Federal Court of Australia

Bovell v State of Western Australia [2026] FCA 991

ORDERS

THE COURT ORDERS THAT:

1.    The respondent’s application for discovery of categories 1 to 3, found at Annexure 1 of the respondent’s written submissions dated 29 May 2026, be dismissed.

2.    If any party seeks a costs order other than an order that costs be costs in the cause then:

(a)    that party should, within 7 days of the date of this order, file and serve and email to the Chambers of Justice Moore any evidence and short written submissions;

(b)    the other party(ies) should, within a further 7 days, file and serve and email to the Chambers of Justice Moore any evidence in response and short written submissions in response; and

(c)    any application about costs will be determined on the papers.

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

REASONS FOR JUDGMENT

MOORE J:

Introduction

1    The applicants, Christopher Bovell (Mr Bovell) and GM & CB Pty Ltd (GM & CB), have filed an amended statement of claim dated 21 July 2025 alleging that the respondent, the State of Western Australia comprising the Western Australia Department of Justice, has infringed two patents related to the manufacture of fire-retardant mattresses, being Innovation Patent No 2015100604 titled ‘Fire-retardant polyurethane foam mattress and method of manufacture thereof’ (604 Patent) and Patent No 2019203109 titled ‘Fire-retardant mattress and method of manufacture thereof’ (109 Patent) (together, the Patents). Mr Bovell is the registered proprietor, and GM & CB alleges that it is the exclusive licensee, of the Patents.

2    The respondent has filed a notice of cross-claim dated 2 October 2025 seeking revocation of claims 1 and 2 of the 604 Patent (604 Asserted Claims) as well as claims 1, 3, 4, 7, 10, 11, 15, 16, 17 and 19 of the 109 Patent (109 Asserted Claims) on the basis of patent invalidity. The respondent alleges in its cross-claim that these claims are invalid for: want of novelty, lack of innovative/inventive step (noting that the 604 Patent is an innovation patent) and because they are not a manner of manufacture within the meaning of section 6 of the Statute of Monopolies 1623.

3    Each of the applicants and the respondent have sought discovery from the other. In that regard, the respondent seeks discovery of documents relating to the invention the subject of the Patents, information surrounding development of Natritex FireGuard III mattresses (being those mattresses said to embody the claims of the Patents and made by GM & CB), and the profit associated with the supply of such Natritex mattresses.

4    Pursuant to orders made by this Court on 5 May 2026, both parties have filed and served evidence and written submissions in relation to the discovery sought.

5    The issues arising from the parties’ discovery applications were dealt with in an oral hearing before the Court on 12 June 2026, and in the orders made by this Court on 22 June 2026, save for categories 1 – 3 of the categories proposed by the respondent (Respondent’s Discovery Categories).

6    Categories 1 – 3 of the Respondent’s Discovery Categories are as follows:

1.    All Research and Development Documents created or dated up to and including the Priority Date, relating to the Natritex Mattress or any Prototype of the Natritex Mattress.

2.    To the extent not encompassed by category 1, copies of all Inventor Documents created or dated up to and including the Priority Date, relating to work done by the First Applicant in relation to the invention disclosed in each of the Patents.

3.    To the extent not encompassed by categories 1 or 2, all Test Reports, and all Documents recording the testing undertaken for the Test Reports, including copies of any videos, test data and draft Test Reports created or dated up to and including the Priority Date.

7    “Research and Development Documents” are defined as documents relating to, recording or evidencing any investigation, development, research, testing, manufacture, analysis and/or experimental work, including conception, development, simulation, testing, and/or prototyping. “Inventor Documents” are defined as all documents comprising inventor’s notes, invention disclosure statements, reports, working documents, descriptions of experimental protocols and experimental reports. “Test Reports” are defined to include any reports recording the results of any testing of the Natritex Mattress, or any prototype of the same, referred to on the Natritex website.

8    During the hearing before the Court on 12 June 2026, having dealt with the other discovery issues, I indicated to the parties that I would give further consideration to the dispute as to categories 1 – 3 of the Respondent’s Discovery Categories and would determine that dispute on the papers and by reference to the written submissions as well as the short oral submissions of counsel made on 12 June 2026. These are my reasons in relation to categories 1 – 3 of the Respondent’s Discovery Categories.

Evidence

9    The respondent relies on one affidavit in support of its proposed discovery categories, being the affidavit of Robynne Lyndsay Sanders affirmed on 29 May 2026 (Sanders Affidavit).

10    No objection was raised by the applicants to this evidence, and the evidence will therefore be read on this application.

The Respondent’s Position

11    In relation to categories 1 and 2 of the Respondent’s Discovery Categories, being research and development documents relating to Natritex mattresses and any inventor documents relating to the steps taken by Mr Bovell in developing the invention disclosed in the Patents, this discovery is sought on the basis that the documents are directly relevant to the cross-claim for lack of innovative/inventive step, manner of manufacture and novelty.

12    At paragraph [11] of its written submissions in chief on discovery dated 29 May 2026, the respondent contends that the documents sought by categories 1 and 2 are relevant because they are likely to demonstrate if the inventor took “any steps of significance” in creating the invention the subject of the Patents. The respondent contends that the documents may be relevant to:

(a)    inventiveness, to the extent they demonstrate that the invention in dispute is a “simple ‘low level’ invention” which would be obvious to the person skilled in the art;

(b)    novelty, to the extent they demonstrate that the inventor had regard to any of the prior art documents pleaded in the cross-claim; and

(c)    manner of manufacture, to the extent they demonstrate the integers of the 604 and 109 Asserted Claims were known and no more than common general knowledge as at the priority date, as suggested by Ms Sanders at [22](b) of the Sanders Affidavit.

13    The respondent further contends that the documents produced under categories 1 and 2 may be relevant to the instructions given to any expert engaged by the respondent. It submits that, as it bears the onus on its cross-claim, it ought to have access to such documents at this stage of the proceedings.

14    In relation to category 3 of the Respondent’s Discovery Categories, the respondent contends at paragraph [13] of its written submissions that the test reports in relation to the Natritex mattresses would be relevant to the claims relating to lack of innovative/inventive step and manner of manufacture to the extent they may evidence that the testing undertaken was “routine and does not form part of any inventive concept”.

15    Finally, the respondent contends that the authorities indicate that inventor notes are relevant to the question of inventive step and that there is no express principle to the effect that the inventor must first go into evidence before discovery of such ‘inventor notes’ or ‘inventor documents’ (including documents of the type outlined in categories 1 – 3) will be ordered by the Court. Teva Pharma Australia Pty Ltd v Boehringer Ingelheim Pharma GMBH & Co KG [2019] FCA 625 (Moshinsky J) (Teva) and Pfizer Ireland Pharmaceuticals v Samsung Bioepsis AU Pty Ltd (No 4) (2024) 180 IPR 140; [2024] FCA 678 (Burley J) (Pfizer) are cited in support of this contention.

The Applicants’ Position

16    The applicants contend in their written submissions dated 5 June 2026 that the authorities in relation to the discovery of inventor documents (including Teva and Pfizer) indicate that such inventor documents are typically of secondary significance.

17    The applicants contend that categories 1 – 3 of the Respondent’s Discovery Categories should be refused, on the basis that these categories are broadly cast and seek the entirety of the inventor documents in relation to the Natritex mattresses, whereas the authorities in relation to the discovery of inventor documents demonstrate that:

(a)    broad requests for discovery not focussed on particular factual issues are invariably refused by the Court;

(b)    inventor documents are unlikely to be relevant if a cross-claim merely pleads lack of inventive step in light of the common general knowledge and particular prior art; and

(c)    discovery of limited categories of inventor documents may be appropriate if there is evidence that establishes why the documents are relevant to the issues on the cross-claim.

18    The applicants cite a number of authorities in support of the above contentions, including Schutz DSL (Australia) Pty Ltd v VIP Plastic Packaging Pty Ltd (No 14) [2011] FCA 1159 (McKerracher J) (Schutz), BlueScope Steel Limited v Dongkuk Steel Mill Co., Ltd (2017) 135 IPR 1; [2017] FCA 1537 (Beach J) (BlueScope), Teva and Pfizer. Reference is also made to Wellcome Foundation Ltd v VR Laboratories (Aust) Pty Ltd (1981) 148 CLR 262; [1981] HCA 12 (Aikin J) (Wellcome).

19    In applying these authorities, the applicants contend that the documents in categories 1 – 3 of the Respondent’s Discovery Categories are not relevant to the issue of manner of manufacture or inventive/innovative step. It submits this is because the inventor’s own actions cannot be relevant to the objective tests for determining manner of manufacture and inventive step, as found in ss 18(1)(a) and 7 of the Patents Act 1990 (Cth) respectively, which are focussed on the hypothetical skilled addressee. In a similar way, the applicants also contend that categories 1 and 2 are irrelevant to the question of novelty because the prior art the inventor considered is irrelevant to, and should not form part of, the novelty analysis.

20    In relation to the respondent’s submission that the documents in categories 1 and 2 are likely to be relevant to the instructions given to any expert engaged by the respondents, the applicants submit, citing Minnesota Mining & Manufacturing Co v Tyco Electronics Pty Ltd (2002) 56 IPR 248; [2002] FCAFC 315 at [45] (Tyco) and PAC Mining Pty Ltd v ESCO Corporation (2009) 80 IPR 1; [2009] FCAFC 18 (ESCO) at [80], that to ask an expert to comment on the steps taken by the inventor in developing the invention would be to compromise the evidence and, in any event, would not properly be directed to the objective test of obviousness.

Consideration

21    Categories 1 – 3 of the Respondent’s Discovery Categories seek discovery of the type contemplated in Wellcome, being discovery of documents relating to the “research and development and experimental work on the claimed invention” up to and including the priority date of the claimed invention: Wellcome at 269.

22    Wellcome contemplates that such ‘inventor documents’ may be discoverable, including because they may suggest a line of enquiry worth investigating. However, as observed in Schutz at [9]–[10] (McKerracher J) and Bluescope at [30] (Beach J), the Peruvian Guano test (Compagnie Financiere et Commerciale du Pacifique v Peruvian Guano Co (1882) 11 QBD 55; [1882] 12 WLUK 68) is no longer the test for discovery. Further, as the respondent quite properly recognises in its written submissions at [4], consistently with paragraph 10.6 of the Central Practice Note (CPN-1), discovery will generally only be ordered where the documents are, or are very likely to be, significantly probative in nature, or where the documents materially support a party’s case.

23    In Schutz, McKerracher J refused discovery partly on the basis that the categories were “so broad as to be oppressive on their face”: Schutz at [12], [15], [20]. In Bluescope, Beach J made reference to the more limited relevance of inventor documents to the question of inventive step found in s 7 of the Patents Act 1990 (Cth) given that the “test is not assessed by direct reference to what the inventor actually thought or did”: Bluescope at [37].

24    In Pfizer, Burley J declined to order the discovery of inventor document in circumstances where the respondent alleged a lack of inventive step on the basis of a bare allegation of obviousness in light of common general knowledge, and also an allegation of lack of inventive step based on a combination of common general knowledge and 6 items of prior art, each considered separately, as well as combinations of prior art documents. That gave rise to over 80 combinations. In the present case, there are fewer permutations (6 in total), but the situation is otherwise analogous. His Honour made the following observations (at [14]–[15]):

The relevance of Wellcome style discovery will vary from case to case. In the event that the patentee chooses to give evidence of the inventive steps involved leading to the invention, then the relevance of such documents is likely to be elevated. In other cases, there may be particular indications that the inventors took a certain route to the invention that warrant the provision of discovery.

However, in the present case, the pleading is focussed on the state of the common general knowledge and the welter of combinations of prior art documents said to be relevant to the Patents Act s 7(3) case. Given the number of permutations and items of prior art pleaded, it may be said that the lack of inventive step case takes something of a poorly focussed, scattergun approach. The relevance of the inventor’s own path to the invention is truly secondary. Indeed, the pleading gives no inkling that it is relevant at all. In that context, the pleading provides some support for the criticism advanced by the applicants that category 1 is no more than an exercise in fishing. Although there is no evidence that it would be oppressive to grant discovery, it is implicit that additional work will be required, not only on the part of the applicants in producing documents, but also the respondents in absorbing and assimilating. If adduced in evidence, there will be more work because that evidence must be considered and answered. Furthermore, in the event that arguments are put forward, they must be considered by the Court. All of this adds to the cost of the proceedings.

25    The respondent contends that its discovery categories are distinguishable from Pfizer, on the basis that it has not put forth an inventive step claim which is “poorly focussed” (as Burley J found in Pfizer at [15]) and instead submits that it has made specific allegations of invalidity based on a limited number of prior art documents. While it may be true that the pleadings appear to be somewhat more focussed than in Pfizer, the essential structure of the obviousness case remains. The allegation is that the invention is obvious in light of common general knowledge or common general knowledge when taken with one of several individual documents or combinations of documents. Discovery is sought in respect of a broad group of inventor documents where the respondents are asserting lack of inventive/innovative step over unspecified common general knowledge and with a cross-claim that does not give an inkling as to how the inventor’s own path to the invention would assume direct significance: cf. Pfizer at [15].

26    In relation to manner of manufacture, in Sanofi v Amgen Inc. [2023] FCA 264 (Sanofi), Nicholas J refused to order discovery of transcripts of the cross-examination of inventors in other proceedings on the basis that it was “unlikely that the inventors’ evidence would be of any assistance” in determining if the inventions were a manner of manufacture because this ground of invalidity should be determined objectively “based on a reading of the relevant patent applications through the eyes of the notional skilled addressee”: Sanofi at [25] and [29].

27    In the present case, the respondent seeks to justify the requested discovery as relevant to manner of manufacture, novelty, and inventive/innovative step.

28    In relation to manner of manufacture, this would not ordinarily be a basis for ordering the requested discovery for the reasons given by Nicholas J in Sanofi. The question of whether the invention disclosed in the specification is a patentable invention is an objective question unrelated to, and uninfluenced by, the particular steps taken by the inventor. No issue to which the documents may be probative has been identified in the present case.

29    In relation to novelty, this again is not ordinarily a basis for ordering discovery. The question of whether an invention is anticipated by a prior document is an objective question as to whether all of the integers of a claimed invention are disclosed in a relevant prior art document, which is not related to (or affected by) the particular pathway adopted by the inventor in coming up with the invention, or whether the inventor had regard to that document. The prospect of the documents amounting to some sort of useful admission is sufficiently low as not to justify broad discovery.

30    In relation to inventive step, there may be cases where documents relating to the steps taken by the inventor are sufficiently relevant to be discoverable. That may well be the case if the inventor decides to go into evidence and assert that he or she undertook an inventive process. There may also be cases where the inventor documents may shed light on a distinct and identified issue.

31    However, where the respondent makes a general allegation of lack of inventive or innovative step in light of the common general knowledge, or the common general knowledge together with a prior art document or documents, inventor documents (or documents revealing what the respondent described in oral submissions as “the pathway to the invention”) are not discoverable as a matter of course. Something more would usually be necessary, and something more is required in the present case. Otherwise, the request for discovery is liable to be a fishing expedition. In that regard, I agree with the observations of Burley J in Pfizer, referred to above.

32    Here, the respondent submits that the invention is a particularly simple one and therefore the documents sought are likely to shed light on whether there was anything other than an obvious and routine step taken in developing the invention. As noted above, the respondent submits that the documents are likely to demonstrate if the inventor took “any steps of significance”. However, some of the best inventions are simple (or appear simple in hindsight). And a patentable invention could be something thought of in a flash of inspiration or recalled from a dream. It follows that documents evidencing the absence of a detailed or laborious process of creation are not suggestive of a lack of inventive step, particularly where the technology involved is relatively simple. In the circumstances of the present case, some other forensic basis would need to be identified before the Court would order the somewhat broad-ranging discovery sought in categories 1 – 3.

33    It was suggested by the respondent that the discovered documents may be pertinent to the briefing of the respondent’s expert. However, I agree with the submissions of the applicant that to instruct an expert to address the issue of obviousness by reference to the inventor documents would likely produce a report that is compromised by hindsight reasoning: Tyco and ESCO. The respondent’s expert would need to undertake any consideration of inventive step without any information drawn from the process undertaken by the inventor. In oral submissions, counsel for the respondent said that an experienced firm could be expected to instruct an expert in a way that would avoid any such difficulties. However, it was not explained how the discovered documents could be used in a way that did not give rise to the relevant difficulty. More generally, having regard to the nature of the task to be undertaken by the respondent’s experts, no forensic need or significant probative value has been identified in connection with the discovery sought for the purpose of instructing an expert.

34    Finally, I note that in its written submissions, the respondent submits that the applicants do not suggest that discovery in accordance with categories 1 – 3 will be oppressive or burdensome. That may be so. However, the categories are not narrow, and as Burley J observed in Pfizer any discovery increases the costs of the proceedings, and therefore needs to be justified.

35    I therefore decline to order discovery in accordance with categories 1 – 3 of the Respondent’s Discovery Categories.

36    This conclusion does not exclude the possibility that discovery falling within those categories may be appropriate if the applicants put on evidence relating to the inventor’s steps or process.

Costs

37    I did not receive any meaningful submission in relation to the costs of the discovery dispute, including by reference to what had previously been resolved between the parties. In those circumstances, the orders will make provision for either side to raise the question of costs and file appropriate evidence and submissions, if any party seeks any order other than that costs be costs in the cause.

Associate:

Dated:    28 July 2026