Lilly Icos Ltd v Pfizer Ltd
| Jurisdiction | England & Wales |
| Judge | Lord Justice Buxton |
| Judgment Date | 23 January 2002 |
| Neutral Citation | [2002] EWCA Civ 2 |
| Docket Number | Case No: A3/2001/0136 |
| Court | Court of Appeal (Civil Division) |
| Date | 23 January 2002 |
[2002] EWCA Civ 2
IN THE SUPREME COURT OF JUDICATURE
COURT OF APPEAL (CIVIL DIVISION)
ON APPEAL FROM CHANCERY DIVISION
MR JUSTICE LADDIE
Royal Courts of Justice
Strand,
London, WC2A 2LL
Lord Justice Aldous
Lord Justice Buxton and
Lord Justice Longmore
Case No: A3/2001/0136
David Young QC and Richard Meade (instructed by Bird & Bird for the Respondent/Appellant)
Simon Thorley QC, Andrew Waugh QC and Colin Birss (instructed by Taylor Joynson Garrett for the Petitioner/Respondent)
This is the judgment of the Court.
Introduction
The background to this appeal, and the issues in the substantive dispute out of which it arises, are fully set out in the judgment in Appeal A3/2000/3811, and need not be repeated here.
The present dispute concerns various material disclosed by the patentee during the revocation proceedings, which was treated as confidential in the hands of the opponent during those proceedings, and which the patentee wishes to remain confidential even after those proceedings have terminated. Originally there was a significant amount of material in respect of which the judge had declined to make such an order and in respect of which the patentee wished to seek the view of this court; and further material in respect of which such an order had been made, some part of which the opponent wished to challenge. However, after discussions between the parties the opponent has abandoned its cross-appeal, and the patentee wishes to maintain its appeal in respect of only one document. Before the judge the opponent had not sought the release of the then existing confidentiality order in respect of that document, but the judge himself, of his own motion, refused to make an order maintaining confidentiality. Understandably, therefore, the opponent indicated that it would not oppose the patentee's appeal. We however considered that issues of some general importance might be involved in the appeal, and we indicated that we would appreciate assistance from both parties. The opponent was thereupon good enough to instruct Mr Birss to assist us, and he afforded us considerable help, as did Mr Meade on behalf of the patentee.
Legal framework
The issue arises under CPR 31.22, which reads:
"31.22 (1) A party to whom a document has been disclosed may use the document only for the purpose of the proceedings in which it is disclosed, except where—
(a) the document has been read to or by the court, or referred to, at a hearing which has been held in public;
(b) the court gives permission; or
(c) the party who disclosed the document and the person to whom the document belongs agree
(2) The court may make an order restricting or prohibiting the use of a document which has been disclosed, even where the document has been read to or by the court, or referred to, at a hearing which has been held in public."
As is well-known, provisions to this broad effect, though formulated in slightly different terms, were introduced into RSC Order 24 rule 14A as a result of the decision of the government of the United Kingdom not to contest the complaint declared admissible by the European Commission on Human Rights, (1984) 7 EHRR 146, in relation to the law declared by the House of Lords in Home Office v Harman [1983] AC 280.
It may be mentioned that we have described the issue as one of confidentiality, and we will for convenience continue to describe it as such. However, it will be seen from CPR 31.22 that the basic prohibition in relation to disclosed documents is in terms of their use. A breach of that prohibition, such as in a patent case the use by the opponent of processes disclosed by the patentee, might not involve anything that would usually be characterised as a breach of confidence.
The provisions of CPR 31.22 relate only to, and in this appeal we are directly concerned only with, documents produced to the other side on disclosure, and the subsequent obligations of the other side in relation to those documents. We are not directly concerned with issues of access to court documents on the part of non-parties, such as have recently been considered by this court in GIO Personal Investment Services v Liverpool and London [1999] 1 WLR 984 and Barings plc v Coopers & Lybrand [2000] 3 All ER 910. The issue before us does however appear to impact indirectly upon the position of non-parties in two ways, which it will be necessary to have in mind. First, if a party is at liberty to "use" a disclosed document, he may no doubt make it available to a non-party, in the absence of a special order preventing that. Second, if the court does make an order under CPR 31.22(2), but the document in question comes into the possession of a third party, for instance by accident or theft, then any use by the third party of the document with knowledge of the court's order will arguably be a contempt. We heard no sustained argument on that point, but as at present advised the conclusion just stated would appear to follow by analogy with the view taken by the House of Lords in A-G v Times Newspapers Ltd [1992] 1 AC 191.
The special condition releasing the normal rule of confidentiality arises when a document "has been read to or by the court, or referred to, at a hearing which has been held in public". It was conceded that that condition was fulfilled in respect of the document in issue before us. However, since the width of this provision may affect the proper approach to cases arising under it, we should say a little more about it.
Although the principle of the orality of the English trial remains untouched, practice has moved greatly in the direction of the presentation of evidence and arguments in writing; the use of documents by reference to them in those writings rather than by their being read out in open court; and the consideration by the judge of a large part of that material before the trial opens, so that it is not necessary to make specific reference to it during the trial itself. In Smithkline Beecham v Connaught [1999] 4 All ER 498 [ Connaught] this court pointed out that the intent of (as it was then) RSC O24 r14A would be substantially frustrated if the rule were literally restricted to what had physically happened in open court. The rule was passed in the interests of the publicity properly attaching to the administration of justice, and of the interests of the recipient of the document under article 10 of the European Convention: [1999] 4 All ER at p 510 g. To achieve those ends under modern practice it was necessary to take as falling under RSC 31.22(1)(a) any document pre-read by the judge, or referred to in for instance witness statements taken to stand as evidence, even if the document or the witness statement was not actually read out in court. Some further details of that regime may be mentioned, and then some comments offered.
First, there are taken to fall under the rule certain categories of document, in particular those coming within the pre-reading of the judge. It does not have to be established that the judge has actually read the documents: once the category is established, it is for a party alleging that they have not in fact been read to establish that fact, something that has to be achieved without enquiry of the judge ( Barings v Coopers & Lybrands [2000] 3 All ER 910[53]). Second, it therefore follows that not everything that is disclosed or copied in court bundles falls under this rule: the Connaught approach is restricted to documents to which the judge has been specifically alerted, whether by reference in a skeleton argument or by mention in the "reading guide" with which judges are now provided at least in patent cases. Third, since the Connaught approach is based upon the assumed orality of a trial, documents, however much pre-read by the judge, remain confidential if no trial takes place, but the application is, for instance, dismissed by consent, albeit by a decision announced in open court: Connaught at p509j.
The central theme of these rules is the importance of the principle that justice is to be done in public, and within that principle the importance of those attending a public court understanding the case. They cannot do that if the contents of documents used in that process are concealed from them: hence the release of confidence once the document has been read or used in court. As this court recognised in Connaught, there may be some artificiality about that approach. That is because full access to documents deemed to have been read or used in court may give third parties at least the possibility of much more fully studying and understanding the case and the issues in it than if they merely heard the documents read aloud. Nevertheless, that paradox helps to underline this court's concern that economical means of using and referring to the documents, understood amongst the lawyers, should not exclude the spectators from comprehension of the case.
One further preliminary issue needs to be mentioned. At the start of these proceedings the parties followed the normal practice in patent actions of entering into what is called, perhaps slightly unfortunately, a "confidentiality club". That is an agreement that during the proceedings documents designated as confidential shall be seen only by a strictly limited number of people on each side, almost entirely professional advisers, who are bound by undertakings of confidence in relation to them. The agreement in the present case however further provides, we were told in accordance with normal practice, that the undertakings cease to apply in respect of any...
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