Disclosability of experiments in patent proceedings

The High Court has provided clarification on when documents relating to experiments in a patent infringement dispute might be disclosable (Magnesium Elektron Ltd v Neo Chemicals & Oxides (Europe) Ltd and others [2017] EWHC 2957 (Pat)).

In the recent High Court case of Magnesium Elektron v Neo Chemicals & Oxides, the Court considered juxtaposing arguments relating to the disclosure of information to parties in a patent infringement dispute. On the one hand, the patentee argued that documents relating to experiments performed to allow them to determine whether to file an application for leave to serve out of the jurisdiction, were privileged. On the other side, the alleged infringer resisted disclosure of information on the basis that it was confidential.

This note is concerned with the first point. Daniel Alexander QC, sitting as a Deputy High Court Judge, provided detailed and welcome guidance on the extent to which documents relating to experiments designed to support a “service out” application were disclosable.

Background
Practitioners involved in UK based patent disputes are well versed in the pitfalls associated with conducting experiments. The need to disclose “work-up” experiments and associated documents is set out in the often cited case of Mayne Pharma v Debiopharm [2006] EWHC 164 (Pat). This disclosure obligation amounts to a “sting in the tail”, such that experiments are often performed as a last resort.

In this case, the patentee, Magnesium Elektron, claimed that the second defendant used a patented process when manufacturing a product in China. All of the defendants then, allegedly, infringed the patent by way of importing the product made by the patented process, and disposing of it in the UK.

The case is set for trial in late spring of 2018. However there have been various hearings relating to procedural aspects of the case. In particular, the permission of the Court was required to serve the claim on the second defendant, outside of the jurisdiction. The application for permission to serve out was supported by evidence, in the usual way, to show that there was a serious issue to be tried. That supporting evidence included experiments (the “Experiments”) on the allegedly infringing product, sourced by way of a “trap purchase”. On hearing the application, Birss J accepted that there was a prima facie case of infringement and permitted service out.

The original Order as to disclosure
At the CMC in April of this year, Birss J ordered the patentee to disclose documents directly associated with or underlying the Experiments, including workup materials. He referred to the reasoning of Pumfrey J in Mayne Pharma and held that, even though Mayne Pharma concerned an “inevitable result” case, the principle that disclosure would be ordered of material relating to experiments deployed in patent litigation was not limited to such cases. Although he declined to order experimental work-up disclosure immediately, he suggested that such disclosure would be needed as the case progressed.

The scope of “Mayne Pharma” disclosure
Following the CMC, the Claimant provided disclosure of a substantial number of documents. The issue before Mr Daniel Alexander QC was whether the materials provided complied with the Order of Birss J, and whether further disclosure should be ordered.

In a detailed and thorough decision, the Judge took the opportunity to review the law on disclosure, and how it had been applied in patent cases. He observed that experiments differ from other kinds of documents that may be deployed in commercial litigation. In particular, it can be difficult to draw analogies with the leading commercial cases on waiver of privilege such as Nea Karteria (in which deployment of a document waived privilege in all connected documents). In a patent dispute, identifying something analogous to a transaction and unfair “cherry picking” (the issue that broad disclosure was intended to correct) can therefore be a difficult exercise. However, the general approach should still be that which applies in any commercial dispute.

However, it is clear that a one size fits all approach to disclosure of experiments will not do. As Mr Daniel Alexander observed, “Experiments are as diverse as the science that gives rise to them”. He differentiated between experiments related to preliminary investigation work that would lead to a formal Notice for Experiments, and those deployed but not subject to that procedure, particularly intended for preliminary purposes, as was the case here. He placed “inevitable result” and “completeness of data” cases in the first category and cases such as this in the latter category. In this case therefore, no further disclosure was required.

A key point in reaching this conclusion was that, in the former types of case, it is important to be able to show that the experiments would be undertaken in the manner alleged, that the experiments are repeatable (and so inevitably lead to the same result) and that there are not significant variations in the results. In cases where the relevance of the earlier material to the experiments is less clear, a more cautious approach was appropriate. The disclosure required to be given therefore did not extend beyond materials recording the primary investigation leading to the particular experiment deployed in evidence.

Conclusion
The case provides helpful guidance on when disclosure might be ordered relating to experiments in patent disputes outside inevitable results (Mayne Pharma) cases. However, there will inevitably be further debate as to where the line should be drawn in any one case. Parties would be well advised to continue to exercise caution when conducting litigation experiments and in generating documents relating to those experiments. Before starting work, thought should be given to whether broad disclosure is likely to be ordered and, in any case, to ensure that any documents that might need to be disclosed can be clearly separated from other documents relating to the experiments.