Answer ... Any party can apply for a court order to require discovery from another party to patent litigation proceedings or, in some circumstances, from a third party which is not party to the proceedings. A discovery application should not be made unless it will facilitate the just resolution of the proceedings as quickly, inexpensively and efficiently as possible. In practice, discovery is often sought in patent infringement proceedings. Usually, a party will request discovery in correspondence before filing a court application and often the parties may agree terms of discovery without a formal court application.

Where discovery is required, the party giving discovery must make reasonable searches and inquiries for all documents falling within the discovery required to be given. A list of the relevant documents is prepared and an affidavit must be sworn by an appropriate employee of the party giving discovery attesting to the searches that have been conducted and confirming that all discoverable documents located are listed. Documents over which privilege is claimed will be listed separately and although they must be identified in the list, privileged documents are not available for inspection by the other party.

Where a discovery order is made, there is an ongoing obligation throughout the proceedings to give discovery of any further discoverable documents which are identified.

Answer ... While ‘general’ discovery of all documents directly relevant to the issues raised in pleadings is possible, the court will usually require the party seeking discovery to justify why the particular documents should be discovered and will order discovery only of clearly defined and specified categories of documents, often limited by parameters such as date and subject matter. The relevance of the categories of discovery sought will need to be justified by reference to the issues arising out of the pleadings. Often it may be necessary to file an affidavit in support of a discovery application to deal with such matters.

Where discovery is ordered, reasonable searches must be conducted by the party giving discovery in order to comply with the discovery order. The search must be made in good faith, uninfluenced by any negative impact on the party, and should be comprehensive but proportionate. What constitutes a reasonable search will depend on matters such as:

• the nature and complexity of the proceedings;
• the number of documents involved;
• the ease and cost of retrieving a document;
• the significance of any document likely to be found; and
• any other relevant matter.

Confidentiality is not in itself a ground upon which to withhold discovery. Usually, arrangements will be agreed between the parties with respect to confidentiality - for example, whereby access to designated confidential documents is limited to outside counsel or certain named persons within the receiving party.

Answer ... A key limitation is that discovery must not be sought by a party “unless it will facilitate the just resolution of the proceeding as quickly, inexpensively and efficiently as possible” (Rule 20.11 of the Federal Court Rules 2011).

Litigants are expected to abide by guidelines issued by the court that state:

• “Where discovery is necessary, the Court expects the parties and their representatives to take all steps to minimise its burden” (Central Practice Note: National Court Framework and Case Management [10.3]); and
• “A Request [for discovery] must be proportionate to the nature, size and complexity of the case – ie. the Request should not amount to an unreasonable economic or administrative burden on the Discovery Respondent” (Central Practice Note: National Court Framework and Case Management [10.7]).

As mentioned in question 7.2, discovery is generally ordered by reference to specific categories of documents. The precise wording of such categories is often the subject of considerable contention between the parties, and the party seeking discovery has the burden of showing that the discovery is relevant to the issues in the case and proportionate.

Discovery can also be opposed and the court has discretion to refuse a request for discovery on the basis that it is oppressive to a party. This usually requires the party resisting discovery to file an affidavit setting out the time and work involved in searching for and collating documents within the categories sought.

While privileged documents must be included in the discovery list, they cannot be inspected by the other party.