Advanced Drainage Systems Inc v. Microstrain Limited trading as CubicM3

Order 50 Rule 4 of the Rules of the Superior Courts, as interpreted in Bula Ltd v. Tara Mines Ltd (No. 1) [1987] I.R. 85, applied: ‘the starting point in an application like this is that, subject to confidentiality concerns/legitimate commercial interests, a litigant is entitled to inspection of products which he/she needs or where expedient for the case’ [84].

1. 1.1

   Murphy Environmental Ltd v. Spencer Place Development Company Ltd [2020] IECA 78 on equality of arms applied: ‘the underlying rationale for inspection orders is to ensure equality of arms’ [98]. ‘[S]ince Cubic has in its own possession the “evidence” to support/undermine this defence (the RainSafe pipes), the principle of equality of arms means that ADS must have an opportunity to inspect Cubic’s chambers.’ [89]

2. 1.2

   Visual inspection insufficient: ‘It could well be that design features might not be clear from a visual inspection and may require a more detailed examination by machinery or indeed by destruction of the product.’ [93]

3. 1.3

   Not under opponent’s eye: ‘this Court cannot see why ADS should be required to inspect a product in the context of a copyright claim and a passing off claim under the eye of the opposing litigant’ [94]

4. 1.4

   Inferiority relevant to damage: ‘alleged inferiority of the RainSafe chambers (which is more adequately tested by destruction), is not a requirement in order to establish whether there has been a passing off (since the appropriation of goodwill is sufficient to establish damage), … it could be a factor in establishing the extent of any damage.’ [105] Singer Manufacturing Co. v. Loog (1882) 8 App Cas 15 (UKHL) [96] adopted; Polycell Products Ltd v. O’Carroll [1959] I.R. 342 [105] applied.

Confidentiality lost on sale: ‘once Cubic sells its pipes to third parties, they cease, in a practical sense and broadly speaking, to be confidential. How could they be confidential, when the purchaser can do what it likes with those products?’ [103]

1. 2.1

   Former access: ‘Cubic would have had for 20 years full access to samples of ADS’s products.’ [100]

2. 2.2

   No covenant from purchasers: ‘there is no claim by Cubic that it obtains a confidentiality clause or other restrictive covenant from purchasers of its water attenuation system regarding their use of Cubic’s chambers.’ [104]

Carlisle Mortgages Ltd v. Heagney [2019] IEHC 108 on conditions applied: ‘may also be appropriate to attach conditions to an order for inspection so as to respect any commercially sensitive information’ [108]. James Elliott Construction Ltd v. Lagan [2015] IEHC 631 [98] applied.

1. 3.1

   Raw material refused: ‘a member of the public is not entitled to purchase raw materials and so the request for samples of raw material, is of a very different nature from the request of samples of the chambers themselves.’ [109]

2. 3.2

   Testing in Ireland: ‘inspection and testing of Cubic’s products must take place in this jurisdiction and that all records relating to the inspection must be retained here.’ [111]

3. 3.3

   Expert unrestricted: ‘this Court does not believe that Cubic has any right to restrict ADS’s choice of expert by nationality or domicile’ [110]

Reciprocity test: ‘a lot of discovery requests would disappear or be radically amended, if litigants who look for discovery, put themselves in the shoes of the person who is receiving the discovery request and truthfully answered the question of whether they would regard the discovery request as reasonable or proportionate (if they were the person receiving it).’ [36] ‘If the discovery request is not reasonable or proportionate, when so viewed, then that should be end of the discovery request in that form.’ [37]

Biogen Inc. v. Celltrion Inc. [2018] IEHC 239 on long timeframes applied: ‘This case involves a time-range of even longer than the one considered by Barrett J., namely 24 years. This Court does not believe that there is sufficient justification for such a time frame. … this amounts, in this Court’s opinion, to making discovery the search for perfect truth, which was deprecated by the Supreme Court’ [35]. Ryanair Plc v. Aer Rianta Cpt [2003] 4 I.R. 264 [35] applied.

1. 5.1

   Cost of search: Affidavit evidence that search ‘could, according to ADS, be in excess of €1.9 million’ [39].

Ryanair v. Skyscanner Ltd & Ors [2025] IEHC 320 applied: ‘expression “all documents relating to” is too broad for most categories of discovery’ [48]. Aim of discovery ‘documents which are relevant and necessary for disposing fairly of the … matter or for saving costs’ [39].

1. 6.1

   Overlapping categories refused: ‘Overlapping categories or sub-categorisation, as proposed by Cubic, does not, in general, make the task easier of deciding which documents fall within which category. It is, if anything, likely to increase expense’ [55].

2. 6.2

   Representative sample policed by deponent: ‘It is policed by the fact that there is an onus on the person swearing the discovery affidavit on behalf of ADS to ensure that any such documents are truly representative, failing which he/she will have to answer to the court.’ [44]

Keating v. RTE and the Commissioner of An Garda Siochana [2013] 2 I.L.R.M. 145 applied: Discovery requires ‘some information on which the plea is based’ [10]. Photographs, admitted use of ADS materials, domain name ‘stormtech.ie’ and business name sufficient [9].

Tobin v. Minister for Defence [2020] I.R. 211 on confidential documents applied: Disclosure must be ‘truly necessary to the resolution of the proceedings’ [11]. Confidential documents ordered ‘subject to a form of confidentiality agreement/confidentiality ring … in order to ensure that this information is used for the purposes of this litigation and for no other purpose.’ [12]

1. 8.1

   Competitor’s complaints protected: ‘as Cubic is in competition with ADS, Cubic makes the valid point that if it were to disclose to ADS all customer complaints regarding its products, this would be commercially sensitive and damaging information to have to disclose to a competitor.’ [21] Same approach to ADS’s customer complaints [62].

Opponent’s beliefs irrelevant: ‘That core issue (in a copyright context) is what did Cubic do in creating the RainSafe products. It is not what did ADS do or think, which is the focus of this category.’ [71]

Section 17(6) of the Copyright and Related Rights Act 2000 applied: ‘Access to communications is relevant to an analysis of subsistence and title of copyright’ [68].

Tendering is offering for sale: ‘there is express reference at para. 12 of the Statement of Claim to the fact that Cubic has “offered and exposed for sale” its RainSafe pipes in breach of ADS’s rights. In this Court’s view this is sufficient to cover a claim regarding tendering, which is a form of offering for sale.’ [25]

Inspection ordered: Five samples of each chamber, not raw material [107]. Inspection and testing in this jurisdiction [111].

Plaintiff’s discovery: Category 1 on design and development ordered without abandoned designs and attempted third-party agreements [16]. Category 4 limited to confusion with StormTech products [22]. Category 5: ‘10% of the projects, or 10 of the projects, whichever is the larger number, without any time limit’ [28]. Category 6 ordered without sub-category (d) [31] and sub-category (h) [32].

Defendant’s discovery: Category 1A refused [38]; Category 1B ordered [40]. Categories 3(vi) and 3(vii) in Plaintiff’s terms [45], [50]. Category 7 refused and Category 5 extended [57]. Category 8(b) refused [64]. Category 9 in Plaintiff’s terms, with communications on design briefs [68]. Category 10 refused [73]. Category 11 without ‘express or implied’ [77]. Category 13 with Plaintiff’s paragraph (i) [82].

Word Perfect Translation Services Ltd v. Minister for Public Expenditure and Reform [2023] IECA 189 on costs applied: ‘there is an onus on lawyers to take a broad-brush approach to costs.’ [113]