Secretary of State for Health & Ors v Servier Laboratories Ltd & Ors [2013] EWCA Civ 1234

‘Sous réserve des traités ou accords internationaux et des lois et règlements en vigueur, il est interdit à toute personne de demander, de rechercher ou de communiquer, par écrit, oralement or sous toute autre forme, des documents ou renseignements d’ordre économique, commercial, industriel, financier, ou technique tendant à la constitution de preuves en vue de procédures judiciaires ou administratives étrangères ou dans le cadre de celles-ci.’

‘Subject to international treaties or agreements and applicable laws and regulations, any individual is prohibited from requesting, seeking or disclosing, in writing, orally or in any other form, documents or information of an economic, commercial, industrial, financial or technical nature, with a view to establishing evidence in foreign judicial or administrative proceedings or in relation thereto.’

‘1. This Regulation shall apply in civil or commercial matters where the court of a Member State, in accordance with the provisions of the law of that State, requests: (a) the competent court of another Member State to take evidence, or (b) to take evidence directly in another Member State. 2. A request shall not be made to obtain evidence which is not intended for use in judicial proceedings, commenced or contemplated. …’

‘Requests pursuant to Article 1(1)(a), hereinafter referred to as “requests”, shall be transmitted by the court before which the proceedings are commenced or contemplated, hereinafter referred to as the “requesting court”, directly to the competent court of another Member State, hereinafter referred to as the “requested court”, for the performance of the taking of evidence.’

‘Where necessary, in executing a request the requested court shall apply the appropriate coercive measures in the instances and to the extent as are provided for by the law of the Member State of the requested court for the execution of a request made for the same purpose by its national authorities or one of the parties concerned.’

‘1. A request for the hearing of a person shall not be executed when the person concerned claims the right to refuse to give evidence or to be prohibited from giving evidence, (a) under the law of the Member State of the requested court, or (b) under the law of the Member State of the requesting court and such right has been specified in the request, or, if need be, at the instance of the requested court, has been confirmed by the requesting court. 2. In addition to the grounds referred to in paragraph 1, the execution of a request may be refused only if: (a) the request does not fall within the scope of this Regulation or as set out in Article 1; or … (c) the requesting court does not comply with the request of the requested court to complete the request pursuant to Article 8 within 30 days after the requested court asked it to do so; … 3. Execution may not be refused by the requested court solely on the ground that under the law of its Member State a court of that Member State has exclusive jurisdiction over the subject matter of the action or that the law of that Member State would not admit the right of action on it.’

‘1. Where a court requests to take evidence directly in another Member State, it shall submit a request to the central body or the competent authority referred to in Article 3(3) … 2. Taking direct evidence may only take place if it can be performed on a voluntary basis without the need for coercive measures. … 3. The taking of evidence shall be performed by a member of the judicial personnel or by any other person such as an agent, who will be designated, in accordance with the law of the Member State of the requesting court. 4. Within 30 days of receiving the request, the central body or the competent authority of the requested Member State shall inform the requesting court if the request is accepted and, if necessary, under what conditions according to the law of its Member State such performance is to be carried out, using form J. … 5. The central body or the competent authority may refuse the direct taking of evidence only if: (a) the request does not fall within the scope of this Regulation as set out in Article 1; (b) the request does not contain all of the necessary information pursuant to Article 4; or (c) the direct taking of evidence is contrary to fundamental principles of law in its Member State. …’

‘1. This Regulation shall, in relation to matters to which it applies, prevail over other provisions contained in bilateral or multilateral agreements or arrangements concluded by the Member States and in particular the Hague Convention of 1 March 1954 on Civil Procedure and the Hague Convention of 18 March 1970 on the Taking of Evidence Abroad in Civil or Commercial Matters in relations between the Member States party thereto. 2. This Regulation shall not preclude Member States from maintaining or concluding agreements or arrangements between two or more of them to further facilitate the taking of evidence, provided that they are compatible with this Regulation. 3. Member States shall send to the Commission: (a) by 1 July 2003, a copy of the agreements or arrangements maintained between the Member States referred to in paragraph 2; (c) a copy of the agreements or arrangements concluded between the Member States referred to in paragraph 2 as well as drafts of such agreements or arrangements which they intend to adopt; …’

‘55. I have carefully considered the potential impact of the French Blocking Statute, but in common with the three English courts which have so far had to consider the issue I am not persuaded that the risk of prosecution to which it might expose the French defendants or their officers is more than theoretical. The absence of any successful prosecution in France for breach of the statute, over a period of more than thirty years, with the single exception of the Christopher X case, in my judgment speaks for itself. The facts in that case were exceptional, involving as they did the use of deception by a French lawyer who was acting unilaterally and without the protection of a court order. I cannot believe that the French authorities would even contemplate prosecuting Servier for complying with a standard set of directions for disclosure in litigation brought in the public interest by the English health authorities alleging serious breaches of EU competition law. 56. I take due note of the fact that a contrary view has been expressed by Servier’s French lawyers, but the weight which I can attach to their views is in my judgment limited. They do not purport to be independent experts whose overriding duty is owed to the court, and their evidence (in contrast to that adduced in the earlier English cases which I have reviewed) is informal in nature, being contained in correspondence without any statement of the relevant experience or expertise of the joint writers, and without any expert witness’s declaration. I do not for a moment doubt that the advice contained in the letters was given in good faith, and with the intention of assisting the court; but the deficiencies to which I have drawn attention do mean, in my view, that it carries considerably less weight than the formal evidence of a properly instructed independent expert. It is also relevant to bear in mind that, by the time when the oral hearing has taken place and the disclosure exercise begins, probably some time early next year, the French Blocking Statute may well have been materially amended in a way which will eliminate even the theoretical risk which I have described.’

‘63. The nature of the requests is briefly as follows. Request 38 asks Servier to identify (by name, job description, employer and tenure) all the individuals who were responsible for drafting and prosecuting the applications for patent EP 1296 947 (“the 947 patent”) before the EPO, defending that patent in the EPO opposition proceedings, and conducting the patent infringement and validity proceedings in relation to it before the English courts. In a similar way, request 52 asks Servier to identify the individuals upon whose state of mind Servier relies to substantiate the allegation in paragraph 53(g) of the defence that at all material times the third defendant believed the 947 patent to be valid. Finally, request 45 asks Servier to “clarify the value of US sales of Perindopril in absolute US dollar terms, in particular in and around 2000.” 64. It is clear that much of the information needed to answer these requests will fall within the apparent scope of the French Blocking Statute. Accordingly, if I felt that there were any real risk of the third or fourth defendant being exposed to prosecution by compliance with an order of the English court to answer those requests, or by voluntarily providing the answers to them, I would have been disposed to direct the claimants in the first instance to attempt to use the procedure of Regulation 1206/2001, despite the extra time and expense which would be involved. I say “attempt to use” because I agree with the claimants that it is very far from clear whether the procedure under the regulation extends to requests for particulars of an opponent’s statement of case, and it is only with some linguistic contortion that the provision of answers to such requests could be described as the taking of evidence. Since, however, I am satisfied that the French Blocking Statute does not pose any real threat to Servier, for the reasons which I have already given, I see no reason to depart from the normal practice of the English court. I will therefore direct Servier to answer these requests in the usual way. 65. I also add, for the avoidance of doubt, that the individuals whose names Servier must provide in answer to requests 38 and 52 are the names of those who had operational responsibility in relation to the relevant decisions or activities, and whose conduct might reasonably be regarded as attributable to Servier.’

‘French criminal law prohibits, at the risk of incurring six months’ imprisonment and a fine of €18,000, the search for and provision of, by any person, documents or information of an economic, commercial, industrial, financial or technical nature intended for use as evidence in foreign judicial or administrative proceedings or within the framework thereof. The scope of this prohibition is particularly wide since it applies even if the search for the document is not effectively followed up and even if the person pursued is neither a French national nor a French resident. However, the prohibition is only instituted “subject to international treaties and agreements”, in such a way that it is possible for lawyers to ask a judge to formalise a request for international judicial collaboration in accordance with the international instruments relating to the provision of proof abroad, in this case on the basis of community regulation no. 1206/2001. France considers that the provisions of these instruments have an exclusive and obligatory nature, where it is a question for a judicial authority of a State to obtain proof in another State also bound by this instrument. Hence, any search for proof on French territory by foreign authorities, which may be carried out outside the scope of a validly formalised request for judicial collaboration, would clearly constitute a breach of the sovereignty of the French State. The position consistently expressed by the representatives of the French government, was in particularly [sic] recalled where the Hague Convention of 18 March 1970 is concerned at the time of the last special committee organised by the Permanent Office of the Conference on International Private Law of the Hague, in that town, in February 2009, but also at the time of a Symposium organised by the ABA-International Legal Exchange … dealing with the resolution of international disputes … which was held in London and in Paris in January 2005 …. Hence, any search for information or documents must be formalised in accordance with the applicable international instruments. Where this is not the case, it is not permitted to communicate them and the penalties of imprisonment and fines provided for by the aforementioned articles of the Law no. 68-678 remain applicable. Non-compliance with this law has given rise to effective criminal sanctions (for example, a decision by the Court of Cassation of 12 December 2007). In any event, as a result of the power of the assessment of the Public Ministry in the engagement of public action, as well as a result of the constitutional principle of the separation of powers, the Ministry of Justice cannot guarantee the absence of criminal proceedings in an individual case.’

‘Given all the above, I consider that, generally, a letter signed by the Deputy Director of Economic Law in the Directorate of Civil Affairs of the Ministry of Justice concerning, in response to a specific request, on a question of law relating to a request for disclosure of international documents, should be regarded as provided with the proper authority of the Ministry, and prevails as such.’

‘34 I am also not persuaded by the argument that there is no evidence before me of the potential impact of the French blocking statute. It appears to me that the risk is pretty much self-evident, given the very broad terms in which the statute is framed, if one reaches the position that I was wrong to dismiss any risk as so insubstantial that it could be disregarded. 35. The effect of the exchange of letters with the French Ministry, at any rate according to Servier, is that there is an appreciable risk which simply cannot be disregarded, and, no doubt, this will found many of the arguments which they address to the Court of Appeal in due course. 36. Mr Drake [for the claimants] argues that the letter from the French Ministry does not itself purport to deal with the particular circumstances of the present case, but only says in general terms that every case will have to be looked at individually. That is true, but since that response was given in answer to a specific request, supported by details of my judgment on the French statute, and since the effect of the letter was to refuse to give the confirmation sought, it appears plain to me that there may be an appreciable risk which cannot be wholly discounted, and that the exchange of correspondence alone is therefore sufficient to establish the possibility of the French blocking statute having an impact on the Servier defendants. 37. Quite apart from that, there is anyway the evidence of the French lawyers which was before me this time last year which again, it seems to me, provides some prima facie evidence of the existence of a risk on the assumption that I was wrong to dismiss it as insubstantial.’

‘3. … The damages it is alleged to have suffered depends on computation of what likely overcharge resulted from the cartel and to what extent [National Grid] passed this through to its customers. Those are complex issues which depend on economic analysis of a very significant amount of data, so no clear value can yet be placed on the claim. However, with interest the amount claimed is likely to run to several £100 millions.’

‘Direct execution in conformity with the request is not approved for the following reasons. Article 17.3 of [Regulation 1206] provides that the taking of evidence be carried out by a judge or by any other person, for example an expert, appointed in conformity with the law of the Member State to which the requesting court belongs. In the present case, the request for direct execution (Form I) specifies that the taking of evidence (consisting of receipt of documents) will be carried out not by Judge ROTH as stated in the communication from the firm of lawyers which sent the request, but by the lawyer of the defendant company in the proceedings meant to produce the documents which are the subject of the taking of evidence. Such a procedure leads to charging one party to the lawsuit with executing the taking of evidence necessary for the resolution of the lawsuit, which seems contrary to the fundamental principles of the law of the Member State applied to. The refusal to grant direct execution under these conditions is in conformity with Article 17.5(c) of [Regulation 1206]. Moreover, in order to have one party produce documents considered necessary for the outcome of the lawsuit it has to settle, a court does not need to make an international application to obtain evidence: it suffices for it to order the party concerned to produce the said evidence. Certainly, recourse to a rogatory commission based on international instruments allows the parties to avoid the risk of being prosecuted in France on the basis of the law … known as the “blocking statute”, but this is an abuse of procedure, as no taking of evidence is in reality necessary to achieve the result sought by the judge.’

‘I find it virtually inconceivable that where jurisdiction over a company is exercised pursuant to an EU regulation to make it a defendant to proceedings in another EU Member State, for damages alleged to result from an established and serious violation of a fundamental provision of EU law, which proceedings serve an objective of EU policy, the public authorities of one EU Member State would in the exercise of their discretion institute criminal proceedings against that company for complying with the procedural rules of the courts of the Member Sate where the proceedings are brought. …’

‘50. [Regulation 1206] is not basically concerned with the provision of disclosure between parties to litigation at all: see Masri v. Consolidated Contractors Int (No 4) [2008] EWCA Civ 876, [2010] 1 AC 90, per Sir Anthony Clarke MR at [45] [and Roth J added in a footnote that although the Court of Appeal’s decision was reversed by the House of Lords, it was not reversed on that point]. Such disclosure does not involve the taking of evidence in another Member State. This is what I understand the official of the French Ministry of Justice to mean by the first sentence of the final paragraph of her letters. Thus to use the regulation as the means to ensure ordinary disclosure would be an extraordinary route.’

‘56 … was clearly referring to the situation where an individual designated by the court of one state would be personally taking evidence in another state in a manner which the latter state restricts, since it involves the exercise of judicial or official authority in that state. In those circumstances, collaboration with the public authorities through [the regulation] is the only way that the evidence can properly be taken. The ProRail case accordingly concerns the “direct” route under the regulation, which the French Ministry of Justice has already refused to accept as appropriate in response to this court’s requests. Moreover, the judgment has no bearing on the requirement for a company based in a second state which is a party to litigation in the first state itself to supply information and documents to the other parties to that litigation. Like Lippens, the ProRail case concerns the official taking of evidence, not disclosure of documents by one party to another.’

‘… In the course of this, after having invited the parties to attend his activities, the expert was to proceed to the scene of the accident in the Netherlands, and to all other places where he might be able to gather useful information, Moreover, he was required to determine the manufacturer and the condition of certain technical parts of the wagons. He was also asked to advise on the damage suffered and the extent of the damage. Finally, the expert was to investigate the rail network and the railway infrastructure controlled by ProRail and give his advice as to whether and to what extent that infrastructure contributed to the causes of the accident.’

‘47. The underlying principle in this sphere is that of territorial sovereignty of the Member States, as I have already stated in my opinion in Lippens and Others (Case C-170/11[2012] ECR I-0000). Traditionally, the exercise of a State’s power is territorial in nature. As a rule, it is not possible to exercise it outside the Member State in which the court or other national authority is situated, except with the agreement of the local “sovereign”, that is, with the agreement of the authorities of the other Member State in whose territory that power may be exercised. 48. [Regulation 1206] is designed to counteract that compartmentalisation of powers within the European Union, by enabling the movement of persons having to take part in investigations and, thereby, the transmission of evidence from one Member State to another, on the basis of mutual trust. In particular, it has become apparent that an investigation carried out in another Member State outside that framework could come up against the fact that certain national legislations limit the active participation of a member or representative of the requesting court. 49. In the light of the two main objectives of that regulation, namely, first to simplify cooperation between the Member States and, second, to accelerate the taking of evidence, I consider that, where it is not specifically necessary to make use of the judiciary in another Member State in order to obtain evidence, a court ordering an investigation is not required to implement one of the two forms of simplified judicial cooperation prescribed by that regulation. 50. The current wording of the two articles of [the regulation] the interpretation of which is sought by the national court does not, in my view, contradict this point of view. Article 1(1)(b) of that regulation states that it is only “where the court of a Member State … requests … to take evidence directly in another Member State” that the relevant provisions of that regulation, namely those of Article 17, must be applied. That article provides that the direct execution of such a measure by the requesting court which intervenes in that regard is preceded by a request to the central body or competent authority of the Member State in which the evidence is to be taken. On the other hand, if a court does not intend to use that form of judicial cooperation, because it considers that the assistance of the local authorities is not necessary for the investigation it is conducting to be completed successfully, it is not required to comply with the formalities laid down by [the regulation]. … 55. The decisive criterion for knowing in which cases [the regulation] has to be applied by a court of a Member State is, in my view, the criterion relating to that court’s need to obtain the collaboration not of the parties in the case but of the public authorities of the other Member State in which the inquiry is to be conducted. 56. I therefore consider that it is necessary to draw a distinction, as to whether or not the expert designated by a court of one Member State has to use the State authority of another Member State, on the basis of the specific assessment which will be made by that court. 57. If an expert is in a situation in which he is required to perform investigative tasks and to draw technical conclusions in circumstances which are permitted to anybody and everybody, because they relate to things, data or places which are accessible to the public, it seems to me that it is not necessary for such investigations to be carried out in accordance with the procedure laid down in Article 17 of [the regulation]. Acts which do not concern the sovereignty of the Member State in which the evidence is to be gathered tend not to fall within the scope of [the regulation]. I consider that, in that case, there is merely an option to implement the cooperation procedure established by Article 17. If the court which orders that an expert’s report be obtained considers it more expedient than to use the national rules of procedure, it may employ that mechanism, but it is not obliged to do so and may dispense with it if it does not need the cooperation and coercive power of the Member State of the place in which the task entrusted is to be carried out. 58. In the observations which it has presented to the Court, the Commission is also clearly of the opinion that the purpose of [the regulation] is not to exclude or impose a priori certain formal requirements or rules for obtaining evidence. It rightly infers that the court of a Member State must be at liberty to order that an expert investigation be carried out in another Member State without following the procedure laid down in Article 17 of that regulation, and therefore without requesting the assistance of the authorities of the other Member State, “provided that” the performance of that part of the investigation does not require the collaboration of the authorities of the Member State in which it is to take place. 59. On the other hand, if, in order to complete the task, the expert needs to have access to objects, information or places which are not public, he must then obtain the assistance of the authorities of the other Member State. In that case, in which there is an exercise of judicial power with external effect, namely effect in the territory of another Member State, the procedure for the direct taking of evidence laid down in Article 17 of [the regulation] must be applied in order to obtain assistance from the requested Member State and to be entitled to all the attributes of the corresponding power. 60. This seems to me to be the case in the circumstances such as those in the main proceedings. The access to the installations of the railway network, which is most probably restricted by legislative, statutory or administrative provisions, particularly for reasons of traffic regulation and above all of safety, requires the use of State authority. Even though ProRail has the use of that network as controller of the infrastructure concerned, any agreement of that private company is not sufficient, given the public nature of the actions necessary to carry out such a task. Since, in my view, the Belgian courts therefore needed the assistance of the Dutch judicial authorities in order that the task entrusted to the expert could be performed directly in the territory of the Kingdom of the Netherlands, I consider that the cooperation procedure laid down in Article 17 of [the regulation] should have been implemented in the present case. 61. There can be no risk that Article 17 of [the regulation] will lose its effectiveness if the interpretation I propose is upheld by the Court. I note that ProRail maintains that the adoption of that regulation would not have been of interest if the Member States were not bound by it. Nevertheless, I consider that, taken like this, the issue is distorted. [The regulation] does indeed have a binding effect but only in the sphere corresponding to its scope, that is to say that, in my view, it is applicable only in cases in which the collaboration of the authorities of another Member State is specifically necessary to enable or improve the taking of evidence, and is therefore requested by a court of a Member State. 62. I consider that it would be wrong, and would even amount to a misinterpretation, to consider, as ProRail claims, that owing to the entry into force of [the regulation], it is now no longer possible to designate experts to carry out investigations abroad without systematically applying the procedures laid down by that regulation. [The regulation] is not designed to restrict the options of national courts for action regarding the taking of evidence, byexcluding other methods of inquiry but, on the contrary, to increase those options, by creating an alternative which encourages cooperation between those courts as necessary, that is to say, when the court before which a case has been brought considers that the procedures established by that regulation are the most effective.’

‘40. It must be observed that, according to Article 1(1)(b) of [the regulation], the latter is applicable in civil and commercial matters where the court of a Member State, in accordance with the provisions of the law of that State, makes a request to take evidence directly in another Member State. 41. The conditions for such direct taking of evidence are governed by Article 17 of that regulation. According to Article 17(1) and (4), such evidence may be taken directly in the requested Member State with the prior authorisation of the central body or competent authority of that State. According to Article 17(3), the taking of evidence is to be performed by a member of the judicial personnel or by any other person such as an expert, who will be designated, in accordance with the law of the Member State of the requesting court. 42. It follows that [the regulation] applies as a general rule only if the court of a Member State decides to take evidence according to one of the two methods provided for by that regulation, in which case it is required to follow the procedure relating to those methods (Case C-170/11 Lippens and Others [2012] ECR I-0000, paragraph 28). 43. Next, it must be recalled that, according to recitals 2, 7, 8 , 10 and 11 in the preamble to [the regulation], the aim of the regulation is to make the taking of evidence in a cross-border context simple, effective and rapid. The taking of evidence, by a court of one Member State in another Member State must not lead to the lengthening of national proceedings. That is why [the regulation] established a regime binding on all the Member States, with the exception of the Kingdom of Denmark, to remove obstacles which may arise in that field (see Case C-283/09 Werynski [2011] ECR I-601, paragraph 62, and Lippens and Others, paragraph 28). 44. Furthermore, as the Advocate General observed, in point 62 of his Opinion, the regulation does not restrict the options to take evidence situated in other Member States, but aims to increase these options by encouraging cooperation between the courts in that area. 45. An interpretation of Articles 1(1)(b) and 17 of [the regulation] according to which the court of a Member State is obliged, for any expert investigation which must be carried out directly in another Member State, to take evidence according to the method laid down by those articles would not be consistent with those objectives. In certain circumstances, it may be simpler, more effective and quicker for the court ordering such an investigation, to take such evidence without recourse to the regulation. … 47. It must be stated that, in so far as the expert designated by a court of a Member State must go to another Member State in order to carry out the investigation which has been entrusted to him, that might, in certain circumstances, affect the power of the Member State in which it takes place, in particular where it is an investigation carried out in places connected to the exercise of such powers or in places to which access or other action is, under the law of the Member State in which the investigation is carried out, prohibited or restricted to certain persons. 48. In such circumstances, unless the court wishing to order cross-border expert investigation foregoes the taking of that evidence, and in the absence of an agreement or arrangement between Member States within the meaning of Article 21(2) of [the regulation], the method of taking evidence laid down in Articles 1(1)(b) and 17 thereof is the only means to enable the court of a Member State to carry out an expert investigation directly in another Member State. 49. It is clear from the foregoing that a national court wishing to order an expert investigation which must be carried out in another Member State is not necessarily required to have recourse to the method of taking evidence laid down in Articles 1(1)(b) and 17 of [the regulation].’

‘In other words, we consider that the spirit of the law is to protect French interests against abusive foreign intrusions, and not to reduce the rights of defence of French individuals/entities. The problem with this is that, unlike the case where specific information is sought from the Servier French Companies, where the information request can be made under the procedure set out in the Hague Convention or [the Regulation], there is no procedure under the relevant international rules allowing a French company to provide evidence on a voluntary basis, such as in the form of a witness statement. In those circumstances, our advice would be for Servier to write to the competent minister in order to inform him/her, at least two months in advance, that its representative plan to provide evidence in the context of proceedings before the High Court of Justice on certain issues to be described in the relevant letter. Whilst the minister has no obligation to respond and no mandate to grant any authorisation, informing the minister in compliance with the French Blocking Statute and the French administration guidelines would indicate Servier’s good faith. Thus, such communication would significantly reduce the risk of criminal procedure and sanctions. If the minister opposes to the proposed provision of evidence, Servier may consider whether to appeal the decision to the French courts. A judge may be sympathetic to Servier’s position in light of, in particular, the right to a fair trial protected under French law. However, we are not aware of any prior jurisprudence on this matter, so no concrete conclusions may be set out as to the likely approach of the French courts if such an appeal were to be made.’

‘It is the unqualified nature of the right [the privilege against self-incrimination], so valuable as a protection for the witness, which gives rise to the problem when a foreign law element is present. If the privilege were applicable when the risk of prosecution is under the law of another country, the privilege would have the effect of according primacy to the foreign law in all cases. Another country’s decision on what conduct does or does not attract criminal or penal sanctions would rebound on the domestic court. The foreign law would override the domestic court’s ability to conduct its proceedings in accordance with its own procedures and law. If an answer would tend to expose the witness to a real risk of prosecution under a foreign law then, whatever the nature of the activity proscribed by the foreign law, the witness would have an absolute right to refuse to answer the question, however important that answer might be for the purposes of the domestic court’s proceedings. This surely cannot be right. Different countries have their own interests to pursue. At times national interests conflict. In its simple, absolute, unqualified form the privilege, established in a domestic law setting, cannot be extended to include foreign law without encroaching unacceptably upon the domestic country’s legitimate interest in the conduct of its own judicial proceedings.’

‘… not limited to the hearing of witnesses. Rather, it follows from Article 4(1)(f) that the taking of evidence may include also documents or other objects which may be visually examined or inspected by experts.’

‘68. Unlike the Hague Evidence Convention (Article 23), Regulation No 1206/2001 does not contain any explicit proviso with regard to the pre-trial discovery. However, when [the regulation] was adopted, the Council issued the following Statement 54/01: “The scope of application of this Regulation shall not cover pre-trial discovery, including the so-called “fishing expeditions”. 69. According to settled case-law, a statement in the Council minutes may be taken into account in the interpretation of a legal act inasmuch as its content is referred to also in the wording of the legal act and if it serves to clarify a general concept. In the context of the present proceedings, the statement in the minutes clarifies the condition concerning the “use of evidence in judicial proceedings, commenced or contemplated” within the meaning of Article 1(2) of [Regulation 1206]. 70. In that regard, the exclusion of pre-trial discovery referred to in the statement cannot be interpreted as precluding every procedure aimed at establishing facts prior to the bringing of proceedings in the main claim. That position is precluded by the wording of Article 1(2). Rather, the statement indicates that the evidence must be described with a sufficient degree of precision that the link to the proceedings commenced or contemplated is evident and that the judicial cooperation may relate only to the items themselves which are capable of constituting proof and not to circumstances which linked only indirectly to the judicial proceedings.’

‘71. In order to prevent the other party to the proceedings from having to comply with excessive requests for discovery (so-called fishing expeditions), in the case of orders for the discovery of specific documents a distinction must be drawn in the following manner. 72. An order to produce documents is inadmissible if the documents whose discovery is sought lead only to the identification of items which are capable of serving as evidence but which do not in themselves serve an evidential function in the proceedings (a so-called “train of enquiry” – the inadmissible search for material which may be relevant as evidence). In such cases, the evidence is used merely indirectly. Accordingly, the condition “[for] use in judicial proceedings” is not satisfied. 73. On the other hand, an order to produce documents which are discovered only upon execution of the order is admissible, if such documents are specified or described with sufficient precision and are directly linked to the subject-matter of the dispute. Only in this manner can the excessive gathering of material – to the detriment of the other party to the proceedings --- going beyond the matter in dispute be avoided. 74. In the main proceedings, the order of the Italian court requiring a description to be obtained of the sales and purchase invoices, delivery notes, payment orders, commercial offer letters, advertising material, data stored in computer archives and customs documents, serves the purpose of discovery of that evidence. Using those documents, the plaintiff in the main proceedings intends to prove the existence of a patent infringement as such, the extent thereof and, accordingly, to quantify his damages claim. To the extent that that evidence is intended to be used in proceedings pending or contemplated, the request of the Italian court is admissible. 75. However, the passage in that order of the Italian court by which it requires further unspecified documents (“by way of example, however, not exhaustively”) is inadmissible. What is lacking in that passage is a precise description of the other types of documents.’

‘43. In fact, [the regulation] does not seek to interfere with the functions of the competent court by restricting its power to ensure the proper conduct of procedure within the limits of the rules of international law, European Union law or national law imposed on it, but reinforces that power and delimits it in order to protect the rights of the parties and respect the prerogatives of the other Member States. I consider that the purpose of that instrument is to facilitate the cross-border activity of the courts of the Member States and not to impede it by restricting the means which they have of taking evidence. 44. The very spirit of the regulation would be called into question if its mandatory implementation led to a reduction in the means of gathering evidence by excluding the possibility for the court of a Member State of using alternative evidence-gathering methods where it considers them to be preferable to the methods of cross-border judicial cooperation contained in [the regulation].’

‘27. However, [the regulation] does not contain any provision governing or excluding the possibility, for the court in one Member State, of summoning a party residing in another Member State to appear and make a witness statement directly before it. 28. It follows that [the regulation] applies as a general rule only if the court of a Member State decides to take evidence according to one of the two methods provided for by that regulation, in which case it is required to follow the procedures relating to those methods. 29. Next, it must be recalled that, according to recitals 2, 7, 8, 10 and 11 in the preamble to [the regulation], the aim of the regulation is to make the taking of evidence in a cross-border context simple, effective and rapid. The taking, by a court of one Member State, of evidence in another Member State must not lead to the lengthening of national proceedings. That is why [the regulation] established a regime binding on all the Member States, with the exception of the Kingdom of Denmark, to remove obstacles which may arise in that field …. 30. An interpretation of the provisions of [the regulation] which prohibits, in a general manner, the court in a Member State from summoning as a witness, pursuant to its national law, a party residing in another Member State and hearing that party under that national law would be contrary to that objective. … 31. Thus, it is clear that, in certain circumstances, in particular if the party summoned as a witness is prepared to appear voluntarily, it may be simpler, more effective and quicker for the competent court to hear him in accordance with the provisions of its national law instead of using the means of taking evidence provided for by [the regulation].’

‘57. I appreciate that there is still some time before this case comes to trial. However, significant time was lost through an abortive attempt to use the direct route under [Regulation 1206]. The case is now proceeding on a carefully structured timetable to trial, and the details on the operation of the cartel and as regards GIS projects which the disclosure from the French Defendants will provide is needed by the experts for the process of assembling and assimilating data for the complex exercise of estimating the cartel overcharge. There is, in my view, a real risk that the respective French courts might reject a further request under the regulation as inappropriate since they are not being asked to take evidence but, in effect, to order documentary disclosure. Moreover, if resort to a request under the regulation were found inappropriate for the present disclosure by reason only of the blocking statute, further and repeated requests may similarly be needed whenever additional information or clarification is sought from any of the French Defendants. Given my conclusion regarding the risk of prosecution under the French blocking statute, I see no sound basis for taking a course that involves further delay and uncertainty. I consider that the French Defendants should be subject to an order for disclosure in the same way as all the other defendants, including the Swiss, German and Austrian defendants.’