One feature of UK patent litigation is the potential for
disclosure of documents by the parties, under the Civil Procedure
Rules (CPRs). The Court (Birss J) gave recent guidance on when
disclosure may not be ordered in Positec Power Tools (Europe) Ltd & Ors v
Husqvarna AB  EWHC 1061 (Pat) (10 May 2016).
Positec had brought the case alleging Husqvarna's patent, EP
(UK) 1 512 053 relating to robotic lawnmowers, was invalid.
Husqvarna denied this and alleged infringement, although there were
only a few sample instances. At the Case Management Conference,
Husqvarna argued for no disclosure on the issue of obviousness,
pointing to the recently revised CPR 31 (governing disclosure).
Birss J noted under rule 31.5(7) the overriding objective and need
to limit disclosure to that which is necessary to deal with the
case justly. He also noted that it is only one of six options to
order "standard disclosure" (which requires a party to
disclose (a) the documents on which he relies; and (b) the
documents which adversely affect his own case; adversely affect
another party's case; or support another party's case).
Further, he noted that disclosure orders can be made issue-by-issue
in patent cases, and in practice they are, so that standard
disclosure may be ordered on one issues and no disclosure on
Husqvarna argued that the task of providing disclosure of its
confidential R&D documents was (1) not a just/proportionate
expense and (2) the documents would be of no probative value. Birss
J decided the expense point was not decisive. The turnover of
products affected by the case would be measured in millions and the
costs of the case were £0.8 to £1.1m, with the extra
cost of disclosure regarding obviousness being about £90k.
However, he ordered no disclosure because of the (lack of)
probative value. Husqvarna said it did not intend to call the
inventor to give evidence. In the circumstances, Birss J was not
persuaded by Positec's general arguments that disclosure
documents were useful for cross-examination, or for looking at the
steps the inventor actually took and commenting on whether they
were obvious. Birss J noted that obviousness depends not on what
the patentee did, but on what would be obvious in light of the
pleaded prior art to the notional person skilled in the art at the
priority date, clothed with the common general knowledge at that
time. Birss J noted that if an issue arose, even if that only
became apparent after exchange of expert evidence, Positec would
still have time to make an application for specific disclosure.
Expect to see patent-owners arguing for no disclosure generally
on issues of obviousness. That does not mean disclosure will never
be ordered. For example, if a patent-owner chooses to call the
inventor to give evidence on the how the claimed invention arose,
that could be a reason for specific disclosure. Also, if an
independent expert were shown internal R&D documents, that
ought to be noted in the expert report with the documents provided
to the other party.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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