J.C. Bamford Excavators Ltd v Manitou UK Ltd
| Jurisdiction | England & Wales |
| Judge | Lord Justice Arnold,Lady Justice Elisabeth Laing |
| Judgment Date | 17 July 2023 |
| Neutral Citation | [2023] EWCA Civ 840 |
| Court | Court of Appeal (Civil Division) |
| Year | 2023 |
| Docket Number | Case Nos: CA-2023-000514, 000515 |
[2023] EWCA Civ 840
THE PRESIDENT OF THE FAMILY DIVISION
Lord Justice Arnold
and
Lady Justice Elisabeth Laing
Case Nos: CA-2023-000514, 000515
IN THE COURT OF APPEAL (CIVIL DIVISION)
ON APPEAL FROM THE HIGH COURT OF JUSTICE, BUSINESS AND PROPERTY
COURTS OF ENGLAND AND WALES, INTELLECTUAL PROPERTY LIST (ChD),
PATENTS COURT
His Honour Judge Hacon sitting as a Judge of the High Court
[2023] EWHC 408 (Pat)
Royal Courts of Justice
Strand, London, WC2A 2LL
Michael Silverleaf KC and Tim Austen (instructed by Baker & McKenzie LLP) for the Claimant
Brian Nicholson KC and Kyra Nezami (instructed by Marks & Clerk Law LLP) for the Defendants
Hearing date: 6 July 2023
Approved Judgment
Introduction
There are two appeals before the Court against an order of His Honour Judge Hacon sitting as a Judge of the High Court dated 22 February 2023. The Defendants (“Manitou”) appeal against the judge's decision partially to refuse an application by Manitou for an order under CPR rule 31.22(2) restricting the use of parts of various documents read or referred to at a public hearing on the ground that the documents contain information that is confidential to Manitou. The Claimant (“JCB”) cross-appeals against the judge's decision that the information in question is confidential in the first place. Both appeals raise important questions of law. Logically JCB's appeal comes first, and so JCB opened its appeal first even though it was the successful party below. The parties were able to argue the appeals in open court without revealing the information alleged to be confidential, and I shall adopt the same course in this judgment.
The proceedings
JCB and Manitou are long-standing competitors. JCB alleges that Manitou have infringed four of its patents that describe and claim inventions which are particularly relevant to machines called telehandlers, although the claims are not limited to telehandlers. Manitou deny infringement and counterclaim for revocation of all of the patents. The infringement allegations concerned five different configurations of the control systems of Manitou's telehandlers, referred to as configurations A, B, C, D and MLA. The issue which gives rise to the present appeals concerns JCB's allegation that the configuration C control system infringes European Patent (UK) No. 2 616 382 (“EP 382”). Configuration C is the control system which is currently in use on the majority of Manitou's telehandlers and was introduced by Manitou into their machines in 2019–2020 with a view to avoiding infringement of EP 382.
Manitou served a Product and Process Description (“PPD”) describing the relevant features of each configuration pursuant to CPR rule 63.9 and Practice Direction 63 paragraph 6.1(2). Manitou claimed that much of the information contained in the PPD was confidential. During the course of the proceedings claims to confidentiality were also made by Manitou over parts of various other documents, including a statement of case, witness statements, experts' reports, skeleton arguments and written closing submissions. Prior to trial the parties agreed a confidentiality club regime to protect the confidentiality of information claimed by Manitou to be confidential. When the case came on for trial before the judge, he made an interim order under CPR rule 31.22(2) to preserve the confidentiality of that information until after judgment. Most of the trial took place in open court, but parts of the hearing were in private.
The judge held for the reasons given in a judgment dated 4 July 2022 [2022] EWHC 1724 (Pat) (“the Substantive Judgment”) that three of the patents were invalid, but not EP 382. He also held that EP 382 was infringed by Manitou's configuration D machines, but not by their configuration C machines. At that stage, the judge's reasons with respect to infringement were set out in a confidential annex to the Substantive Judgment (“the Confidential Annex”) because of Manitou's claim to confidentiality.
On 9 December 2022 the judge heard argument as to the form of the order which he should make to give effect to the Substantive Judgment. One of the matters he had to consider was an application by Manitou for a permanent order under rule 31.22(2) in respect of parts of various documents, including the corresponding parts of the Confidential Annex. (Strictly speaking, rule 31.22 does not apply to the Confidential Annex, but the parties and the judge sensibly proceeded on the basis that, if a rule 31.22(2) order was to be made in respect of the underlying documents, then that order should not be defeated by the court publishing the Confidential Annex in a form which revealed the protected information, and hence the order should extend to the relevant parts of the Confidential Annex.) Regrettably, even though the hearing took place some five months after the Substantive Judgment had been handed down, it emerged during the course of the hearing that there was a substantial dispute between the parties as to what information Manitou could properly claim to be confidential which the judge was not then in a position to resolve. Accordingly, the judge adjourned the application with directions for the parties to try to narrow the issues and for the service of evidence on points which remained in dispute.
By the time the application was restored before the judge on 22 February 2023, progress had been made and it was agreed that much of the information contained in Confidential Annex could be published. Manitou contended, however, that the Confidential Annex should be redacted before publication to remove four heads of information concerning configuration C which Manitou maintained were confidential. Head 1 is the way in which the configuration C system works, and in particular the key criterion it uses (referred to as “criterion X”). Head 2 is the number of subsystems within configuration C, and in broad terms how each of the subsystems works. Head 3 consists of more detailed descriptions of how of the subsystems work, including relevant formulae. Head 4 is the acronyms used to identify two of the subsystems, which Manitou contend reveal information about how those subsystems worked.
It was agreed between the parties that head 3 consisted of information which was confidential to Manitou, should be the subject of a final rule 31.22(2) order and should not be included in the public version of the Confidential Annex. The judge took the view that head 4 could easily be dealt with by replacing the acronyms with anodyne labels. That left heads 1 and 2. It appeared to the judge that it was head 1 that mattered.
The judge first heard argument as to whether head 1 constituted confidential information, and concluded that it did. He then heard argument as to how to balance the open justice principle with Manitou's claim to preserve the confidentiality of that information, and decided that the balance came down in favour of including the head 1 information in the public version of the Confidential Annex and hence the refusal of a final rule 31.22(2) order in respect of it. The judge's reasons were given in two extempore judgments which were transcribed into a single transcript [2023] EWHC 408 (Pat) (“the Confidentiality Judgment”). The judge gave both sides permission to appeal.
After some discussion and delay, the parties agreed the terms of an order to give effect to the Confidentiality Judgment which was sealed on 9 June 2023. Annex 2 to the order consists of a public version of the Confidential Annex which gives effect to the Confidentiality Judgment. Publication of this version was stayed pending the determination of the appeals. Annex 3 to the order consists of an interim public version of the Confidential Annex which has been made public pending the determination of the appeals.
As indicated above, JCB appeals against the judge's conclusion that head 1 constitutes confidential information, while Manitou appeal against his decision to refuse to make an order under rule 31.22(2) in respect of the relevant documents in so far as they contained head 1. Manitou have also served a respondents' notice to JCB's appeal concerning heads 2 and 4.
The parties have also appealed against various aspects of the Substantive Judgment, including the finding that configuration C does not infringe EP 382. Those appeals have been fixed for hearing in January 2024. It follows that the resolution of the present appeals is likely to affect the extent to which those appeals can be heard in open court, and the extent to which the subsequent judgment may be made public.
Technical background
The following account of the technical background to the dispute is taken almost verbatim from the Substantive Judgment.
Telehandlers have a four-wheel chassis, a cab for the operator and a longitudinal arm which can be raised or lowered and extended beyond the front of the chassis. The arm is used to lift and move loads. Telehandlers have become versatile workhorses in the agricultural and construction industries. In the construction industry they are typically used to move palletised loads, loose material such as soil or aggregate, or to carry hanging loads on a hook. They have a longer reach than a forklift truck and can be used in terrain that would be inaccessible to a conventional forklift truck. They have largely superseded tractor-mounted hydraulic loaders for agricultural use such as stacking bales and the loading and shovelling of grain, silage and manure, being more flexible and having greater lift capacity and reach.
The picture below shows a telehandler sold by Komatsu Ltd, a company which competes with both JCB and Manitou.
The arm — shown here extended with a basket load at the end —...
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