Scope of disclosure of R&D documentation in UK patent litigation cases significantly narrowed

The overriding objective of dealing in cases justly and proportionately is often quoted but ignored by parties. The High Court of the UK in Positec v. Husqvarna [2016] EWHC 1061 (Pat) made it clear that ignoring the objective is not an option. Mr Justice Birss has ruled that patentees will now not normally be required to disclose any R&D documentation showing how the invention was arrived at, for the purposes of assessing obviousness. If disclosure of the inventor’s records is sought, the opponent will need to make out a specific case for it.

Why the invention story is not relevant

As the High Court observed, the inventor’s story has rarely proved to be probative on the question of obviousness. The reason is simple. Whether an invention is worthy of a patent is objectively judged through the eyes of a legal construct, a skilled person in the art who knows all the common general knowledge, reads all documents with interest but is unable to make any inventive steps. Patent protection can be awarded in relation to an invention which is not obvious to such a skilled person. Such a person does not exist in reality and in any case, is certainly not the inventor.Evidence led from an inventor on obviousness, a man who purports to be inventive, is therefore unlikely to be of much assistance, and has proven to be so over the past decades. The primary evidence for deciding the issue of obviousness has always been that of the parties’ expert opinion.

Why R&D documents had to be disclosed in the past

Having said this, the default position in English proceedings for some years used to be standard disclosure, which in short, is to make a reasonable search for, and disclose documents which could be relevant to the dispute. Such a requirement was considered necessary in the interests of justice to prevent litigants from hiding harmful documents. For this reason, the Court of Appeal in the patent case of Nichia v. Argos [2007] EWCA Civ 741 refused to do away with the disclosure of internal documents relating to the work up to the invention. The Court of Appeal came to this conclusion, despite the review of patent cases over the previous 15 years by both Nichia and Argos having shown that R&D documents rarely influenced the judge’s findings and at best stood as secondary evidence only. Since this decision, Courts and litigants have felt the need for there to be some disclosure relating to the making of the invention, albeit often limited.

Then along came reforms to Civil litigation in the UK

However, this time round, the High Court in Positec was able to take a different course from Nichia owing to reforms that had taken place in the intervening period. Mr Justice Birss noted that reforms were made to the Patents County Court (now rebranded Intellectual Property Enterprise Court, IPEC) in 2008, in which litigants were stripped of an automatic right to disclosure and replaced with the requirement to assess the need for disclosure on an issue by issue basis, after a cost/benefit analysis. IPEC has been running successfully ever since. Furthermore, the Jackson review of the effect of civil litigation costs on access to justice in 2013 had prompted a change to the civil procedural rules. This resulted in changes to the rules on disclosure (among other things), including the elimination of standard disclosure as the normal practice. The key provision of the rule on disclosure now stipulates that the court should decide the scope of disclosure “having regard to the overriding objective and the need to limit disclosure to that which is necessary to deal with the case justly” (CPR r31.5(7)).

Emphasis on proportionate case management means extra scrutiny of scope of disclosure

The Court stated that for the reasons recited above, obviousness disclosure would usually not add any value, and if it did, it would usually help the patentee (who remains entitled to disclose the inventor’s records if it so wished). Thus, it held that the right approach under the present Civil Procedure Rules is to provide for no disclosure in “ordinary obviousness cases”. Any requirement for disclosure will need to be accompanied by specific reasoning as to why it would be worth the cost. The risk that no disclosure might lead to sharp practice was counterbalanced by the obligation to preserve and disclose relevant documents (including those that are adverse to the disclosing party) should they become needed at a later date.

Implications for future patent litigation

The provision on disclosure in relation to the issue of infringement is already limited, as the Civil Procedure Rules provide that alleged infringers only need to provide a sworn description of the product or process instead of giving disclosure. Now this decision should help significantly reduce litigation costs on the validity side in most cases by eliminating disclosure altogether, as the level of work involved for disclosure is very extensive. Robin Jacob LJ, the dissenting judge in Nichia, described the extent of the disclosure exercise as follows:

First the documents have to be searched for and identified. This will involve reading them not only by the lawyers but also perhaps by an expert or experts whose assistance in understanding may be needed. The expert may come from within the client, or may be an outside expert. Both sorts of expert may be involved. The inventor may be called in if available to explain his documents. Normally several lawyers and perhaps a patent agent will be required. The relevant has to be sifted from the irrelevant. Often translation will be involved. When all this has been done, the documents are disclosed. The other side’s lawyers aided by their experts then crawl all over them. As is usual they look for references to documents mentioned but not disclosed. This leads to inquiries about missing documents and disputes about that. Not infrequently there are disputes about confidentiality and the formation of complicated “confidentiality clubs” of designated lawyers, patent agents and independent experts, not to mention painfully detailed work on redaction of material said to be irrelevant. On both sides many many hours are spent and many pages are involved. Not infrequently the whole lot ends up being copied for trial…And all for what? Only “secondary evidence” which must be kept “firmly in its place”.

When one puts it like that, it is very easy to see how the present case will impact future patent litigation in the UK significantly, and for the better, not only from the costs perspective but also by enabling litigants and their teams to focus on the relevant evidence and to bring the case to trial more swiftly.

This decision concerned an application by the patentee to limit disclosure of its own documents. A question may arise as to whether the same result would have been reached if the application related to the disclosure of internal R&D documents of a defendant who only arrived at its alleged infringing product/process after seeing the patentee’s invention. Nichia confirmed that such cases are in fact very rare, but in any event such evidence is ultimately at best secondary evidence which must be kept “firmly in its place”.

As at 18 May 2016 we are unaware of any appeal having been filed.