Collateral use of disclosed documents: High Court declines to restrict use of documents referred to at public hearing

In a recent decision, the High Court held that certain documents had been "referred to" at a public hearing, so that the usual restrictions on collateral use of documents disclosed in legal proceedings did not apply to them. It declined to make an order prohibiting or restricting their subsequent use: Saint-Gobain Adfors S.A.S v 3M Innovative Properties Company [2023] EWHC 2949 (Pat).

The court rejected a suggestion that the contents of a document must be alluded to or paraphrased before the document will be "referred to" such that the restrictions on collateral use fall away. In the court's view it was enough that a document was referred to in passing – though in any event, on the facts of this case, the court was satisfied that there were allusions to the contents of the documents in question.

As for when the court will restrict future use, despite a document having been referred to at trial, the decision underlines that there have to be very good reasons to depart from the normal rule of publicity. The court will consider the role the document played at trial as well as any specific reasons why publicity would cause damage.

The decision also highlights that a party who wishes to prevent or restrict use of a document referred to in open court should make that application promptly.

Background

The claimant brought proceedings against the defendant concerning the validity of one of the defendant's patents. At the trial in early 2022 the court held that the patent was invalid. The present application concerned a set of electronic documents ("the CT Scan Files") which the defendant provided to the court the day before the trial started. At the parties' request, the court made a permanent confidentiality order in relation to several documents referred to at trial but this did not include the CT Scan Files.

After the trial the claimant took the view that it was under no restrictions on the use of the CT Scan Files as a result of CPR 31.22(1)(a) which provides:

"A party to whom a document has been disclosed may use the document only for the purpose of the proceedings in which it is disclosed, except where... (a) the document has been read to or by the court, or referred to, at a hearing which has been held in public…".

The claimant therefore provided the CT Scan Files to its external US lawyers and European patent attorneys, who filed images and measurements derived from them on the publicly accessible European Patent Register as part of the claimant's submissions in three sets of opposition proceedings against some of the defendant's patents. In August 2023, the defendant's solicitors wrote to the claimant's solicitors to complain about its use of data from the CT Scan Files in the opposition proceedings. In September 2023, the claimant made an application seeking the following declarations:

1. the CT Scan Files were read by the court or were referred to within the meaning of CPR 31.22(1)(a) at the trial;
2. the claimant's use of the CT Scan Files in the opposition proceedings did not contravene CPR 31.22(1); and
3. the claimant was free to use the CT Scan Files in any other proceedings.

The defendant responded seeking an order pursuant to CPR 31.22(2) prohibiting the claimant from using the CT Scan Files for purposes other than the present proceedings, in the EPO opposition proceedings or otherwise.

Decision

The High Court (Michael Tappin KC, sitting as Deputy High Court Judge) granted the three orders sought by the claimant and declined to make the order sought by the defendant.

Application of CPR 31.22(1)(a)

The deputy judge rejected the defendant's contention that it was necessary to "paraphrase or allude to" part of the contents of a document in order for it to be "referred to" within the meaning of CPR 31.22(1)(a). There was no reason to place any gloss on the wording of that provision. He referred to the decision in Lilly Icos v Pfizer Ltd (No 2) [2002] EWCA Civ 2 where a single sentence in a witness statement was regarded by the Court of Appeal to constitute a "reference" within the meaning of CPR 31.22(1)(a) even though the document was "unnecessarily, referred to in passing…" and did not reveal anything about the contents of the document except at a very high level.

The deputy judge concluded that most of the instances where the CT Scan Files were mentioned in submissions or in the evidence during trial were "references" under CPR 31.22(1)(a) and therefore the CT Scan Files could be used for other purposes beyond the present proceedings.

Application of CPR 31.22(2)

The deputy judge next had to decide whether he should make an order restricting or prohibiting the use of the CT Scan Files. He held that there was nothing in CPR 31.22(2) to restrict the timing of such an order to the hearing when the documents in question were referred to: to the contrary, the language of the rule clearly encompassed an order being made – as here – after the event. On the other hand, the court should take into account whether the application was made promptly and any prejudice to the respondent arising out of a delay in making the application.

The deputy judge applied the approach adopted by the Court of Appeal in Lilly Icos, which set out the considerations a court should take into account when exercising its discretion as to whether to prevent or restrict the subsequent use of a document referred to in open court.

1. The starting point is that there have to be very good reasons for departing from the normal rule of publicity of both the proceedings and the documents that influenced the judge's decision in the proceedings.
2. The court should take into account the role the document played at trial and hence its relevance in the decision-making process. It should start from the assumption that all documents in the case are necessary and relevant for that purpose, and should not accede to general arguments that it would be possible to understand the trial without access to a particular document, but in particular cases the centrality of the document to the trial is a factor to be placed in the balance.
3. Simple assertions of confidentiality and of the damage that will be done by publication should not prevail. The court will require specific reasons why a party would be damaged by publication, and those reasons will also be weighed in the balance.

Applying these principles, the court found the CT Scan Files themselves were by no means central to the trial, but the references to them were not "marginal or gratuitous" as the claimant sought to argue. They were referred to because they underlay the materials which had been derived from them, which had some prominence at trial, and to support the claimant's case.

As for the confidentiality of the CT Scan files, the court found that while the CT Scan Files contained information which was not otherwise present in the public domain, it was clear on the facts that the claimant was not intending to publish the CT Scan Files or make them more widely available in its business operations; it only wanted to use them in the EPO Proceedings. As for any actual damage to the defendant, this was limited to expenditure in filing submissions in reply in those proceedings. Moreover the court was very sceptical about the defendant's claim that the CT Scan Files would be of value to a competitor given that it took no steps to protect the information contained within them until September 2023.

It was also appropriate to take into account that the CT Scan Files had been in the claimant's hands for 19 months without restrictions on their use, and the defendant had not acted promptly in seeking the order. The claimant had reasonably and correctly believed that it was free to use the CT Scan Files in other proceedings and had no reason to think that there was any dispute about that until six months after it first made such use. As between the parties, any confidentiality in the CT Scan Files had been lost, and the order the defendant sought was aimed at re-imposing a restriction which had ceased 19 months previously.

The court therefore held that the defendant's interests in avoiding the expense of dealing with submissions based on material derived from the CT Scan Files did not justify making an order pursuant to CPR 31.22(2) restricting the claimant's use of documents which it had held, and used, free of any restriction during that period.

Since the claimant voluntarily undertook to give the defendant 21 days’ notice of any intention to use the CT Scan Files for any purpose other than legal proceedings, the deputy judge accepted that undertaking and gave the defendant liberty to apply in the event the claimant gave such notice.