| PATENT — Practice — Disclosure — Claim for infringement of patents — Defendant alleging patents invalid on ground of obviousness — No issue of commercial success or long-felt want — Defendant’s application for disclosure of documents concerning making of invention — Whether disclosure to be granted — CPR rr 31.6, 31.7
Nichia Corpn v Argos Ltd [2007] EWCA Civ 741
CA: Pill, Rix and Jacob LJJ: 19 July 2007
{Where the validity of a patent was challenged on the ground of obviousness, and there was no issue of commercial success or long-felt want, disclosure of evidence from the patentee was of limited scope and usefulness. There was, however, no blanket rule that disclosure should not be ordered in such circumstances.
The Court of Appeal, Civil Division, so held (Jacob LJ dissenting) when allowing the appeal of the defendant, Argos Ltd, against the decision of Pumfrey J of 23 February 2007 [2007] EWHC 545 (Pat), dismissing its application, in proceedings for the infringement of two patents braught by the claimant, Nichia Corpn, for an order that the claimant disclose documents about the making of the invention.
CPR r 31.6 provides: “Standard disclosure requires a party to disclose only—(a) the documents on which he relies; and (b) the documents which—(i) adversely affect his own case; (ii) adversely affect another party’s case; or (iii) support another party’s case; and (c) the documents which he is required to disclose by a relevant practice direction.”
CPR r 31.7(1) provides: “When giving standard disclosure, a party is required to make a reasonable search for documents falling within rule 31.6(b) or (c).”
JACOB LJ, dissenting, said that the real question was whether disclosure from the patentee (or objector) should be required when the objection to the patent was straightforward obviousness, that was one where there was no attempt to rebut the attack based on commercial success or a long-felt want. The courts had long been inconsistent: on the one hand recognising and saying that obviousness was purely objective and on the other hand admitting evidence from inventors. In Mölnlycke AB v Procter & Gamble Ltd (No 5) [1994] RPC 49, 113 Sir Donald Nicholls V-C said that the primary evidence on obviousness would be that of expert witnesses and that evidence from the inventor would be “secondary” and “must be kept firmly in its place”. In his Lordship’s judgment, the time had come to hold that proportionality required that normally such disclosure should not be ordered. Only in the largest kind of case, where the legal costs, although very substantial, formed a small proportion of what was at stake, did what was involved by disclosure of this sort of material become proportionate. You needed millions at stake before costs of hundreds of thousands on an issue which was only “secondary” and which must be “firmly kept in its place” were warranted. Although the parties had filed no evidence as to what was at stake, realistically the costs of disclosure were going to be of the order of what was at stake financially. So, in his Lordship’s judgment, the judge had been right to refuse disclosure.
RIX LJ said that if it were the case that standard disclosure in a straightforward obviousness challenge cost hundreds of thousands of pounds, he feared that litigants and their lawyers were paying mere lip service to the standard disclosure regime contained in CPR rr 31.5–31.7. It had been suggested that it was cheaper to look for and disclose everything, than to carry out the “reasonable search” required by rule 31.7(1); and that even so the cost was likely to be enormous. These suggestions seemed to fly in the face of the new regime. A reasonable search should be tailor-made to the value and significance of the likely product of such a search. If the value of such “secondary evidence” was not likely to be high, then the reasonable search should be correspondingly limited. In his Lordship’s judgment, rather than move directly, and in principle, to a blanket, albeit prima facie, rule of no disclosure, it would be preferable to explore, in a way which the parties had not done at all so far, how the concerns which Jacob LJ had expressed might be met by a rigorous application of the rationale of standard disclosure. Thus, the parties and the trial court might wish to explore the desirability of limiting the search in the first place temporally, to documents which came into existence within a period of one year before the earliest priority date; and/or secondly, by reference to the nature of the document itself, eg to documents in which the invention was contemporaneously recorded or reported on to management. His Lordship expected that the parties should be able in the light of the court’s reasoning, emphasising the limited scope and usefulness of such disclosure, to agree on a proper and proportionate way forward, without any further need to bring the matter back to court.
PILL LJ gave a judgment concurring with Rix LJ.
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