Anan Kasei Company, Ltd v Neo Chemicals & Oxides (Europe) Ltd
Jurisdiction | England & Wales |
Judge | Mr Justice Marcus Smith |
Judgment Date | 16 September 2020 |
Neutral Citation | [2020] EWHC 2503 (Pat) |
Date | 16 September 2020 |
Docket Number | Case No: HP-2016-000018 |
Court | Chancery Division (Patents Court) |
[2020] EWHC 2503 (Pat)
THE HONOURABLE Mr Justice Marcus Smith
(Remotely via Skype)
Case No: HP-2016-000018
IN THE HIGH COURT OF JUSTICE
BUSINESS AND PROPERTY COURTS OF ENGLAND AND WALES
INTELLECTUAL PROPERTY LIST (ChD)
PATENTS COURT
The Royal Courts of Justice
Rolls Building
7 Rolls Buildings
Fetter Lane
London EC4A 1NL
Mr Miles Copeland (instructed by Hogan Lovells International LLP) for the Claimants
Mr Adam Gamsa (instructed by Bird & Bird LLP) for the Defendants
Approved Judgment
Transcript of the Stenograph Notes of Marten Walsh Cherer Ltd 2 nd Floor, Quality House, 6–9 Quality Court, Chancery Lane, London WC2A 1HP Tel No: 020 7067 2900 DX: 410 LDE Email: Web:
I have before me an application by the Defendants herein (together, Neo) regarding the framing or formulation of a confidentiality ring intended to protect certain highly confidential documents that have been disclosed by the Claimants (together, Rhodia) in these proceedings.
The order that is sought is framed in the following terms by Neo in the draft order that is before me:
“Kevin Morris be permitted to have disclosed to him the confidential witness statement of Edward Mackay and the confidential annex to the Claimants' Points of Claim on the terms set out in the letter dated 13 July from Hogan Lovels LLP to Bird & Bird LLP.”
I shall refer to the documents in issue – and, as can be seen, as matters stand these documents are relatively narrow in scope – as the Confidential Material. There is no dispute between the parties that the Confidential Material is highly confidential to Rhodia. Before me, that was accepted by Neo. There may have been some suggestion, in the past, that Neo did not accept that the Confidential Material was as confidential as Rhodia was suggesting. But that contention was not maintained before me; and I proceed on the basis that this is highly confidential material to Rhodia; and that it would be damaging to Rhodia were the confidentiality of the Confidential Material to be breached.
It is necessary to provide some context:
i) The trial on liability in these proceedings took place in January 2018 and, in a judgment handed down on 23 April 2018, Mr Roger Wyand, QC, held that the patent in suit was valid and infringed. There was an appeal of that judgment. The appeal was dismissed.
ii) The present proceedings concern an inquiry as to damages, that being the remedy Rhodia elected after the provision, by Neo, of certain pre-election disclosure. In the pleadings, Rhodia claims for loss of profits.
iii) The Confidential Material goes to those claims. Self-evidently, since it is provided by Rhodia in support of its claim, the Confidential Material is relevant to these proceedings, and I do not understand Rhodia to contend otherwise. It would be remarkable (and, indeed, incredible) for Rhodia to contend for irrelevance, given that this is material Rhodia has adduced in support of the damages claim.
Rhodia is prepared to allow – and has allowed – Neo's lawyers and accounting experts to consider the Confidential Material, albeit subject to the terms of a confidentiality ring. What Rhodia is not prepared to allow is for anyone within Neo – apart from the lawyers and the experts admitted to the confidentiality ring – to see or consider the Confidential Material. In short, Rhodia is (in the first instance) contending for a confidentiality ring that excludes Neo and admits only the persons instructed by Neo to the confidentiality ring. 1 As an alternative, Rhodia contends that someone other than Mr Morris should be admitted to the confidentiality ring.
The courts have long been sensitive to protecting confidential information. Thus, where an otherwise relevant document contains irrelevant material, redaction is permitted; equally, where a document is sensitive to third parties – but not to the parties to the case – a hearing can be conducted without open reference to that document, if necessary in private. Confidentiality rings have come to be used – often in competition and intellectual property proceedings – where a document is (i) relevant but (ii) so sensitive that even the persons involved in the litigation entitled to see the document must be limited to named persons, who are admitted to the confidentiality ring, giving certain undertakings as the price for admission to the ring.
It is clearly understood that the foregoing methods of protecting confidential information constitute derogations from the normal regime that have to be justified by reference to factors specific to the case in question. The normal regime is that disclosure of documents takes place, and that the party receiving another's disclosed documents receives those documents subject to the express undertaking contained in CPR 31.22 of the Civil Procedure Rules to use a disclosed document only for the purpose of the proceedings in which that document has been disclosed.
Before ordering a confidentiality ring – even with the consent of the parties to the proceedings – a judge is well-advised to considered carefully the need for such protection of confidential material. That is because confidentiality rings constitute – in theory and (if tightly drawn) also in practice – a form of “closed material” procedure of the sort warned against in the Supreme Court decisions of Al Rawi and Bank Mellat. 2 Such processes must be considered with care, because: 3
i) Certain evidence is not heard in public; 4
ii) Persons who would normally be entitled to see such material (a party to the proceedings) have that access reduced or excluded altogether.
Thus, even where (which is not the case here) the terms of a confidentiality ring are agreed between the parties to the proceedings, the court must be satisfied that the
Exclusion of a party to the proceedings from a confidentiality ring obviously requires particularly clear and cogent justification. Thus, in TQ Delta v. Zyxel, 5 Henry Carr J stated:
“21. In my judgment, the authorities discussed above establish that it is exceptional to limit access to documents in the case to external eyes only, so that no representative from the party which is subject to the restriction can see and understand those documents. An external eyes tier does not require justification for the restriction by reference to individual documents. It enables one party to decide to exclude all representatives of the opposite party from access to any document that it chooses, and places the onus on the party seeking access to apply to court to obtain it. That approach, in my judgment, is wrong in principle…
…
24. An external, eyes only, tier enables a blanket exclusion of access by one of the parties to the relevant parts of key documents. This is incompatible with the right to a fair hearing under Article 6 of the European Convention on Human Rights,...
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