Mr Justice Roth gave a decision on 16 December 2016 concerning the documents provided during litigation by the Claimants, as part of the disclosure (known as discovery in the US) procedure.
During litigation in the High Court of England and Wales, each party is generally required to disclose to the other side any document in its control which could adversely affect his own case, or support another party 's case. Civil Procedure Rule (CPR) 31.22, however, restricts the circumstances under which such documents can be used outside the context of the specific litigation at issue.
The document at issue here was an agreement between two of the claimants called the Pooled Patents Agreement. A version of the document with confidential information deleted (redacted) had been disclosed in the English patent proceedings. A second version of the document, including the confidential information (unredacted), had then been disclosed to certain members of the defendant 's legal team for the purpose of formulating a competition law defence to the patent action.
The defendants wanted to make submissions relating to the confidential parts of the document to the European Commission in a related but separate competition law investigation. They therefore wished to be notified when the European Commission had been provided with the unredacted version of the document, and sought permission to use the unredacted version of the document to make submissions to the European Commission.
The Judge noted that the disclosure of the unredacted version of the Pooled Patents Agreement was akin to pre-action disclosure in relation to the competition law defence to the patent action. If that English competition law case never proceeded, but the defendants were allowed to use the confidential content of the Pooled Patent Agreement to make submissions to the European Commission, then the defendants would have won an advantage in relation to the European Commission procedure without there being any domestic competition law issues live.
The Judge therefore refused to grant the order that the defendants be notified when the European Commission received an unredacted version and refused to allow the defendants to use the unredacted Pooled Patents Agreement to make submissions to the European Commission. He took the view that doing that would encourage other parties to ask for disclosure from the English Court at the outset of competition proceedings in order to secure a collateral advantage of furthering a public authority 's enquiry or investigation.
The Judge did, however, leave it open for the defendants to apply again in the future if and when competition law issues became live in the English litigation.
The full decision is available here.