This unsuccessful application for an interlocutory injunction highlights some of the difficulties involved in establishing that a breach of confidential information has taken place, and in particular, the difficulty in linking the confidential information at issue and the alleged misuse of that information by a respondent.
The third respondent, Mr Bourcier was formerly employed as the senior designer for the first applicant, a company that made mixed flow fans for ventilation of mine shafts. During his time with the first applicant, Mr Bourcier had been involved in a major project which led to the re-engineering of Howden’s mixed flow fans (Howden Fans).
Mr Bourcier subsequently went to work for the first respondent. At the time Mr Bourcier commenced employment with the first respondent, the first respondent did not make mixed flow fans. However, within five months, the first respondent filed two provisional applications for mixed flow fans naming Mr Bourcier as the inventor. The first respondent also began to supply its own mixed flow fans (Minetek Fans).
The applicants commenced proceedings alleging breach of confidence, breach of contract, and misleading or deceptive conduct, and sought an interlocutory injunction to restrain the respondents from using or disclosing what was claimed to be certain confidential information in respect of the fan (Howden Confidential Information), as well as from supplying or offering to supply the fan or its components. The Applicants argued that Mr Bourcier misused and disclosed the Howden Confidential information, which concerned the Howden Fan, in his work for the first respondent and in the patent applications.
The Howden Confidential Information was defined to include certain sections of the “Mixed Flow Fan Design Manual” and of the “General Design Manual”. The applicants alleged that, among other things, the similarity between Howden Fan and the Minetek Fan was evidence that the respondents had misused the Howden Confidential Information.
Justice Jagot found that, although Mr Bourcier had access to the Mixed Flow Fan Design Manual (and of the General Design Manual), and his work on the redesign project led to the revision of the Mixed Flow Fan Design Manual, there was no evidence that he had taken this information with him when he left the first applicant’s employment.
While the interlocutory injunction proceedings did not constitute a “trial within a trial”, there were a number of problems with Howden’s evidence that went to identifying the confidential information that was alleged to have been misused by Mr Bourcier. In particular:
- Although Mr Bourcier had been involved in a major project that had led to significant revisions to the Mixed Flow Fan Design Manual, the evidence did not specify the design work that was said to have been incorporated into the Mixed Flow Fan Design Manual or the form in which this work was incorporated. The evidence so far as it went was at a very general level; and
- Each of the pages comprising the documents making up the Howden Confidential Information bore a creation date well after Mr Bourcier left the employment of Howden Australia. There was no evidence that indicated that Mr Bourcier could have seen the information in this form.
In light of the above, it was not clear whether the information that Mr Bourcier had seen during his employment with the first applicant was the same as the information that ended up in the “Mixed Flow Fan Manual”.
Further, a key part of the Applicant’s argument was the similarity between the Howden Fan and the Minetek Fan was evidence, given that the Howden Fan was alleged to be based on the Howden Confidential Information. However, none of the evidence identified which parts, if any, of the Howden Confidential Information appeared in the Howden Fan, or in the result, the Minetek Fan. There was no evidence that the Howden Fan did not reflect information generally available to designers of fans.
Further, while the matter was not a mini trial there was evidence from Mr Bourcier that he did not use any Howden Confidential Information in the design of the Minetek Fan, and that he designed the Minetek Fan using publicly available resources.
Finding against Howden on the prima facie case, her Honour also found that the balance of convenience did not favour the grant of the interlocutory injunction. Howden’s losses would be quantifiable and there was no evidence that the Howden Confidential Information would be disclosed through either the Minetek fan or the design drawings and instruction manuals, there already being evidence that fans of this type could not be reverse engineered nor were they readily able to be inspected.