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ARTICLE · 20 AUGUST 2020

Injecting preliminary discovery into patent infringement proceedings

Spruson & Ferguson Lawyers
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This case highlights how preliminary discovery applications can be used by a patentee to inform its decision-making .

AustraliaIntellectual Property
Chris Byrnes
Chris Byrnes
Duncan Longstaff
Duncan Longstaff
Michael Zammit
Michael Zammit
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Sovereign Hydroseal Pty Ltd v Steynberg [2020] FCA 1084

An application for preliminary discovery of documents relating to the constituents of a 'sealing composition' and methods of using it to seal passages was granted in circumstances where an exclusive licensee of the asserted patent suspected infringement by a third party based on past employment, access to confidential information, information from a private investigator, and the similarities of the processes being carried out by both parties. The scope of the discovery order was limited due to the financial circumstances of the respondent.

Background

Sovereign Hydroseal Pty Ltd (Sovereign) is the exclusive licensee of Australian Patent No. 2012216392 (392 Patent) which relates to a method and composition for sealing passages such as cracks, joints and voids in concrete structures and geological formations using a sealing composition. The sealing composition, which includes a mix of latex and additional

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