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 [2016] 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 another.
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.
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