In a recent case, Positec Power Tools (Europe) Ltd and
others v Husqvarna AB [2016] EWHC 1061 (Pat), the UK’s
Patents Court has considered the correct approach to disclosure
under the Civil Procedure Rules (CPR) in their current form in
patent proceedings in which obviousness was in issue. In doing so,
it declined to make an order for disclosure on the grounds that it
would not be in accordance with the overriding objective.
The dispute between Positec and Husqvarna relates to robotic
lawnmowers. Husqvarna owns a patent, EP (UK) 1 512 053, which
claims a method of operating a robotic lawnmower device under the
guidance of an electronic directing system. Positec wishes to sell
its own robotic lawnmowers in the UK. To clear the path, it issued
proceedings against Husqvarna for revocation of the patent on the
grounds of novelty and obviousness, and/or a declaration of
non-infringement in respect of its own robotic lawnmowers.
This judgement, by Mr Justice Birss, is on a preliminary matter
considered at the case management conference (CMC). In its
Disclosure Report, Husqvarna indicated that it would disclose
documents relating to validity in the key four-year window, ie
those documents dated between two years before and two years after
the earliest priority date (paragraph 6.1(2) of Practice Direction
63 of the CPR). However, by the time of the CMC indicated that it
was not willing to give such disclosure. The Court therefore had to
decide whether disclosure should be ordered.
At the CMC, arguments were presented on the correct approach to
standard disclosure (CPR 31.5) and how the approach applies to the
question of whether to order the disclosure of documents arising
from the making of an invention in an obviousness case. Mr Justice
Birss referred to the development of the current approach to
disclosure, in particular Jacob LJ’s comments in Nichia v
Argos [2007] EWCA Civ 741. In Nichia, Jacob LJ discussed how
obviousness is objective, and the knowledge and behaviour
attributed to the skilled person is not the same as a real person.
The skilled person only foresees what is obvious because, unlike a
real person, they take no inventive steps. Therefore the evidence
of what the inventor actually did can be of little value and may be
tainted by hindsight. It is secondary evidence, rather than primary
evidence, such as that provided by a suitably qualified expert
witness. In reality, disclosure from a patentee about what an
inventor actually did may be a costly distraction that is only
valuable in the minority of cases.
Mr Justice Birss also considered his unique experience in the
Intellectual Property Enterprise Court (IPEC). In the IPEC, there
is no automatic right to disclosure, but it is dealt with on an
issue-by-issue basis using a cost/benefit test. There is no
prima facie assumption in the IPEC that disclosure will be
ordered (and it generally is not), but the IPEC is still a
successful forum.
He also referred to CPR 31.5(7), which details the type of order
the Court may make in respect of disclosure, regarding the
overriding objective and the need to limit disclosure to that which
is necessary to enable the case to be dealt with justly. He held
that the fact that CPR 31.5(7) lists six different types of order
open to the Court means that standard disclosure is no longer the
default option. The nature of patent disputes means that the
question is, essentially, whether to order disclosure on an
issue-by-issue basis (CPR 31.5(7)(c)). In this case, the only live
issue was obviousness, and therefore whether it would be in
accordance with the overriding objective to make such an
order.
The key factors to consider in this case were the likely probative
value of such material and the cost of the disclosure exercise in
the context of the overall cost of the proceedings and value of the
case to the parties. Taking the second, and perhaps simplest of the
considerations first, he held that the value of the case was likely
to be in the millions – it was not a case of very low value
but nor was it at the high end of cases in the Patents Court, like
cases relating to standard essential patents or a blockbuster
pharmaceutical. The parties estimated that their costs would be
£0.8-£1.1 million on either side, and the Court
estimated that the likely cost of disclosure around £90,000
– so neither substantial nor trivial in context. However, in
the circumstances of these proceedings, the key consideration was
the likely probative value of the material – commercial
success was not pleaded, Husqvarna does not intend to call the
inventor, nor does it plan to rely on its own internal documents in
support of an inventive step. These points argue against
disclosure. Positec argued that it would use the inventor’s
documents in cross examination, and that on the facts of the case
disclosure of these documents would be useful to establish whether
the skilled person would think in the same way as the inventor. The
Court held that it was, at this stage of the proceedings, unclear
if it was in dispute that the skilled person would think in such a
way, and if the point is not currently in issue, there is no reason
to order disclosure in respect of it. It would be a waste of time
and money to do so at this time. If the issue arose later, there
would be room in the timetable to allow for disclosure. Mr Justice
Birss also commented that the fact that Husqvarna changed its mind
about disclosure did not, in his view, mean it is trying to hide
something.
In summary, the Court held that it was not satisfied that an order
for standard disclosure, or one for issue based disclosure on
obviousness, would be in accordance with the overriding objective:
“This is an ordinary obviousness case with no special
features which might make such disclosure worth the
cost.”
This decision demonstrates that a party seeking disclosure must be
able to show that it is likely to result in useful material that is
of relevance to the issues in the case. Given the move towards
Judges becoming more actively involved in case management at an
early stage of proceedings, there is a real possibility that the
scope of disclosure may become more limited in the future, thereby
reducing the costs of UK patent litigation
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