Pfizer Health AB v Schwarz Pharma AG
| Jurisdiction | England & Wales |
| Judge | THE HON MR JUSTICE FLOYD,Mr Justice Floyd |
| Judgment Date | 08 December 2010 |
| Neutral Citation | [2010] EWHC 3236 (Pat) |
| Docket Number | Case No: HC05C01129 |
| Court | Chancery Division (Patents Court) |
| Date | 08 December 2010 |
[2010] EWHC 3236 (Pat)
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
PATENTS COURT
Before: The Hon Mr Justice Floyd
Case No: HC05C01129
Piers Strickland for the Applicant.
The claimants and defendants did not appear.
Hearing date: 12 November 2010
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.
Mr Justice Floyd:
This is an application by a third party, Strickland (Legal) LLP for permission to obtain copies of documents from the court file in this patent action and counterclaim (“the main proceedings”). The documents ultimately sought are those relating to the validity of patents the subject of those proceedings.
It is well known that third parties are often keen to inspect the Grounds of Invalidity in a patent action, in order to assist their own actual or intended attack on its validity. This is perhaps the most important document sought on this application. It should be noted, however, that the present application falls to be decided under rules which are increasingly of historical interest only. Grounds of Invalidity filed today will normally, as I explain below, be available for inspection by third parties as of right.
The main proceedings were a claim for infringement of two patents relating to a compound for treating urinary incontinence. The main proceedings were commenced in 2005. Shortly before trial, the main proceedings were stayed by virtue of an order of Pumfrey J dated 17 th May 2006. That order stayed the main proceedings pending further order, vacated the trial window fixed for 10 th July to 28 th July 2006, and gave the parties permission to apply. On 25 th July 2006, Lewison J made an order that the proceedings be discontinued, save for the first claimant's application to amend the specification of European Patent (UK) No 1019358, one of the two patents in suit, with no order for costs. In January 2007 an order was made discontinuing the amendment proceedings.
The third party applicant is a firm of solicitors. Their application notice, dated 8 th April 2010, seeks an order in accordance with a draft order attached, that they be supplied with “all allowable documents” from the court records pursuant to CPR 5.4C. Part C of the application notice simply sets out the provisions of CPR Part 5.4C. The attached draft order seeks an order that:
“Upon payment of the prescribed photocopying fees, copies of the any and all documents on the court file in these proceedings shall be made available to Strickland LLP from the court records”
The application came before Master Moncaster on 29 th April 2010. He provided the applicants with copies of the claim form dated 3 rd May 2005 and the amended claim form dated 19 th October 2005, together with copies of four consent orders made on various dates between 5 th December 2005 and 19 th January 2007. In addition he provided a copy of an order for directions made by HHJ Fysh QC sitting as a deputy High Court Judge dated 21 st February 2006. He ordered an adjournment so that the comments on whether further documents should be disclosed could be obtained from the original parties to the action or their representatives. Strickland then wrote to Baker & M c Kenzie who acted for the claimants, and Bristows who acted for the defendants, by letters dated 18 th May 2010, seeking their consent. The responses they received were:
i) Baker & M c kenzie replied on 10 th September 2010, confirming that their clients, from whom they had now taken instructions, would not object to the application. They have subsequently clarified that their consent was limited to documents currently on the court file, which they had themselves inspected, as they were entitled to do without permission.
ii) Bristows replied on 28 th September 2010. Their position was that the consented to the provision of any non-confidential documents on the court file.
The application was accordingly restored before the Master on 11 th October 2010. The Master decided to adjourn the matter to the Patents Judge. It came before me on 12 th November 2010.
When the matter came before me, Mr Strickland explained (although this was not made clear in the application notice or in any evidence) that his firm acted for a company active in this area who wished to know of documents having a bearing on the validity of the patents in suit, which remain in force. The company was reluctant to disclose its identity for commercial reasons, but was interested in determining its freedom to act in this technical area. Its purpose in wanting documents from the court records was to assess the material deployed, so as to assess the validity of the patents in suit.
I pointed out to Mr Strickland that it was likely that the document most relevant to the validity of the patents in suit, that is to say the Grounds of Invalidity, together with documents relating to the application to amend the specification, were likely to be available to the public through the United Kingdom Intellectual Property Office. CPR Part 63 in its original form, and in force at the relevant time, required a copy of the Grounds of Invalidity to be served on the Comptroller: see CPR Part 63 PD paragraph 11.2(4) (see the version printed in the 2009 White Book). That is no longer the case. The Grounds were, however, amended several times. Applications to amend the specification of the patent are still required to be served on the Comptroller: see CPR Part 63 PD paragraph 10. The UKIPO has confirmed that documents relating to the validity and amendment of these patents are on their files and may be inspected on payment of the appropriate fee by any member of the public without the need to obtain permission.
The rules governing the supply of statements of case draw a distinction between statements of case filed before and those filed after 2 nd October 2006. The rules which govern statements of case filed before that date were the former rules 5.4(5) to 5.4(9) which are now set out, for convenience, in the Practice Direction to Part 5 at paragraphs 4A.1 to 4A.9. Paragraph 4A(2) of the Practice Direction provides:
“A person who is not a party to proceedings may:
(1) unless the court orders otherwise, obtain from the records of the court a copy of a claim form, but not any documents filed with or attached to or intended by the claimant to be served with such claim form, subject to paragraph 4A.3 and to any order of the court under paragraph 4A.4; and
(2) if the court gives permission, obtain from the records of the court a copy of any other statement of case.”
The present application, insofar as it relates to “statements of case” is governed by paragraph 4A(2)(2), and permission from the court is required.
For statements of case filed on or after 2 nd October 2006, CPR 5.4C(1) applies. A third party is no longer required to obtain permission to obtain copies of statements of case:
“(1) The general rule is that a person who is not a party to proceedings may obtain from the court records a copy of –
(a) a statement of case, but not any documents filed with or attached to the statement of case, or intended by the party whose statement it is to be served with it; …”
So far as documents other than statements of case are concerned, the position is governed by CPR 5.4C2, whenever that document was filed:
“A non-party may, if the court gives permission, obtain from the records of the court a copy of any other document filed by a party, or communication between the court and a party or another person.”
; CPR Part 63 PD now makes clear by paragraph 4.2 that the Grounds of Invalidity form part of the Statement of Case. It is not entirely beyond dispute that that proposition held true at the time at which the Grounds of Invalidity in the present case were served. However, the point is of no relevance because, if the Grounds of Invalidity were not a statement of case within the Practice Direction, then they must be an “other document” within the main rule. In either case is the permission of the court is required.
The approach to the application
It is important to note that there is no unfettered right of access to the court file other than in accordance with the rules and practice directions. In Dian AO v Davis Frankel & Mead (A Firm) and another (OOO Alfa-Eco and another intervening) [2005] 1 WLR 2951; [2004] EWHC 2662 (Comm) Moore-Bick LJ said at paragraph 20:
“The first thing to notice about rule 5.4(2) is that it does not give the general public an unfettered right of access to the court records. On the contrary, it proceeds of the footing that … there is no right of access to the court files without permission.”
Next, paragraph 4A(8) of the Practice Direction says that an application under paragraph 4A(2)(2) for copies of statements of case filed before 2nd October 2006 “must identify the document or class of document in respect of which permission is sought and the grounds relied upon”. There is a similar provision, namely paragraph 4.3 of the Practice Direction in relation to applications for other documents under CPR 5.4C( 2). Moore-Bick LJ again dealt with this, in some detail in relation to old rule 5(4)(2), in AO Dian(supra) at 32–34:
“32. It is necessary therefore to go back to the rules to see what they provide. In my view it is clear from the language of rule 5.4(2) that the court's permission is required before a search may be made for any document which, if found, may...
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