Experimental evidence in patent cases: Discovery not available for experiments on matters no longer in issue

A recent Federal Court decision in Merck Sharp & Dohme Corp. v Ono Pharmaceutical Co., Ltd [2016] FCA 1015 sheds some light on experimental evidence in patent cases.

In patent cases, it is not uncommon to conduct preliminary experiments on a confidential and privileged basis prior to deciding whether or not to seek to rely on experimental evidence at trial. It is also not uncommon that not all of the experiments in the preliminary trial will be relevant to the issues in the case, as those issues become refined during case preparation.

Where a party puts forward to the other party preliminary experimental results, for example in an effort to persuade the other party to provide consent to introduce the results into evidence without repeating the experiments (as would otherwise be required by the court rules), is the other party entitled to have discovery of experimental results relating to matters no longer in issue?