery Category 11(f) in that some documents, which I understand were produced by Dr Winther-Jensen and which were relevant, were not produced when discovery was first given because Dr Kolodziejczyk did not consider them to be relevant to the category.  However, that error on the part of Dr Kolodziejczyk, which was corrected with the documents now produced, does not undermine the integrity of the searches in Discovery Category 11(f).  Those searches were otherwise comprehensive as described by Ms Dunn and, as I understand it, carried out across the Seized Material and the EZ respondents’ records.

Notified deficiencies concerning patents

196 The final area of deficiency concerns items 14 and 15 in the First Deficiency Letter and items 497 to 499 in the Second Deficiency Letter and the alleged failure to discover experimental records to support the examples in patent specifications, namely the 2022 Provisional, 2023 Provisional and PCT.

197 In support of this category of alleged deficiency Fortescue sought to rely on [13] to [16] of Mr Dewar’s affidavit affirmed on 18 September 2025 (which I will refer to as Dewar 11) where Mr Dewar gives evidence in relation to the 2022 Provisional, the 2023 Provisional and the PCT.  The respondents objected to those paragraphs of Dewar 11.  In summary, the respondents submitted that those paragraphs of Dewar 11 are not in truth evidence in reply, the evidence is speculative and it simply seeks to repeat the evidence which Fortescue attempted to lead through Dr Jacobsen but which was rejected for the reasons set out above.  As requested by Fortescue I deferred my ruling and indicated I would determine the admissibility of [13]-[16] of Dewar 11 after hearing the parties’ respective submissions in relation to this category of alleged deficiency.

198 At [13]-[16] of Dewar 11, Mr Dewar does two things: first, he puts the 2022 Provisional, the 2023 Provisional and the PCT into evidence; secondly, he refers to instructions he gave employees of DCC to review the documents produced in answer to specified Discovery Categories and the outcome of those reviews.  In light of the issues raised and the submissions made (see below) I am satisfied that the evidence, while not strictly in reply, is relevant as it concerns a notified area of alleged deficiency in the respondents’ discovery.  Accordingly, I will allow the evidence in Dewar 11 at [13]-[16].

199 Items 14 and 15 of the First Deficiency Letter and items 497-499 of the Second Deficiency Letter provide:

14    The EZRs have not discovered “documents recording the research and development of…the ‘Element Zero process’” (category 11(f)) in respect of all of Examples 1–10 of the patent specification WO 2024/082020 A1 (EZR.0007.0001.0002).

15    The EZRs have not discovered “documents recording the research and development of…the ‘Element Zero process’” (category 11(f)) in respect of Examples 2 and 3 of provisional application AU 2023902103 (EZR.0003.0002.0329, EZR.0003.0002.0297).

…

497    The 3R has not discovered the experimental results, lab books recording experiments, or any other documents in respect of “Example 1 – Haematite” (in particular [0064]–[0065]) in the provisional patent application filed on 20 October 2022, in response to categories 11(c), (e) or (f). BWJ.5000.0004.1222

498    The 3R has not discovered the experimental results, lab books recording experiments, or any other documents in respect of “Example 2 – Nickel” ([0066]–[0068]) in the provisional patent application filed on 20 October 2022. Specifically, there are no experimental records discovered to show that “An electric current was passed from an inert gold anode, through the solution and nickel and iron were deposited onto the cathode in an electroplating process in a ratio of 7:1 (Ni:Fe)” ([0068]), in response to categories 11(c), (e) or (f). BWJ.5000.0004.1222

499    The 3R has not discovered the experimental results, lab books recording experiments, or any other documents in respect of “Example 3 – Ore Dissolution in Molten Hydroxide” (in particular [0070]–[0073]) in the provisional patent application filed on 20 October 2022, in response to categories 11(c), (e) or (f). BWJ.5000.0004.1222

200 Mr Dewar says that he instructed members of the DCC team to review the respondents’ discovery material as follows:

(1)    in relation to items 497-499 of the Second Deficiency Letter, which relate to examples 1, 2 and 3 in the 2022 Provisional, the respondents’ materials discovered in response to Discovery Categories 11(c), (e) and (f) dated before 20 October 2022 (i.e. before the date of the filing of the 2022 Provisional);

(2)    in relation to item 14 of the First Deficiency Letter, which relates to examples 1-10 of the PCT, the respondents’ materials discovered in response to Discovery Categories 11(c), (e) and (f) dated between 21 October 2022 and 19 October 2023 (i.e. between the filing of the 2022 Provisional and the PCT); and

(3)    in relation to item 15 of the First Deficiency Letter, which relates to examples 2 and 3 of the 2023 Provisional, the respondents’ materials discovered in response to Discovery Categories 11(c), (e) and (f) dated before 30 June 2023 (i.e. before the filing of the 2023 Provisional).

201 The results of those searches were: for the 2022 Provisional and the 2023 Provisional, there were no documents recording the experiments in relation to the identified examples, although for the latter there were summaries of the experiments for examples 2 and 3; and for the PCT there were no documents recording the experiments in examples 1 to 3, 6 and 8 to 10.

202 Fortescue submits that each patent application contains examples, each example admits one or more experiments, which must have been done, and such experiments must have generated experimental records.  Fortescue contends that those records must have existed to instruct a patent attorney to draft the patent applications months or a year later (and they are not listed in part 3 of any of the respondents’ lists of documents).  Fortescue submits that the alternative inference, that one or more of the inventors remembered all the described details of their experiments, including data, is unlikely.

203 Fortescue’s submissions in relation to this alleged deficiency overlook one important fact.  That is that it was Dr Winther-Jensen who carried out the relevant experiments.  As explained by Mr Hales, Dr Winther-Jensen does not accept that the discovered documents do not include reference to the experiments in the examples to which Mr Dewar directed the review.  Further, Dr Winther-Jensen’s laboratory notebook has been discovered which contains records of his work.  Those pages, examples of which were in evidence before me, might not obviously, when reviewed by anyone other than Dr Winther-Jensen, set out experiments which are the subject of the examples in the 2022 Provisional, the 2023 Provisional or the PCT.  However, the evidence before me is that the laboratory notebook is where Dr Winther-Jensen recorded his work.  The work undertaken by Dr Winther-Jensen and his work and record keeping practices will ultimately be a matter for trial.

204 Further, and relatedly, for completeness I note that, contrary to Mr Dewar’s evidence, the EZ respondents have produced copies and drafts of PCT Application no WO2025118033 relating to application no 2023903979, but they are subject to a claim of patent attorney privilege.  Those documents are identified in part 3 of the EZ Lists of Documents.

CONCLUSION

205 For those reasons I will make an order dismissing prayer 1 of the Amended IA with costs.

206 Fortescue abandoned prayers 3 and 3A of the Amended IA on the morning of the hearing of the Amended IA, after evidence and submissions had been filed and served by the respondents in relation to them.  That being so, in my view the respondents are entitled to an order for their costs of those prayers for relief.  I will make an order to that effect but will permit any party wishing to vary that order to file submissions, not exceeding two pages in length, setting out the nature of the variation and the grounds for it.

207 I will make orders accordingly.

Associate:

Dated:    29 October 2025

Annexure A

SCHEDULE 1

Applicants’ Categories of Documents
to be Discovered by the Respondents

Notes

All documents are to be produced in native form.

Each Document must be identified in relation to a discovery category

Definitions

a. “directly relevant” means a document that falls within any of the criteria in rule 20.14(2) of the Federal Court Rules 2011 (Cth).

b. “document” has the meaning given to that term in Schedule 1 of the Federal Court Rules.

c. “First Specified Documents” means the documents referred to in the particulars of paragraphs 19 and 20 of the FASOC including:

d. “Fortescue” has the meaning given to that term in paragraph 4 of the Further Amended Statement of Claim filed 24 October 2024 (FASOC).

e. “Ionic Liquid” means any salt or mixture of salts that is capable of acting as an electrolyte in electrowinning and/or electroplating of metals and/or ores when in its liquid form (irrespective of the temperature range at which the salt or mixture is in its liquid form) including, without limitation, electrolytes that may be described as ionic liquids, molten salts, eutectics, molten hydroxide-based electrolytes, molten carbonate-based electrolytes, “hydroxide alkali melt or eutectic melt” (referred to in paragraph 29(a)(i) of the EZ Parties’ defence) and/or “molten hydroxide eutectic” (referred to in paragraph 29(c) of Dr Winther-Jensen’s defence).

f. “Second Specified Documents” means any modified forms of First Specified Documents, including previous or subsequent drafts.

Categories

Ionic Liquid documents

1. All documents recording or evidencing work undertaken by the Second Respondent and/or Fortescue at any time during the period from 25 March 2019 to 12 November 2021, and/or the Third Respondent at any time during the period from 15 February 2021 to 12 November 2021, in relation to an electrochemical reduction process involving Ionic Liquid.

2. [Not used]

2A. All documents, and all documents recording information, copied, taken or otherwise obtained by the Second Respondent or the Third Respondent from Fortescue (including Fortescue’s network, systems or devices) in the period from September 2021 to November 2021, including:

(a) the documents copied by the Second Respondent while working from home in October and November 2021;

(b) the documents taken by the Second Respondent “to finish off [his] work for Fortescue”, referred to in paragraph 50 of the Second Respondent’s affidavit sworn on 19 June 2024;

(c) the documents “saved on the local drives of [the Second Respondent’s] Fortescue laptop”, referred to in paragraph 50 of the Second Respondent’s affidavit sworn on 19 June 2024;

(d) “the files on the local drives” deleted from the Second Respondent’s Fortescue laptop, referred to in paragraph 51 of the Second Respondent’s affidavit sworn on 19 June 2024;

(e) the documents in the TempSD folder, referred to in paragraph 52 of the Second Respondent’s affidavit sworn on 19 June 2024;

(f) the documents on the Toshiba USB device (serial 07080A078F1B6304) and on the Kingston USB device (serial 900042ACAE668708); and

(g) the documents sent by the Third Respondent from his Fortescue email address “bjorn.wintherjensen@fmgl.com.au” to his personal email address “bjornwj@gmail.com”.

3. All documents evidencing the location and storage of any of the documents referred to in category 1 and 2A above during:

(a) the period 25 March 2019 to 12 November 2021;

(b) after 12 November 2021;

noting that compliance with this category does not require the “forensic investigation and analysis of the Element Zero Respondents' computer systems”, in the sense described in the affidavit of Michael Williams sworn 29 December 2024 at paragraph [45].

4. [Not used]

5. All documents recording or evidencing any of the Respondents’ reference to the confidentiality of any of the documents referred to in category 1 and 2A above.

Specified Documents

6. All documents constituting or referring to the First Specified Documents.

6A.   All documents concerning the design, engineering, construction, operation and/or feasibility of a green iron pilot plant, that were taken or copied by the Second or Third Respondents from Fortescue during the period 1 January 2021, until they respectively ceased employment with Fortescue.

7. All documents constituting or referring to the Second Specified Documents.

8. All documents recording or evidencing any use or disclosure of any one or more of the First and/or Second Specified Documents by any one or more of the Respondents or their agents.

9. [Not used]

Element Zero-related documents

10. [Not used]

11. All versions, including drafts, of the following documents (howsoever described):

(a) basis of design documents for the First Respondent’s pilot or trial plant/s, including the “Element Zero Trial Plant” (referred to in paragraph 30 of the EZ Parties’ defence);

(b) piping and instrumentation documents for the First Respondent’s pilot or trial plant/s, including the Element Zero Trial Plant;

(c) laboratory books (either in hard or soft copy) recording work done with respect to the development of each of beneficiation and leaching of ores and electroplating and/or electrowinning and/or electrolyte development during the period from January 2022 to February 2024;

(d) any documents provided by or on behalf of the Respondents or any of them to Playground Ventures containing any information in relation to chemical processes, plant design, the green iron/green steel industry and/or industry participants;

(e) documents recording or evidencing the “retirement ‘project’”, the “work[ ] with nickel [and] iron”, and the “work that eventually led to the creation of Element Zero”, referred to in paragraph 40 of the affidavit of Bjorn Winther-Jensen affirmed on 8 July 2024;

(f) documents recording the research and development of:

i. the “Element Zero Process” referred to in paragraph 29 of the EZ Parties’ defence; or

ii. the “Element Zero process” referred to in paragraphs 29(b)-(c) of Dr Winther-Jensen’s defence,

during the period from January 2022 to February 2024.

12. One or more documents recording or evidencing the amount of expenditure on designing, engineering and constructing the First Respondent’s pilot or trial plant/s, including the Element Zero Trial Plant.

Documents showing use / patent docs

13. Copies of all patents and patent applications (or divisional or related patents and patent applications) filed by any of the Respondents, or in which the Second, Third, and/or Fourth Respondents are named as an inventor concerning any aspect of an electrochemical reduction process involving Ionic Liquid, leaching and/or any aspect of a pilot or trial plant for the electrochemical reduction of ore (including the Element Zero Trial Plant), including drafts thereof, and including but not limited to:

(a) no. 2022903090 entitled “Method of ore processing”;

(b) no. 2023902103 entitled “Ore Processing Method for Metal Recovery”;

(c) no. 2023903979 entitled “Electrowinning from Molten Salt” (979 Application);

(d) no. PCT/AU2023/051041 entitled “Method of ore processing”;

(e) any patent application for an electrochemical reduction process involving Ionic Liquid;

(f) any patent application concerning leaching;

(g) any patent application that relates to the features of a pilot or trial plant (including the Element Zero Trial Plant) in respect of electrochemical reduction of ore;

(h) the patents or patent applications that “cover the overall process and its unique chemistry” as referred to on the Element Zero website as shown at Bhatt AIB-22 p 141;

(i) the patents or patent applications that cover “the complete circuit design for mineral processing incorporating a unique electrolyte” as referred to on the Element Zero website, as shown at Bhatt AIB-22 p 141;

except that the:

(I) Second Respondent is not required to give discovery in respect of patents, patent applications, and drafts thereof that he did not work on after 25 March 2019; and

(II) Third Respondent is not required to give discovery in respect of patents, patent applications, and drafts thereof that he did not work on after 15 February 2021.

14. All documents evidencing or recording the use of any of the documents in categories 1,  2A, 6 and/or 7 above for or in preparing or inventing any of the patents or patent applications referred to in category 13 above.

SCHEDULE OF PARTIES