Illumina, Inc. v TDL Genetics Ltd
| Jurisdiction | England & Wales |
| Judge | Mr Justice Mann |
| Judgment Date | 22 January 2019 |
| Neutral Citation | [2019] EWHC 79 (Pat) |
| Court | Chancery Division (Patents Court) |
| Date | 22 January 2019 |
| Docket Number | Case No: HP-2017-000075 |
[2019] EWHC 79 (Pat)
IN THE HIGH COURT OF JUSTICE
BUSINESS AND PROPERTY COURTS OF ENGLAND AND WALES
INTELLECTUAL PROPERTY LIST
PATENTS COURT
Royal Courts of Justice, Rolls Building
Fetter Lane, London, EC4A 1NL
Mr Justice Mann
Case No: HP-2017-000075
Mr James Abrahams QC (instructed by Powell Gilbert LLP) for the Claimants
Mr Joe Delaney instructed by Clyde & Co LLP for the First and Second Defendants and by Herbert Smith Freehills LLP for the Third Defendant
Hearing date: 18 th December 2018
Approved Judgment
I direct that pursuant to CPR PD 39A para 6.1 no official shorthand note shall be taken of this Judgment and that copies of this version as handed down may be treated as authentic.
This is in form an application by the claimants for an order that they are entitled to receive confidential information via an already constituted confidentiality club of 3 representatives of the claimants without having to submit to, or engraft, further restrictions on the use that the club members can make of the information. The information is provided in a patent action in the circumstances referred to below. The defendants say that the information should be provided to only one of those members, and subject to an undertaking that he will not be involved in any parallel non-English proceedings, or alternatively that all three members should receive it subject to the same undertaking. In so submitting the defendants are proposing a narrower club, with additional restrictions, than is already provided for by a consent order between the parties. Although this is the claimants' application, it is in fact the defendants who are making the running because of that departure. A similar question also arises in relation to an expert whom the claimants wish to instruct in this action.
The second claimant (Sequenom) is the registered proprietor of European Patent 1 524 321 B2; the first claimant (Illumina) claims to be an exclusive licensee under that patent. I say “claims to be” because there is a dispute in these proceedings as to whether they have that entitlement. The patent concerns an invention for detecting genetic abnormalities in a foetus by sampling the blood of the mother. The mother's blood contains extracellular DNA of both the mother and the baby, though the baby's is a much lower proportion of the total. The patent states baby's DNA tends to be shorter, and that feature is used in the invention to enrich the baby's fragments and to test them. Claim 1 of the patent reads:
“a fraction of a sample of the blood plasma or serum of a pregnant woman in which, as a result of the said sample having been submitted to a DNA extraction, followed by a size separation, of the extracellular DNA, the extracellular DNA present therein consists of DNA consisting of 500 base pairs or less.”
The claimants claim that the defendants have infringed the patent by their Harmony Prenatal Test. Infringement is not admitted and the defendants counterclaim for revocation of the patent on the grounds of insufficiency, want of novelty and want of inventive step.
In the early phases of this action the parties agreed a consent order to deal with confidentiality. The order of Arnold J dated 4 May 2018 set up a confidentiality club. It included external solicitors and counsel, and no issue arises as to those. So far as those internal to the claimants were concerned it set up a club consisting of two in-house lawyers of Illumina (Mr Marcus Burch and Mr Roland Schwillinski) and one in-house lawyer for Sequenom, Mr John Peterson. Each of those individuals was obliged to give an undertaking to keep confidential information received as confidential. Information was to be designated as confidential by the party providing it. This was achieved by paragraph 1 of the order:
“1. There be a confidentiality club (the “Confidentiality Club”) for the protection of confidential information and confidential documents… in these Proceedings, as so designated by the disclosing party when the documents or information are disclosed.”
Paragraph 6 dealt with the provision to experts:
“6. The Confidentiality Club to further include each of the following members upon the provision to the respective Solicitors of Record of an undertaking in the form of the Draft Confidentiality Undertaking attached at Schedule 1:
(a) any person external to a party who has been retained by that party with a view to giving expert evidence in the Proceedings, subject to written approval being obtained from each other party (such approval not to be unreasonably withheld);”
Schedule 1 is the schedule which contains the undertakings which the other members of the club were obliged to give. It contains familiar confidentiality undertakings including one which restricts use of disclosed confidential information to these proceedings.
The dispute in this case arises out of the provision by the defendants of their Product and Process Description (“PPD”), provided for in the usual way by an order of the court. It was served under cover of a letter from solicitors for the third defendant (Herbert Smith Freehills) dated 5 th October 2018 which sought to introduce additional confidentiality restrictions in respect of parts of it. It said:
“Please note that the enclosed PPD contains the Defendants' confidential information in Confidential Annexes B to J inclusive, which are being disclosed for the eyes of Powell Gilbert LLP and UK counsel instructed in these Proceedings only.
While the consent order of Mr Justice Arnold dated 4 May 2018 (Confidentiality Club Order) names certain individuals from your client as designated to receive confidential information, we note that since the establishment of the confidentiality club, your clients have issued infringement proceedings against the Third Defendant in the Northern District of California based on two US patents that claim priority from the application for the Patent and which appear to have substantially similar claims. The individuals named as in-house counsel for the First Claimant in the Confidentiality Club Order have been involved in US litigation against Ariosa since 2014 and we are concerned about them participating in litigation concerning non-UK counterparts of the Patent whilst being privy to the Confidential Annexes and Exhibits.
Accordingly, should you wish for permission to show the Confidential Annexes and Exhibits to the individuals named in the Confidentiality Club Order, please confirm that these individuals will not be involved in any non-UK litigation concerning Harmony and similar subject matter to the patent.”
The claimants declined to accept the restrictions. They take the view that the existing regime allows the information to be given to the three members of the club, and it is for the defendants to apply for any variation of that provision, and the defendants have not done so. Insofar as may be necessary they also say that there is no more reason for withholding any information in the PPD from the three members of the club than there is for other confidential information which has been or may be provided.
An additional point arises in relation to the expert appointed by the claimants, namely one Prof Michael Lovett, Chair of Systems Biology at the National Heart and Lung Institute. The claimants required his assistance in preparing the evidence for this application, and therefore asked the defendants for permission to admit him into the confidentiality club pursuant to paragraph 6 of the order. The defendants gave that consent conditional on the understanding that he would not assist in any foreign proceedings relating to the equivalent of the patent. Since the claimants did not have the time to argue that point so far as the provision of material to Prof Lovett was concerned, because they needed his participation in the preparation of the evidence, they agreed under what they described as duress. However, in this application they seek the removal of the restriction relating to Prof Lovett's participation in other proceedings.
Although the claimants maintain that the burden is effectively on the defendants to impose further restrictions on the three original members of the confidentiality club, the claimants have taken it on themselves to seek an order clarifying the position. So far as Prof Lovett is concerned, they seek in their application that he be released from the restriction against assisting claimants in foreign proceedings.
I shall deal first with the question of the restriction of the three named individuals and then turn to the position of Prof Lovett.
The claimants' first point, advanced by Mr Abrahams QC is a technical one. He says that the question of the provision of information to the three named individuals in the order of Arnold J is something which is permitted under that order as it stands. If there is to be any variation of that order in any respect then it behoves the defendants to make an application to vary it. They have not done so, and at one level that is an end of the matter. Had they sought to do so then they would have had to fulfil the requirements of Tibbles v SIG plc [2012] 1 WLR 2591 relating to the variation of a court order. They could not do so on the facts of this case because there has been no material change of circumstance and no other justification for a variation.
Mr Delaney for the defendants disputes that analysis. He says he is not seeking to vary the order. It applies to documents which a party chooses to disclose under the confidentiality regime provided for by that order. His clients have not chosen to provide the PPD under that order; they are willing only to...
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