Restrictions on the Use of Disclosed Documents - Mitsubishi Electric Corporation and another v Archos SA and Others

Jane Lambert


Patents Court (Sir Alistair Norris) Mitsubishi Electric Corporation and another v Archos SA and others [2020] EWHC 2641 (Pat) (9 Oct 2020)

In these proceedings, Sir Alistair Norris was asked to vary a confidentiality order that had been made by Mr Justice Mann at a case management conference on 22 July 2020.  The order was made in an action to set the terms of a licence to work certain patents that were alleged to be essential for compliance with a mobile telecommunications standard. That was one of a number of issues between the Mitsubishi Electric Corporation and  Sisvel International SA on the one hand and several implementers of the standard on the other.   The other issues were the jurisdiction of the English courts, whether the patents had been infringed and whether the terms of the licence that the claimants were prepared to offer were fair, reasonable and non-discriminatory ("FRAND").

The reason why Mr Justice Mann made a confidentiality order was that he had directed the disclosure of highly sensitive documents in his case management directions.    In the confidentiality order, he had categorized the documentation that he had ordered to be disclosed in three degrees of secrecy:

Attorneys Eyes Only ("AEO"): documents that could be seen  only by the lawyers and experts in an  "AEO club" for the purposes of prosecuting the proceedings or negotiating settlement;

Highly Confidential Material ("HCM"):  documents that could only be disclosed to, discussed by or otherwise communicated to those in an "HCM club" and then only for the purpose of prosecuting the proceedings or conducting settlement negotiations; and

Ordinary Disclosure Materials ("ODM"): documents whose disclosure was governed solely by the Civil Procedure Rules.

The members of the AEO club were individual English qualified lawyers from the receiving party's solicitors and counsel having the conduct of the proceedings (including trainees, paralegals and support staff) ("the English legal team"), expert witnesses and consultants who had a legitimate need to receive AEO material for the purpose of providing expert evidence, and litigation support vendors but not foreign lawyers instructed in a legal capacity (other than expert witnesses on foreign law) or employees of the receiving party or any entity that was a licensee or licensor of cellular SEPs.

The members of the HCM club consisted of members of the AEO club plus two representatives of the receiving party (who might be its employees) approved by the disclosing party, such approval not to be unreasonably withheld. 

A disclosing party was required to designate materials as AEO, HCM or ODM in confidential schedules to its statement of case.

Pursuant to Mr Justice Mann's order, the claimants disclosed 150 documents.  It designated 35 of them as for AEO and 115 as HCM.   The 5th, 6th and 8th defendants ("the Oppo defendants") applied for the redesignation of 6 of the AEO documents as HCM documents and also for the admission into the HGM club of 3 individuals to which the claimants had objected.  The 9th, 10th, 11th and 12th defendants ("the Xiaomi defendants") applied for the redesignation of all the AEO documents as HCM.  There had been a 4th application by the claimants but that was settled by agreement.

Sir Alistair granted the Oppo defendants' application for redesignation of the 6 AEO documents on condition that each member of the confidentiality club other than the lawyers and experts undertook not to take part in any negotiations or litigation against any third party that had contracted with the claimants.  However, he refused the Xiaomi defendants' application for redesignation of all the AEO documents as HCM and the  Oppo defendants' application for expansion of the HCM club.

The order for disclosure that had been made by Mr Justice Mann had largely been agreed by the parties.  The objective of such an agreement was that "the applicant should have as full a degree of disclosure as will be consistent with the adequate protection of the secret" (per Mr Justice Aldous in  Roussel Uclaf v ICI (No.2) [1990] RPC 45, 49).  That approach had been followed by Mr Justice Henry Carr in TQ Delta LLC v Zyxel Communications UK Ltd  [2018] FSR 34) and by Mr Justice Roth in Infederation Ltd v Google LLC and other2020] EWHC 657 (Ch) (18 March 2020).  In the last of those cases, Mr Justice Roth had said: 

"In my view, the important points to emerge from the authorities are that: (i) such arrangements are exceptional; (ii) they must be limited to the narrowest extent possible; and (iii) they require careful scrutiny by the court to ensure that there is no resulting unfairness. Any dispute over admission of an individual to the ring must be determined on the particular circumstances of the case."

Sir Alistair directed himself as follows at paragraph [19] pf his judgment:

"These principles were articulated in the context of the fundamental need for a party to know and be able to respond to and to test the case being made against it. The present context is somewhat different: the issue is the extent to which Party A should be provided by Party B with highly confidential material belonging to it to enable Party A to make a case against Party B. But I consider that broadly the same principles apply, although the different context may mean different weight is attached to the relevant considerations. AEO and HCM designations are serious departures from the ordinary procedures of the Court. They must be recognised as such, limited (where possible) and scrutinized for fairness (to the parties and to third parties swept into the litigation)."

His lordship decided that those principles pointed to redesignation of the 6 AEO documents subject to the condition mentioned above.  The documents were licences that the claimants had granted to third parties. The Oppo defendants could not respond to the claim against them without access to those documents.  Unlike the Xiaomi defendants' application, the Oppi defendants' request was considered and targeted.  The judge expected the Oppi defendants' lawyers to explain to the claimants' lawyers the relevance to their case or otherwise of each of the disclosed documents. He had considered redaction but found that to be impractical. He required the undertaking mentioned above to protect the third parties.

The reason the learned judge refused the Xiaomi defendants' request was that he thought that the validation of the secrecy categorization should be approached on a document-by-document basis.  Mr Justice Mann had made his order for a reason.  Sir Alistair accepted that it imposed a restraint upon the way in which the Xiaomi defendants could prepare and present their case but the right of a party to shape and present its case is not unfettered and has to be balanced against other factors.

It will be recalled that the defendants could nominate candidates for membership of the HCM club subject to the approval of the claimants but that the claimants' approval could not unreasonably be withheld. The Oppo defendants had nominated 4 candidates.  The claimants had accepted one but objected to the others.  The question for Sir Alistair was whether the objections were unreasonable. The disputed candidates were in house counsel involved in negotiations and litigation with third parties. Access to the HCM documents could assist then in their negotiations with third parties.  In the judge's view, the claimants' objections were not unreasonable.

Although they arose in a patent case, the same issues occur in other areas of civil litigation.   Sir Alistair's balancing exercise in accordance with Mr Justice Akdous's dicta in Roussel Uclaf and Mt Justice Roth's in Infederation makes complete sense.  Although the facts of future disputes over access to confidential material may be different the principles by which they can be resolved will be the same.  Anyone wishing to discuss this case or disclosure generally may call me on 020 7404 5252 during office hours or send me a message through my contact form.


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