“Notwithstanding that it is not within the literal meaning of the relevant claim(s) of the patent, does the variant achieve substantially the same result in substantially the same way as the invention, i.e. the inventive concept revealed by the patent?”
“48. The variant, the controller in Manitou’s configuration C machines, is by common consent more permissive of arm movement at arm angles which are less likely to threaten the stability of the machine. 49. This is achieved in a different way. The Manitou controller shares with the inventive concept of EP 382 the measurement of the moment of tilt. But the signal representative of the moment of tilt, the ‘stability signal’ derived from the rear axle sensor, is monitored not for [another criterion] but for [criterion X]. [Redacted sentence.] When the threshold is reached, the controller causes arm movement to stop abruptly. Thus, (a) the relevant threshold is in [criterion X] not [in another criterion] and (b) it is not varied by reference to the angle of the arm but by reference to [redacted]. 50. As a matter of physics, [criterion X] is in part dependent on the angle of the arm. Therefore [criterion X] and thereby the [value of GX], is in part dependent on the angle of the arm. It is also dependent on [a number of other parameters]. However, there is no signal representative of the arm angle which, by itself, directs changes to the [value of GX].”
“In EP 382 it is achieved by varying a threshold in the moment of tilt according to the angle of the arm. In Manitou’s configuration C machines it is achieved by varying a threshold in [criterion X], the variation done by reference to the [measurement of a parameter related to criterion X].”
“First, the information itself ... must ‘have the necessary quality of confidence about it’. Secondly, that information must have been communicated in circumstances importing an obligation of confidence. Thirdly, there must have been an unauthorised use of the information to the detriment of the party communicating it.”
“What the defendants did in this case was to dispense in certain material respects with the necessity of going through the process which had been gone through in compiling these drawings, and thereby to save themselves a great deal of labour and calculation and careful draughtsmanship. No doubt, if they had taken the finished article, namely, the leather punch, which they might have bought in a shop, and given it to an expert draughtsman, that draughtsman could have produced the necessary drawings for the manufacture of machine tools required for making that particular finished article. In at any rate a very material respect they saved themselves that trouble by obtaining the necessary information either from the original drawings or from the tools made in accordance with them. That, in my opinion, was a breach of confidence.”
“In cases concerning design drawings like Saltman v Campbell, Terrapin and Alfa Laval v Wincanton, much will depend on the level of generality of the information asserted to be confidential. If the claimant contends that information relating to the shape and configuration of the article depicted in the drawings is confidential, but the shape and configuration of the article can readily be ascertained from inspection of examples of the article which have been sold or are otherwise publicly accessible, then the claim will fail. If, on the other hand, the claimant contends that detailed dimensions, tolerances and manufacturing information recorded in the drawings are confidential, that information cannot readily be ascertained from inspection, but only by a process of reverse engineering and the defendant has used the drawings as a short cut rather than taking the time and effort to reverse engineer, then the claim will succeed.”
“the fact that information could be obtained by reverse engineering will not of itself prevent it from being regarded as confidential if at least the reverse engineering would involve a significant amount of work”
“[31] So, starting with the first requirement, does the encrypted information in the Cashflow, have the ‘necessary quality of confidence’? I think the answer is clearly ‘no’. The Cashflow is on the market. Anyone can buy it. And anyone with the skills to de-encrypt has access to the information. The fact that only a few have those skills is, as it seems to me, neither here nor there. Anyone can acquire the skills and anyway, a buyer is free to go to a man who has them. Mars suggest that the owner, although he owns the machine, does not own the information within it. That is too glib. What the owner has is the right of full ownership. With that goes an entitlement ‘to dismantle the machine to find out how it works and tell anyone he pleases’ (a right recognised by Morritt J. in Alfa Laval Cheese Systems Ltd v. Wincanton Engineering Ltd [1990] F.S.R. 583). [32] In so holding, I am of course not saying that were anyone to steal the information direct from Mars, thus saving themselves reverse engineering and de-encryption, would not be liable for breach of confidence. The un-encrypted information remains confidential in the sense that in that form it has never been published. It is the sort of information which, if illegitimately taken, can give rise to the ‘springboard’ (Roxburgh J.’s graphic adjectival noun in Terrapin Ltd v. Builders Supply Co. (Hayes) Ltd [1960] RP.C. 128) type of the action for breach of confidence. The law of confidence merely prevents a party from taking a leap forwards by by-passing ‘special labours in respect of the product in order to discover its secret’ (Francis Gurry, Breach of Confidence (1984).”
“(16) In the interest of innovation and to foster competition, the provisions of this Directive should not create any exclusive right to know-how or information protected as trade secrets. Thus, the independent discovery of the same know-how or information should remain possible. Reverse engineering of a lawfully acquired product should be considered as a lawful means of acquiring information, except when otherwise contractually agreed. The freedom to enter into such contractual arrangements can, however, be limited by law. … (24) The prospect of losing the confidentiality of a trade secret in the course of legal proceedings often deters legitimate trade secret holders from instituting legal proceedings to defend their trade secrets, thus jeopardising the effectiveness of the measures, procedures and remedies provided for. For this reason, it is necessary to establish, subject to appropriate safeguards ensuring the right to an effective remedy and to a fair trial, specific requirements aimed at protecting the confidentiality of the litigated trade secret in the course of legal proceedings instituted for its defence. Such protection should remain in force after the legal proceedings have ended and for as long as the information constituting the trade secret is not in the public domain. (25) Such requirements should include, as a minimum, the possibility of restricting the circle of persons entitled to have access to evidence or hearings, bearing in mind that all such persons should be subject to the confidentiality requirements set out in this Directive, and of publishing only the non-confidential elements of judicial decisions. In this context, considering that assessing the nature of the information which is the subject of a dispute is one of the main purposes of legal proceedings, it is particularly important to ensure both the effective protection of the confidentiality of trade secrets and respect for the right of the parties to those proceedings to an effective remedy and to a fair trial. … … Article 2 Definitions For the purposes of this Directive, the following definitions apply: (1) ‘trade secret’ means information which meets all of the following requirements: (a) it is secret in the sense that it is not, as a body or in the precise configuration and assembly of its components, generally known among or readily accessible to persons within the circles that normally deal with the kind of information in question; (b) it has commercial value because it is secret; (c) it has been subject to reasonable steps under the circumstances, by the person lawfully in control of the information, to keep it secret; (2) ‘trade secret holder’ means any natural or legal person lawfully controlling a trade secret; (3) ‘infringer’ means any natural or legal person who has unlawfully acquired, used or disclosed a trade secret; … Article 3 Lawful acquisition, use and disclosure of trade secrets 1. The acquisition of a trade secret shall be considered lawful when the trade secret is obtained by any of the following means: … (b) observation, study, disassembly or testing of a product or object that has been made available to the public or that is lawfully in the possession of the acquirer of the information who is free from any legally valid duty to limit the acquisition of the trade secret; … Article 4 Unlawful acquisition, use and disclosure of trade secrets 1. Member States shall ensure that trade secret holders are entitled to apply for the measures, procedures and remedies provided for in this Directive in order to prevent, or obtain redress for, the unlawful acquisition, use or disclosure of their trade secret. 2. The acquisition of a trade secret without the consent of the trade secret holder shall be considered unlawful, whenever carried out by: (a) unauthorised access to, appropriation of, or copying of any documents, objects, materials, substances or electronic files, lawfully under the control of the trade secret holder, containing the trade secret or from which the trade secret can be deduced; (b) any other conduct which, under the circumstances, is considered contrary to honest commercial practices. 3. The use or disclosure of a trade secret shall be considered unlawful whenever carried out, without the consent of the trade secret holder, by a person who is found to meet any of the following conditions: (a) having acquired the trade secret unlawfully; (b) being in breach of a confidentiality agreement or any other duty not to disclose the trade secret; (c) being in breach of a contractual or any other duty to limit the use of the trade secret. ... Article 9 Preservation of confidentiality of trade secrets in the course of legal proceedings 1. Member States shall ensure that the parties, their lawyers or other representatives, court officials, witnesses, experts and any other person participating in legal proceedings relating to the unlawful acquisition, use or disclosure of a trade secret, or who has access to documents which form part of those legal proceedings, are not permitted to use or disclose any trade secret or alleged trade secret which the competent judicial authorities have, in response to a duly reasoned application by an interested party, identified as confidential and of which they have become aware as a result of such participation or access. In that regard, Member States may also allow competent judicial authorities to act on their own initiative. The obligation referred to in the first subparagraph shall remain in force after the legal proceedings have ended. However, such obligation shall cease to exist in any of the following circumstances: (a) where the alleged trade secret is found, by a final decision, not to meet the requirements set out in point (1) of Article 2; or (b) where over time, the information in question becomes generally known among or readily accessible to persons within the circles that normally deal with that kind of information. 2. Member States shall also ensure that the competent judicial authorities may, on a duly reasoned application by a party, take specific measures necessary to preserve the confidentiality of any trade secret or alleged trade secret used or referred to in the course of legal proceedings relating to the unlawful acquisition, use or disclosure of a trade secret. Member States may also allow competent judicial authorities to take such measures on their own initiative. The measures referred to in the first subparagraph shall at least include the possibility: (a) of restricting access to any document containing trade secrets or alleged trade secrets submitted by the parties or third parties, in whole or in part, to a limited number of persons; (b) of restricting access to hearings, when trade secrets or alleged trade secrets may be disclosed, and the corresponding record or transcript of those hearings to a limited number of persons; (c) of making available to any person other than those comprised in the limited number of persons referred to in points (a) and (b) a non-confidential version of any judicial decision, in which the passages containing trade secrets have been removed or redacted. The number of persons referred to in points (a) and (b) of the second subparagraph shall be no greater than necessary in order to ensure compliance with the right of the parties to the legal proceedings to an effective remedy and to a fair trial, and shall include, at least, one natural person from each party and the respective lawyers or other representatives of those parties to the legal proceedings. 3. When deciding on the measures referred to in paragraph 2 and assessing their proportionality, the competent judicial authorities shall take into account the need to ensure the right to an effective remedy and to a fair trial, the legitimate interests of the parties and, where appropriate, of third parties, and any potential harm for either of the parties, and, where appropriate, for third parties, resulting from the granting or rejection of such measures. …”
“6. The Court will recall that this Configuration C system was found not to infringe any of JCB’s patents … either on a normal or equivalents basis. Manitou is therefore understandably concerned at the risk of public disclosure of the detailed workings of a complex and innovative system, developed in-house by its own engineers and never to-date described or disclosed publicly, and which it was only necessary to describe in these proceedings due to infringement allegations advanced by JCB that were found to be baseless. 7. I understand from Manitou that it considers that the design and implementation of Configuration C to be commercially sensitive and that disclosure of it to competitors would risk unjustifiably eroding a competitive advantage that Manitou currently possesses. One obvious such advantage it gives to Manitou is that it has permitted it to sell a system with excellent performance that meets the relevant standards and regulations and does not infringe JCB’s patents: this is clearly a potential commercial advantage over third party (i.e. non-JCB) competitors who are left to develop their own such systems or incur JCB’s ire. 8. Before considering the detail of the confidentiality claim, it is instructive to recall a general point that illustrates the confidentiality of the information. The Court will recall that the present proceedings form a part of broader, multi-jurisdictional litigation extending also to France and Italy. Partially from my own knowledge but also from discussions with Mr Michel Abello, Manitou’s French lawyer who has conduct both of the proceedings in France and co-ordination of the International litigation, I understand that despite extensive testing, reverse engineering and other analysis, none of the aspects of the functioning of Configuration C sought to be kept confidential in these UK proceedings has been determined in any meaningful way by JCB in either France or Italy (where in general a claimant must rely on publicly available information or experiment to establish its infringement case, and where disclosure or a product description is not routinely ordered). Given that JCB advanced both a conventional infringement claim and one based on equivalents in the UK, that corresponding designations of EP ‘382 are available in each of France and Italy, and that proceedings in respect of EP ‘382 are ongoing in France, it is a reasonable assumption that were they able to determine the relevant information through public sources or by experiment, they would have done so. In fact Configuration C is not alleged to infringe in either jurisdiction. 9. My purpose in recounting the above is not to suggest that the Court should keep the information confidential merely to prevent JCB from advancing an infringement claim abroad. The point I am seeking to make is a broader one: if a well-resourced company such as JCB that is currently in litigation with Manitou could not determine the information through public sources or reverse engineering, despite extensive effort and expenditure, then it provides real evidence that the information is genuinely confidential. The fact that JCB has made unfounded claims of patent infringement against the system should not deprive Manitou of that commercially valuable confidentiality.”
“Manitou should be entitled to protect as confidential the fact that its system is based on the use of a clever and quite different parameter, that was selected for use as a result of the innovation of its engineers and its investment in research and development. This is especially the case where the only reason it risks being disclosed is as a result of an unfounded allegation of patent infringement.”
“27. … Professor Plummer states that from the information acknowledged to be non-confidential, a skilled person would know that the Configuration C system has a threshold which varies with the angle of the arm and which is more permissive at low angles than at high angles. He points out there are a number of parameters which vary with arm angle and for reasons he discusses he says that it would be clear from a detailed inspection of Manitou’s machine that certain possible parameters can be ruled out. This having been done, there is a further parameter that would occur to the skilled engineer who would identify it as the relevant criterion that must be used in a Configuration C Manitou machine. 28. Professor Plummer concedes that only a detailed inspection of a Manitou machine would allow the engineer to identify this criterion, referred to in argument as ‘criterion X’. …”
“In my view, the distinction being drawn both by Jacob J and Arnold J has nothing to do with stealing or obtaining information by illegitimate means. An owner of any machine is entitled to find out how it works via as much detailed inspection or reverse engineering as they please. Whatever information is thereby discovered will not have been obtained in breach of confidence. Exactly the same information may exist in a document. Another party’s act of using or disclosing the information as derived from the document will be in breach of confidence because such an act permits the exploitation of the information by means of an unlawful short cut, i.e. without having to bother with the work of dismantling or reverse engineering. Looked at another way, the information as recorded in the document retains its quality of confidence because it is in a form which makes an unlawful short cut possible.”
“… confirms Manitou’s assertion that criterion X is confidential as recorded in a document, which includes the Annex to my judgment at trial. A competitor reading the Annex would obtain the information without having to conduct a detailed investigation or go through Professor Plummer’s process of elimination.”
“Publicity is the very soul of justice. It is the keenest spur to exertion and the surest of all guards against improbity. It keeps the judge himself while trying under trial.”
“Open justice. The words express a principle at the heart of our system of justice and vital to the rule of law. The rule of law is a fine concept but fine words butter no parsnips. How is the rule of law itself to be policed? It is an age old question. Quis custodiet ipsos custodes—who will guard the guards themselves? In a democracy, where power depends on the consent of the people governed, the answer must lie in the transparency of the legal process. Open justice lets in the light and allows the public to scrutinise the workings of the law, for better or for worse.”
“42. The principal purposes of the open justice principle are two-fold and there may well be others. The first is to enable public scrutiny of the way in which courts decide cases—to hold the judges to account for the decisions they make and to enable the public to have confidence that they are doing their job properly. In A v British Broadcasting Corpn[2015] AC 588 , Lord Reed JSC reminded us of the comment of Lord Shaw of Dunfermline, in Scott v Scott[1913] AC 417 , 475, that the two Acts of the Scottish Parliament passed in 1693 requiring that both civil and criminal cases be heard ‘with open doors’, ‘bore testimony to a determination to secure civil liberties against the judges as well as against the Crown’ (para 24). 43. But the second goes beyond the policing of individual courts and judges. It is to enable the public to understand how the justice system works and why decisions are taken. For this they have to be in a position to understand the issues and the evidence adduced in support of the parties’ cases. In the olden days, as has often been said, the general practice was that all the argument and the evidence was placed before the court orally. Documents would be read out. The modern practice is quite different. Much more of the argument and evidence is reduced into writing before the hearing takes place. Often, documents are not read out. It is difficult, if not impossible, in many cases, especially complicated civil cases, to know what is going on unless you have access to the written material.”
“… where litigation has taken place and judgment given, any disapplication of the principle of open justice must be rigidly contained, and even within the small number of permissible exceptions, it should be rare indeed for the court to order that any part of the reasoning in the judgment which has led it to its conclusion should be redacted. As a matter of principle it is an order to be made only in extreme circumstances.”
“… there is a very strong presumption indeed that a judgment, containing as it does the judge’s reasons for his decision, should be fully available for all to see. In the absence of good reason to the contrary, it is axiomatic that a litigant should be able to see all the reasoning of the court in his case, that justice should be administered and dispensed openly and in public, and that the media should know, and be able to disseminate, all aspects of court proceedings. That was made clear in Scott v Scott[1913] AC 417 , and is now reinforced by articles 6 and 10 of the Convention. But even this fundamental principle must occasionally yield to other factors, such as the need to safeguard children and other vulnerable people, the need to prevent the court’s orders being thwarted, and the need to protect the public interest.”
“While the broad principle is that the Courts of this country must, as between parties, administer justice in public, this principle is subject to apparent exceptions, such as those to which I have referred. But the exceptions are themselves the outcome of a yet more fundamental principle that the chief object of Courts of justice must be to secure that justice is done. In the two cases of wards of Court and of lunatics the Court is really sitting primarily to guard the interests of the ward or the lunatic. Its jurisdiction is in this respect parental and administrative, and the disposal of controverted questions is an incident only in the jurisdiction. It may often be necessary, in order to attain its primary object, that the Court should exclude the public. The broad principle which ordinarily governs it therefore yields to the paramount duty, which is the care of the ward or the lunatic. The other case referred to, that of litigation as to a secret process, where the effect of publicity would be to destroy the subject-matter, illustrates a class which stands on a different footing. There it may well be that justice could not be done at all if it had to be done in public. As the paramount object must always be to do justice, the general rule as to publicity, after all only the means to an end, must accordingly yield. But the burden lies on those seeking to displace its application in the particular case to make out that the ordinary rule must as of necessity be superseded by this paramount consideration. The question is by no means one which, consistently with the spirit of our jurisprudence, can be dealt with by the judge as resting in his mere discretion as to what is expedient. The latter must treat it as one of principle, and as turning, not on convenience, but on necessity.”
“… the function of a product description is in all respects equivalent to that of disclosure. The duties of all parties, both the professionals and of the parties themselves, in relation to a product description, are the same as they would be in relation to trial.”
“(1) The general rule is that a hearing is to be in public. A hearing may not be held in private, irrespective of the parties’ consent, unless and to the extent that the court decides that it must be held in private, applying the provisions of paragraph (3). … (3) A hearing, or any part of it, must be held in private if, and only to the extent that, the court is satisfied of one or more of the matters set out in sub-paragraphs (a) to (g) and that it is necessary to sit in private to secure the proper administration of justice – (a) publicity would defeat the object of the hearing; (b) it involves matters relating to national security; (c) it involves confidential information (including information relating to personal financial matters) and publicity would damage that confidentiality; (d) a private hearing is necessary to protect the interests of any child or protected party; (e) it is a hearing of an application made without notice and it would be unjust to any respondent for there to be a public hearing; (f) it involves uncontentious matters arising in the administration of trusts or in the administration of a deceased person’s estate; or (g) the court for any other reason considers this to be necessary to secure the proper administration of justice.” (a) publicity would defeat the object of the hearing; (b) it involves matters relating to national security; (c) it involves confidential information (including information relating to personal financial matters) and publicity would damage that confidentiality; (d) a private hearing is necessary to protect the interests of any child or protected party; (e) it is a hearing of an application made without notice and it would be unjust to any respondent for there to be a public hearing; (f) it involves uncontentious matters arising in the administration of trusts or in the administration of a deceased person’s estate; or (g) the court for any other reason considers this to be necessary to secure the proper administration of justice.”
“… provisions to this broad effect, though formulated in slightly different terms, were introduced into RSC Ord 24, r 14A as a result of the decision of the Government of the United Kingdom not to contest the complaint declared admissible by the European Commission on Human Rights, Harman v United Kingdom(1985) 7 EHRR 146 , in relation to the law declared by the House of Lords in Home Office v Harman[1983] 1 AC 280 .”
“7. When the matter comes to trial the confidentiality of documents in the scheme is maintained in three ways, by an interim order underCPR r.31.22 (2), by not stating the confidential information out loud in public and by sometimes sitting in private for part of the case. 8. The interim r.31.22(2) order is made at the start of the hearing until judgment or further order. It applies to any documents within the scheme which are read by or referred to in court. The effect of the order is that until judgmentCPR 31.22 (1) does not apply to such a document. Without such an order, the effect of r.31.22(1) would have been that if the document was read or referred to by the court, the restriction prohibiting the receiving party from using it only for the purposes of the proceedings would not apply. … 9. Making an order under r.31.22(2) allows for confidential documents to be referred to in public (albeit not read out) without prejudicing their confidentiality. That way the trial can be conducted in public, the confidentiality of the relevant information is maintained for the time being and the trial process is not delayed by arguments over confidentiality. Once the trial is over, as part of the hearing to deal with remedies and costs, the court will be asked deal with r.31.22. If appropriate a permanent order under r.31.22(2) will be made for some or all of the documents. For any document covered by the interim order, if no permanent order is made at that stage the interim order expires. 10. However it is often the case that it is impractical to deal with some confidential information this way. Being unable to have an unfettered discussion about it may be impractical and it may be unfair to a witness to cross-examine them on this basis. When this happens and assuming it is appropriate to do so, the Patents Court will sit in private for part of the case. … 13. … When the Patents Court sits in private, only individuals permitted to have access to the confidential documents under the confidentiality scheme are permitted to remain in court. The public, including the press and any third parties are excluded. Also excluded are any members of the receiving party’s legal team who are not covered by the confidentiality scheme as well as any employees of the receiving party itself who are not covered by the confidentiality scheme. The legal team and employees of the receiving party who remain in court are bound by the terms of the confidentiality scheme in relation to what happened when the court sat in private. 14. … sitting in private should only occur when it is strictly necessary and should be kept to a minimum. That is what happens in the Patents Court.”
“(i) The court should start from the principle that very good reasons are required for departing from the normal rule of publicity. … The already very strong English jurisprudence to this effect has only been reinforced by the addition to it of this country’s obligations under articles 6 and 10 of the Convention. (ii) When considering an application in respect of a particular document, the court should take into account the role that the document has played or will play in the trial, and thus its relevance to the process of scrutiny ... The court 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, or substantially possible, to understand the trial and judge the judge without access to a particular document. However, in particular cases the centrality of the document to the trial is a factor to be placed in the balance. (iii) In dealing with issues of confidentiality between the parties, the court must have in mind any ‘chilling’ effect of an order upon the interests of third parties …. (iv) Simple assertions of confidentiality and of the damage that will be done by publication, even if supported by both parties, should not prevail. The court will require specific reasons why a party would be damaged by the publication of a document. Those reasons will in appropriate cases be weighed in the light of the considerations referred to in sub-paragraph (ii) above. (v) It is highly desirable, both in the general public interest and for simple convenience, to avoid the holding of trials in private, or partially in private. In the present case, the manner in which the documents were handled, together with the confidentiality agreement during trial, enabled the whole of the trial to be held in public, even though the judge regarded it as justified to retain confidentiality in respect of a significant number of those documents after the trial was over. The court should bear in mind that, if too demanding a standard is imposed underCPR r 31.22 (2) in respect of documents that have been referred to inferentially or in short at the trial, it may be necessary, in order to protect genuine interests of the parties, for more trials or parts of trials to be held in private, or for instance for parts of witness statements or skeletons to be in closed form. (vi) Patent cases are subject to the same general rules as any other cases, but they do present some particular problems and are subject to some particular considerations. As this court pointed out in SmithKline Beecham Biologicals SA v Connaught Laboratories Inc[1999] 4 All ER 498 , patent litigation is of peculiar public importance …. That means that the public must be properly informed; but it means at the same time that the issues must be properly explored, in the sense that parties should not feel constrained to hold back from relevant or potentially relevant issues because of (legitimate) fears of the effect of publicity. We venture in that connection to repeat some words of one of our number in Bonzel (T) v Intervention Ltd (No 2)[1991] RPC 231 , 234: ‘the duty placed upon the patentee to make full disclosure of all relevant documents (which is required in amendment proceedings) is one which should not be fettered by any action of the courts. Reluctance of this court to go into camera to hear evidence in relation to documents which are privileged which could be used in other jurisdictions, would tend to make patentees reluctant to disclose the full position. That of course would not be in the interest of the public.’ In our view, the same considerations can legitimately be in the court’s mind when deciding whether to withdraw confidentiality from documents that are regarded by a party as damaging to his interests if used outside the confines of the litigation in which they were disclosed.” ‘the duty placed upon the patentee to make full disclosure of all relevant documents (which is required in amendment proceedings) is one which should not be fettered by any action of the courts. Reluctance of this court to go into camera to hear evidence in relation to documents which are privileged which could be used in other jurisdictions, would tend to make patentees reluctant to disclose the full position. That of course would not be in the interest of the public.’ In our view, the same considerations can legitimately be in the court’s mind when deciding whether to withdraw confidentiality from documents that are regarded by a party as damaging to his interests if used outside the confines of the litigation in which they were disclosed.”
“... I would also point out that, given the considerable practical difficulties in working out precisely how Manitou has achieved the result that it has, the likelihood that a competitor could take advantage of this information [i.e. criterion X] to engineer its own machine is minimal. The engineering skill, expertise and effort required to arrive at a practical system which works effectively is much the same whether one knows that the system is based on [using criterion X] or not. … I do not think that knowing that information [i.e criterion X] provides any real assistance to the engineer in designing a workable system given the complexity of the control system in question.”
“15. Thus, the starting principle is that very good reasons must be shown by the party claiming confidentiality why there should be a departure from the normal rule of publicity. Applied to the present facts, I must be satisfied that the relevant information is genuinely confidential to Manitou. 16. Thereafter, there is a balance to be struck, or rather two related balances. Point (vi) in paragraph 25 of Lilly ICOS explains the balance between keeping the public properly informed on the one hand and on the other ensuring that parties make full and proper disclosure of confidential information necessary for conducting the litigation. 17. Points (ii) and (iv) identify a related balance. The party seeking to enforce confidentiality must establish specific reasons why it would be damaged by the publication of the information it seeks to protect. This is to be balanced against the relevance of the information to the conduct of the trial. 18. Applying that balance to the facts of the present case I take the view it means that the greater the need to use the information in issue to explain my reasoning in the judgment, the stronger must be the evidence of potential damage to Manitou were that information to be made public. It seems to me that in assessing this balance I must take into account the possibility of substituting terms used in the Annex, using alternatives which may be sufficient to explain the reasoning in the judgment and which pose less of a danger of disclosing information which Manitou says is confidential.”
“37. It seems to me that it would not be possible to make much sense of that comparison if the reader is not made aware of what criterion X is. I must therefore assess the potential damage to Manitou if criterion X were to be made public. 38. In theory, the damage to Manitou could vary in a spectrum from the negligible up to a threat to the continuation of its business. If the likely damage is at or is towards the negligible end of the spectrum, then the balance would favour the disclosure of criterion X in the Annex. Towards the other end of the spectrum, it would not.”
“46. This is an application by Manitou in which Manitou is seeking an order restricting the disclosure of information. It was incumbent upon Manitou to provide relevant evidence to support its application. The evidence filed by Manitou only implies potential damage and this implication is based solely on the fact that no other party uses criterion X. No evidence was filed by Manitou to negative Professor Plummer’s more cogent evidence that the chances of damage to Manitou are minimal because disclosure of criterion X, by itself, will not significantly benefit Manitou’s competitors; the valuable information is not going to be published in the Annex. 47. I am very conscious of the dangers of disclosing in a judgment information which potentially would have an adverse effect on a party, but I must be guided by the evidence. I cannot know by instinct the value of criterion X, taken alone, to Manitou’s competitors. The evidence is that the chances of any adverse effect on Manitou because of its disclosure are minimal. It therefore seems to me that the balance favours including the identity of criterion X in the Annex to be published. That is what will be done.”