AUSTRALIA Law and Practice Contributed by: John Lee, Siabon Seet, Vanessa Farago-Diener and Irini Lantis, Gilbert + Tobin
Other Mechanisms Other mechanisms to obtain evidence include the fol - lowing. • Identity discovery – this is an order requiring a party to give evidence or produce documents relat - ing to the identity of a prospective defendant. • Search orders (Anton Piller orders) – a search order requires the defendant to permit persons to enter its premises for the purpose of securing the preser - vation of evidence that may be relevant to an issue in the proceeding (or prospective proceeding). • Inspection orders – these are orders to inspect, sample, observe or conduct an experiment on any document or item. • Interrogatories – these are orders requiring another party to provide written answers to questions, veri - fied on affidavit. • Notices to admit facts or documents – a party can require another party to admit the truth of any fact or the authenticity of any document. • Notice to produce – a notice to produce is a request for the inspection of any document or item. • Subpoenas – subpoenas require attendance in court to give evidence and/or produce any docu - ment or item. 5.8 Maintaining Secrecy While Litigating In order to maintain the secrecy of the trade secret or confidential information at issue in a proceeding, Australian courts will often make orders requiring that certain materials (including evidence, documents pro - duced, and parts of judgments) be kept confidential and only available to certain persons or classes of per - sons (eg, the parties’ legal advisers, experts retained in the proceedings, and the principal instructing in- house counsel). 5.9 Defending Against Allegations of Misappropriation Defences or potential arguments available to a defend - ant in trade secret proceedings include: • that the information is in the public domain; • that the information does not have the necessary quality of confidence; • that the plaintiff has failed to identify with preci - sion what information the defendant is said to have
used – identification in global terms by the plaintiff is insufficient; • that the alleged duty of confidence is not owed by the defendant to any particular person – an equita - ble duty of confidence is not owed at large – rather, it is owed to certain persons having imparted infor - mation in circumstances importing an obligation of confidence; • that there has been independent creation; and • that the plaintiff cannot establish a causal con - nection between the defendant’s actions and the alleged breach. 5.10 Dispositive Motions Prior to trial, a party can seek “summary judgment” (in relation to the whole or any part of the proceeding) where the other party has no “reasonable prospect” of successfully defending or prosecuting the claim. The court can also give judgment (generally or in relation to any claim for relief) where it is satisfied that the pro - ceeding or claim is frivolous, vexatious, an abuse of process or no reasonable cause of action is disclosed. When requesting summary judgment, the moving party will need to provide supporting evidence in the form of an affidavit/s establishing why summary judg - ment is warranted. A party making an application for summary judgment should only do so where there is a strong case that summary judgment is warranted. 5.11 Cost of Litigation It is difficult to accurately estimate the cost of trade secret proceedings. The cost will depend on factors such as: • the nature and number of asserted grounds in issue; • the number of documents which are said to com - prise the misappropriated trade secret or confiden - tial information; • the nature of the evidence required to establish that the trade secret or confidential information has the necessary quality of confidence; and • the extent to which expert technical evidence is required to support or defend the claim.
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