Halliburton Energy Services, Inc. v Smith International (North Sea), Inc. and Smith International, Inc. and Smith International Italia SPA

JurisdictionEngland & Wales
CourtChancery Division (Patents Court)
JudgeMr. Justice Laddie
Judgment Date09 September 2004
Neutral Citation[2004] EWHC 2181 (Pat)
Docket NumberCase No: HC 04 C00114 HC 04 C00690
Date09 September 2004

[2004] EWHC 2181 (Pat)

IN THE HIGH COURT OF JUSTICE

CHANCERY DIVISION

PATENTS COURT

Royal Courts of Justice

Strand, London, WC2A 2LL

Before:

The Honourable Mr. Justice Laddie

Case No: HC 04 C00114

HC 04 C00689

HC 04 C00690

Halliburton Energy Services, Inc
Claimant
and
Smith International (North Sea), Inc
Smith International, Inc
Smith International Italia Spa
Defendants

MR. ANTONY WATSON QC and MR. TOM MITCHESON (instructed by Messrs. Bristows) appeared for the Claimant.

MR. DAVID KITCHIN QC and MR. ADRIAN SPECK (instructed by Messrs. Bird & Bird) appeared for the Defendants.

Hearing date: 9 th September, 2004

APPROVED JUDGMENT

Mr. Justice Laddie
1

I have before me this morning an application brought by the claimant, Halliburton Energy Services, Inc., against the defendants, Smith International (North Sea) Inc., Smith International, Inc and Smith International Italia SPA (the latter will be referred to as "Smith") for the widening out of a confidentiality club containing those people who the defendants are willing to allow to see a confidential product and process description.

2

The parties are competitors in the field of designing and supplying drill bits. I understand that this is a highly competitive market with only a few major players. The parties have been engaged in patent litigation in three countries. First, proceedings were brought by the claimant (or another company within the claimant's group) in the United States of America against one or other of the defendants, or others in the Smith group, for infringement of patents. I understand that that has resulted in a jury trial in which the claimant was successful, although that decision is now under appeal. Second, there are the current proceedings in the English courts, in which three patents are alleged to have been infringed by the defendants. Those are patents relating to drill bits and software for designing drill bits. Third, there are proceedings in Italy which have been commenced more recently than the other two sets of proceedings and which are at an early procedural stage. I will refer to them more fully in a moment.

3

In January of this year Smith served on the claimant a description which related to some (but not all) of the patents now in dispute for the purpose of supporting an application for a declaration of non-infringement. Since that document was not signified as being confidential, I understand the result was that the claimant passed it on to its American and Italian lawyers. More recently the defendants have served a product and process description. It is the description which is now in dispute. That document is fuller than the document served in January, and it is a document that the defendants say should be covered by the provisions of the confidentiality club. As of this morning, the defendants have agreed with the claimant that the claimant's solicitors (Bristows), the claimant's counsel (Mr. Watson QC and Mr. Mitcheson), four internal members of the Halliburton legal team and Mr. Hall (the claimant's expert witness) should be in the confidentiality club The club will also include Mr. Landis, a specialist trial attorney who played a major part in the American proceedings.

4

However, the claimant commenced the current application to greatly widen out the scope of those on its side who were to be allowed into the confidentiality club. In particular, the claimant wanted the whole of Messrs. Trevisan & Cuonzo (the Italian law firm representing it in the Italian proceedings), the whole of Messrs. Godwin Gruber (the American firm representing it in the American proceedings) and two individuals from Ingg, Guzzi & Ravizza (who are technical personnel assisting in the Italian proceedings) to be added to the confidentiality club. That was resisted by the defendants.

5

Just before this matter came into court this morning, new evidence was provided by the claimant in which it sought to restrict the scope of its application. It no longer asked for the totality of the Italian and American firms to be added to the confidentiality club and for the Italian engineers to be added. Instead, it now only asks for two named individuals from the Italian firm and two named individuals from the American firm to be added to the confidentiality club.

6

In making its application the claimant advanced two major submissions, at least until this morning. The first was that the product and process description was not confidential at all, and that therefore restrictions on the personnel within the confidentiality club should be relaxed. Second, it was argued that the introduction of the additional personnel into the confidentiality club was of importance to the conduct of the international litigation by the claimant.

7

This morning Mr. Watson (who appears for the claimant) has conceded, at least for the purpose of this application, that the product and process description should be considered to contain confidential information going beyond...

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2 cases
  • Re Lehman Re, Ltd
    • Bermuda
    • Supreme Court
    • 20 September 2011
    ...Dory et al v Richard Wolf GmbH et al [1990] 1 FSR 266, Halliburton Energy Services Inc v Smith International (North Sea, Inc) et al [2004] EWHC 2181 (Pat), Smithkline Beecham plc v Generics (UK) Ltd, [2003] EWCA Civ 1109, Halcon International Inc.v The Shell Transport and Trading Co. et al ......
  • Aerotel Ltd v Telco Holdings Ltd; Macrossan's Patent Application (No.0314464.9)
    • United Kingdom
    • Court of Appeal (Civil Division)
    • 27 October 2006
    ...position prior to the settlement to take on the burden of defending the judgment below in accordance with the procedure indicated in Halliburton. As would be expected of counsel for the Comptroller, Mr Birss presented matters objectively and in a non-partisan manner. The Comptroller, partic......

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