Preliminary discovery in the Federal Court

Preliminary discovery (Discovery) is available to potential applicants (Applicants) in the Federal Court for the purposes of determining whether there is a good cause of action against a prospective respondent (Respondent).  It is not as a mechanism for full discovery.  Discovery is done before the filing of any claim and occurs at the very start of litigious proceedings.

Legislation governing preliminary discovery

Chapter 2 Part 7 Division 7.3 of the Federal Court Rules 2011 (Cth) (Rules) provides for the circumstances where Discovery may be granted.  Furthermore, rule 7.23 states:              

“(1)  A [Applicant] may apply to the Court for an order under subrule (2) if the [Applicant]:

(a)  reasonably believes that the [Applicant] may have the right to obtain relief in the Court from a [Respondent] whose description has been ascertained; and

(b)  after making reasonable inquiries, does not have sufficient information to decide whether to start a proceeding in the Court to obtain that relief; and

(c)  reasonably believes that:

(i)  the [Respondent] has or is likely to have or has had or is likely to have had in the [Respondent’s]  control documents directly relevant to the question whether the [Applicant] has a right to obtain the relief; and

(ii) inspection of the documents by the [Applicant] would assist in making the decision.

(2)  If the Court is satisfied about matters mentioned in subrule (1), the Court may order the [Respondent] to give [D]iscovery to the [Applicant] of the documents of the kind mentioned in subparagraph (1)(c)(i).”

A similar order, pursuant to rule 7.22, may be made to obtain a description of the Respondent.  For example, where an internet service provider may know the Respondent’s description as a result of that person’s use of their internet service.  This is discussed more below.

Rule 7.24 of the Rules provides the procedure to be followed when making an application under rule 7.23, namely that:

“(1)  A [Applicant] who wants to make an application under rule 7.22 or 7.23 must file an originating application, in accordance with Form 14.

(2)  An application must be accompanied by an affidavit:

(a)  stating the facts on which the prospective applicant relies; and

(b)  identifying, as precisely as possible, the documents or categories of documents to which the application relates.

(3)  A copy of the application and affidavit must be served personally on each person against whom the order is sought.”

If the application is successful, rule 7.25 requires that the person ordered to provide the Discovery must do so by filing a list of documents in accordance with rule 20.17.  Rule 20.17 requires that the list of documents be in accordance with Form 38 and describe:

“…(a)  each category of documents in the party’s control sufficiently to identify the category but not necessarily the particular document; and

(b)  each document that has been, but is no longer in the party’s control, a statement of when the document was last in the party’s control and what became of it; and

(c)  each document in the party’s control for which privilege from production is claimed and the grounds of the privilege…”

Furthermore, Rule 7.26 provides that an order for Discovery does not require the production of documents that would not otherwise need to be on the ground of privilege.

If a document is discovered in accordance with the above-mentioned provisions, rule 7.27 states that an Applicant may apply to the Court to have the document produced for inspection.  Upon such production, rule 7.28 provides that the Applicant may, at their own expense, copy or make electronic images of the documents subject to reasonable conditions imposed by the person or people producing them.

An Applicant should be wary, however, that they may be obliged, in accordance with rule 7.29, to pay or give security for the prospective respondent’s costs and expenses, including:

  • costs of giving discovery and production; and
  • costs of complying with an order made under made under division 7.3 of the Rules.

When will the Court allow preliminary discovery?

In the case of ObjectiVision Pty Ltd v Visionsearch Pty Ltd [2014] FCA 1087 (ObjectiVision),  Perry J noted at [30] that:

“Overall, in considering the application for [Discovery], it is important to bear in mind the policy underlying r[ule] 7.23. That policy remains the same as that of its predecessor, O 15A r[ule] 6 of the [Rules], namely that ‘even where there is a reasonable cause to believe that a person may have a right to relief, nevertheless that person may need information to know whether the cost and risk of litigation is worthwhile. …  Given its beneficial purpose, it has been held that the rule ‘should be given the fullest scope its language will reasonably allow.  The proper brake on any excess in its use is the discretion of the [C]ourt, which is required to be exercised in the particular circumstances of each case’.”

Therefore, ObjectiVision provides that the Court is the ultimate fetter on whether or not Discovery will be allowed.  Should the Court be of the view, for any reason, that Discovery is inappropriate in the circumstances then orders will not be granted.  For example, if the Court considers an Applicant has already obtained sufficient information to decide whether or not to bring an application, Discovery will not be granted.  With that said, the Court would likely not deny Discovery in circumstances where it is reasonable it be ordered so.

More recently, an interesting decision Court in Siemens Industry Software Inc v Telstra Corp Ltd [2020] FCA 901 saw the Federal Court allow intellectual property (IP) right holders the opportunity to seek information relating to potential infringements through internet service providers.  The Court considered that, prior to allowing Discovery, it needed to be shown that:

  • the Applicant may have a right to obtain relief against a Respondent;
  • the Applicant cannot identify the Respondent;
  • the Internet Service Provider (Telstra) knows or is likely to know the identity of that person or have a document which reveals it; and
  • the Applicant has made reasonable inquiries or attempts to identify the Respondent.

Takeaways

An order for Discovery may be made to obtain a description of the Respondent.  However, the Court reiterated its retention of the ultimate discretion to allow or deny Discovery but is open to order such if the circumstances indicate doing so would be beneficial or necessary for the Applicant’s claim.

Links and further references

Related articles

Categories of discovery – Federal Court

What is a case management hearing?

What is the springboard doctrine?

Subpoenas to produce documents – Federal Court

Legislation

Federal Court Rules 2011 (Cth)

Cases dealing with preliminary discovery

ObjectiVision Pty Ltd v Visionsearch Pty Ltd [2014] FCA 1087

Siemens Industry Software Inc v Telstra Corp Ltd [2020] FCA 901

Further information

If you need advice on preliminary discover in Federal Court proceedings, contact us for a confidential and obligation free and discussion:

Malcolm Burrows lawyerMalcolm Burrows B.Bus.,MBA.,LL.B.,LL.M.,MQLS.
Legal Practice Director
Telephone: (07) 3221 0013
Mobile: 0419 726 535
e: mburrows@dundaslawyers.com.au

Disclaimer

This article contains general commentary only.  You should not rely on the commentary as legal advice.  Specific legal advice should be obtained to ascertain how the law applies to your particular circumstances.

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