MMI Research Ltd v Cellxion Ltd & Ors [2007] EWHC 3464 (Pat)

[2007] EWHC 3464 (Pat)

IN THE HIGH COURT OF JUSTICE

Venue Royal Courts of Justice

Date Wednesday, 22 nd August 2007

Before

MR. JUSTICE WARREN

B E T W E E N:

Between

M.M.I. RESEARCH LTD.Claimant

CELLXION LTD. & Ors.Defendants

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Transcribed by BEVERLEY F. NUNNERY & CO

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_________

for The Claimant did not appear and was not represented.

Mr. S. Malynicz (instructed by Edwin Coe) appeared for 1 st- 4 th Defendants.

Ms. L. Lane (instructed by Hammonds) appeared for 5th Defendant.

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J U D G M E N T

(As approved by the Judge)

[1]I have two applications by the 1st - 4th defendants against the fifth defendant, seeking orders for an “unless” order to the effect that, unless the fifth defendant serves a defence to the counterclaim to the 1st - 4th defendants, it shall be deemed to admit the allegations set out in the counterclaim and that judgment may accordingly be entered in default. Alternatively, that the fifth defendant should debarred from calling any evidence of witnesses contesting those allegations. The second is for further disclosure.

[2]The evidence consists of witness statements from Ms. Powell of Edwin Coe (the 1st - 4th defendants’ solicitors), and Mr. Newman of Hammonds (the fifth defendant’s solicitors).

[3]The action started out as a patent infringement action against the 1st - 4th defendants. The fifth defendant is a joint-proprietor of the relevant patent but did not wish to join in the action as a joint claimant. It therefore appears in the proceedings as a defendant in accordance with s.66(2) of the Patents Act 1977 and is thus not liable for costs unless it takes part in the proceedings.

[4]The 1st - 4th defendants have served defences to the claimant’s claim and have also counterclaimed against the claimant and the fifth defendant, asserting invalidity on grounds of lack of novelty and obviousness. There are separate defences for the third defendant and the fourth defendant, who were initially separately represented. They now have the same representation.

[5]The fifth defendant has not served a defence to the claimant’s claim. No relief is sought against it and, in the light of s.66(2), there is no reason to expect it to take part in the infringement proceedings. However, it is a defendant to the counterclaim seeking revocation to which s.66(2) has no relevance. It has not served a defence, Its position initially was that it had not decided whether or not it was going to defend the counterclaim, and that was the position at the date of the consent order made by Kitchin J. which I will come to. Its position today is that it is not proposing to defend the counterclaim and does not wish to serve a defence. Its decision to that effect was communicated in a letter from Hammonds, dated 28th December 2006. Ms. Lane, who appears on behalf of the fifth defendant, has repeated to me in unequivocal terms that the fifth defendant is not going to serve a defence.

[6]At this point, I would refer to the order of Kitchin J. made pursuant to the claimants’ application notice, dated 29th November 2006. The order was made by consent and provided, among other things, for the service of a defence to counterclaim by 13th December (which, of course, has not been done).

[7]In an ordinary case against one defendant, it is possible to obtain judgment in default. However, under CPR 12.8, special provision is made about default judgments where the claim is against more than one defendant. In the present claim, the counterclaim is for revocation of the patent, a claim which clearly cannot be dealt with, as against the fifth defendant separately from the claimant. Accordingly, the case falls within CPR 12.8(2)(b), so that court will not enter default judgment against the fifth defendant, but will deal with any application (if one is made) at the same time as it disposes of the claim against the claimant.

[8]However, the 1st - 4th defendants want to be sure that the fifth defendant is unable to attend the trial and require them to prove their case against it. Now, if the fifth defendant were to serve a defence, there would be matters on which it could only properly plead a non-admission, those matters not being within its knowledge. But equally, there would be matters which are within its knowledge and in relation to which it should plead properly, with either an admission or a positive case to support a denial. Hammonds’ position indicates that the 1st - 4th defendants need not really have any concern on that score. In their letter dated 28th December 2006 they also say that, by not contesting the counterclaim, the fifth defendant: “will not be putting your clients to proof in respect of any of the matters pertinent to that claim”.

[9]It is clearly a matter for the fifth defendant whether it serves a defence or not. But I do think that the 1st - 4th defendants are entitled to the comfort which would be provided by the alternative second part of the draft order which they seek in the first application. Since the fifth defendant has made it clear that it is not going to serve a defence, I think that the appropriate order to make is one debarring the fifth defendant from adducing any evidence or calling any witnesses contesting any of the allegations in the counterclaim.

[10]The more important application is the disclosure application. Mr. Malynicz, who appears for the 1st - 4th defendants, refers me to the Grounds of Invalidity, which refer to a number of prior disclosures which would invalidate the patent or novelty and/or obviousness grounds. The priority date of the patent was, I understand, some time in March 1999.

[11]There are two sets of Grounds of Invalidity because, as I have mentioned, at the early stage, the 1st - 3rd defendants were separately represented from the fourth defendant. I will need to look at each set in order to address the submissions which have been made. But, before I do so, I should mention some of the procedural provisions and the case law in relation to discovery or disclosure in patent actions.

[12]The starting point, of course, is CPR 31 and the well-known requirements of 31.6 in relation to standard disclosure, in particular 31.6(b). Disclosure is directed to the issues between the parties. In this context, I mention (to get it out of the way) that the fifth defendant’s obligations to give disclosure are not affected by its decision not to serve a defence. It may be that there are now no issues as between it and the 1st - 4th defendants which need to be resolved by the court and, therefore, no need for disclosure to be given in order to resolve any issues as between those parties. But the issues between the claimant and the 1st - 4th defendants are hotly contested. Those issues concern, among many other matters, prior disclosure by the fifth defendant, which would show that the patent was invalid. The fifth defendant, therefore, remains under its ordinary disclosure obligations. This does not appear to be disputed, and was recognised by Hammonds in their letter dated 8th February to Edwin Coe. In that letter they say in para.2: “Our client is, of course, fully aware of the disclosure order which was made with its consent, and agrees that all issues are open for the purposes of disclosure as they all remain at issue between your client and MMI [that is the claimant]”.

[13]There is a duty to search under CPR 31.7. It is to be noted that:

“Where a party has not searched for a category or class of document on the grounds that to do so would be unreasonable, he must state this in his disclosure statement and identify the category”

. The procedure for standard disclosure is set out in CPR 31.10 requiring, in particular, the making of a disclosure statement. This must set out the extent of the search.

[14]The pleadings, of course, play an important part in the disclosure exercise because it is only through the pleadings that the issues in the case to which disclosure is directed can be identified. In an ordinary case, a claimant may find that he is unable properly to particularise his case prior to disclosure being given, only being able to specify the nature of his case in broad terms. There is nothing wrong with that, although where the pleading is not well particularised, the claimant may be more open to accusations of “fishing” than if he has a focused pleading.

[15]Special provision is made in relation to both pleadings and disclosure in patent actions. These special provisions are found in the practice direction - Patents and other Intellectual Property Claims, to CPR 63. CPR 63.8 expressly provides that “Part 31 (disclosure) is modified to the extent set out in the practice direction”.

[16]Dealing first with pleadings, para.11.3(1) of the practice direction provides that, where the Grounds of Invalidity include an allegation based on lack of novelty or inventive step:

“The particulars must specify such details of the matter in the state of art relied on, as set out in para.11.4”

. The details required in 11.4 are: “(1) In the case of the matter or a design made available to the public by written description the date on which and the means by which it was so made available, unless that is clear from the face of the matter: and “(2) in the case of matter or a design made available to the public by use - “(a) the date or dates of such use; “(b) the name of all persons making such use; “(c) any written material which identifies such use; “(d) the existence and location of any apparatus employed in such use; and “(e) all facts and matters relied on to establish that such matter was made available to the public”. “(a) the date or dates of such use; “(b) the name of all persons making such use; “(c) any written material which identifies such use; “(d) the existence and location of any apparatus employed in such use; and “(e) all facts and matters relied on to establish that such matter was made available to the public”.

[17]In the decision of the Court of Appeal in Nichia Corporation v. Argos Ltd. [2007] E.W.C.A. Civ 741, Jacob L.J. carried out an exegesis of the law of obviousness and, in particular, disclosure relating to obviousness, which explains the background and reasons for the introduction of those special rules in relation to patent actions. I do not need to repeat any of that, save to say that it is essentially directed at constraining the significant costs that have been a matter of concern in patent actions since the end of the nineteenth century.

[18]In an ideal world, all of these details should be given, and there can be no doubt, I think, that a claimant must make real efforts to comply with the practice direction. But it is a counsel of perfection and it cannot be, I think, that a pleading which fails to comply to the letter with the practice direction is to be struck out. It is, after all, only one aspect of the CPR applying to patent actions. Like all other actions, a patent action is subject to the overriding objective which may lead the court the view that an action should be allowed to proceed with an imperfect pleading; for instance, to allow disclosure to be obtained in order to obtain more detail and thus to enable a more perfect pleading.

[19]Indeed, the authorities recognise that there is a discretion in this area, which is shown in the context of amendment to a pleading in Visx Inc. v. Nidex Co. [1999] F.S.R. 91, albeit a discretion which much be exercised judicially in accordance with authority. I shall return to this case in a moment.

[20]As to disclosure, para.5.1 modifies the standard obligation (but I comment that nothing in the practice direction circumscribes in any way the court’s power to order specific disclosure under CPR 31.12). So far as it is material to the present application, it is to be noted that para.5.1(2) of the practice direction provides that standard disclosure does not require disclosure of documents where they relate to any ground on which the validity of the patent is put in issue, except documents which came into existence within the period of two years each side of the earliest priority date (in this case March 1999).

[21]Visx was a case which, as I have mentioned, dealt with the amendment of a pleading. The plaintiffs alleged infringement and the defendants defended. The first defendant in their Particulars of Objections pleaded disclosures, which they said invalidated the patents. They sought to amend those particulars by adding nine further particulars of prior disclosures. The plaintiffs objected on the grounds that the details given did not comply with the requirements of RSC Order 104(6). The language is different, but the thrust of para.11.3 of the practice direction is the same.

[22]The Judge (I think, with some reluctance) accepted the plaintiff’s submission and refused to allow the amendment. He referred to Avery Ltd. v. Ashworth Sons & Co. Ltd. 32 R.P.C. 560, and Intalite International NV v. Cellular Ceilings Ltd (No. 1) [1987] R.P.C. 532, accepting that those cases appeared to suggest that the proper course is for pleadings to be properly drafted first and for discovery to follow on from then. But both those cases were concerned with discovery.

[23]The matter went to the Court of Appeal, where Aldous L.J. deals with Avery at some length. In that case, an application for specific discovery was met with an application to strike out the allegation in respect of which discovery was sought on the grounds that it was embarrassing and ambiguous. The allegation is set out at the foot of p.97 of the judgment of Aldous L.J. in Visx. Eve J. refused discovery and ordered the allegation to be struck out unless proper particulars of it were given, and the Court of Appeal upheld his discussion. But, as Aldous L.J. points out, there was nothing in the allegation to support an invalidity attack. The pleadings simply did not comply with any part of Order 53(a), which was similar to RSC Order 104(6). He says this: “Warrington L.J. did not say that, where a proper allegation of invalidity is pleaded, albeit short of particulars, further particularisation should not, in certain circumstances, be delayed until after the discovery”.

[24]He goes on to say this at p.99: “Warrington L.J. applied the general principles of discovery in pleading to a patent action. The pleadings defined the issues between the parties and discovery was only necessary in respect of documents relevant to a pleaded issue. Thus, when a patent is alleged to be invalid, the patentee is only required to give discovery of documents that would be relevant to a pleaded issue of invalidity. The allegation by the defendants in Avery did not specify any instance of prior use or prior publication and, therefore, did not plead anything which would render the patent invalid. It followed that discovery relating to the allegation was not appropriate. The other members of the court also concluded that the allegation was not an allegation of invalidity and, therefore, was irrelevant. It was in their view a fishing expedition to see whether anything would turn up”.

[25]Then, after citing from Lord Cozens-Hardy, Aldous L.J. continues: “Avery decided that discovery in patent actions should be confined to the issues of invalidity pleaded. The allegation which formed the basis of the claim for discovery did not raise an issue of invalidity. Therefore, it had to be struck out as embarrassing, unless appropriate particulars were given. It did not decide that, where bona fide, the allegations on invalidity are pleaded, all relevant particulars have to be given before discovery. The Intalite case adds nothing material”.

[26]He then gives an example of a case where particulars have been delayed pending disclosure; that is to say Aero Zipp Fasteners Ltd. and cites from the judgement of Graham J. who, referring to the requests for discovery and the fact that applicants were unable to give better particulars, said this: “In my judgment, this is not an unreasonable request in the circumstances I am about to state, since it is clear that the facts of the plaintiffs’ conduct must very largely be within their own knowledge, and not within the knowledge of the defendants”.

[27]Going on with

Lord Justice Aldous, he says:

“In the present case it is not suggested that the first defendant can at this stage give further particulars. Further, it is not for purposes of the appeal disputed that the plaintiff has access to the relevant person and to the documents which would enable it to ascertain the relevant facts. What is said is that the allegations sought to be pleaded do not comply with the rules, and that to allow them to be pleaded would provide a vehicle for fishing discovery”

Then, jumping a paragraph:

“A judge has a discretion whether to allow amendments before they have been properly particularised. He should exercise that discretion to prevent amendments being made with a view to obtaining documents to discover a cause of action or defence. But such amendments need to be contrasted with those which plead a genuine case and which are suitable for determination or there are insufficient details, so as to limit the area of the discovery to an appropriate extent. It is a question of degree in each case as to whether the amendments are of the fishing type or plead a genuine cause of action or defence. If it be the latter and the amended particulars are likely to be within the knowledge of the other party, then it would in general be appropriate to allow the amendment and to delay further particularisation until after discovery. Each case would differ and would need to be decided on its own facts”

. Then, jumping a paragraph:

[28]He then reviews the actual amendments sought at p.96 of the judgment. He allows a number of them, saying that they were a genuine attempt to plead invalidating disclosures which could well have taken place.

(p) & (q), which read as follows:

“(p) The disclosure of the invention by Dr. … to Dr. Troppel on or before 18th May 1983. “(q) The disclosure of the invention by Dr. Troppel to Dr. … in August 1983”

. In relation to those, he says that what he had just said in relation to the amendments which he had allowed did not apply. They only set a cut-off date and did not identify whether disclosure took place or any detail of what was said.

[29]Roche L.J. agreed, but he added in his own words the following: “The task of a judge, where it is an application to strike out an allegation of objection to the validity of the patent or to order further and better particulars of such an allegation before discovery, is to determine whether the pleaded objection to the validity of the patent raises a real issue in a way in which the other party knows what he has to meet, or whether the particulars pleaded are so broad, vague or ambiguous that that part of the pleading should be struck out or further and better particulars should be ordered prior to discovery, because to allow the pleading to stand and discovery to take place would put the other party in an unfairly difficult position. If the objection is pleaded so that a real issue is raised in a way which makes it clear what the other party has to meet, the pleaded objection is not to be struck out. Nor are further and better particulars to be ordered prior to discovery, simply because every detail on which the RSC Order 104(6) has not been pleaded, because at that time the detail is not know to the pleading party. “The Judge has a discretion, and I agree with Lord Justice Aldous in each case it is a question of degree whether the pleading, be it an original pleading or an amendment, is a pleading of a genuine ground of objection to a patent, or whether it is what is colloquially called a fishing expedition”.

[30]Although Visx was concerned with an amendment, the same approach ought logically to apply to discovery. Indeed, as already noted, Avery and Intalite both concerned discovery. More importantly, the same principles apply, in my judgment, to disclosure under the CPR. There is no valid distinction to be drawn based on the fact that the RSC were statutory rules where as a practice direction does not form part of the actual rules of the CPR.

[31]It might be said that a refusal to order disclosure is a reflection of the fact that the pleading (whether the original pleading or the amendment) is not adequately particularised so that, logically, an existing pleading ought to be ripe for striking out if disclosure is to be refused. No application is made in the present case to strike out the Grounds of Invalidity, so that there might be an argument that disclosure should nonetheless be ordered to be given on a wider basis since, unless and at all struck out, the two sets of Grounds of Invalidity are the documents which set out the issues between the parties. I do not think that is right. Following the principles exemplified in Visx, I consider that there must be a sufficient particularity in the pleadings, in accordance with the test set in the judgment, before disclosure is ordered.

[32]I have already mentioned the decision of Nichia Corporation v. Argos Ltd, where the Court of Appeal, consisting of Lord Justices Pill, Rix and Jacob, considered disclosure of an invention in the context of an obviousness dispute. The court was split; Jacob L.J. against disclosure, and Pill L.J. and Rix L.J. for allowing the appeal in order that the question of disclosure could be reconsidered. Although divided in the result, Pill L.J. and Rix L.J. agreed with Jacob’s L.J. exegesis of the law of obviousness and the principles applicable to disclosure. All were alive to the need to keep secondary evidence relating to contemporaneous activities firmly in its place. It is interesting to note Rix L.J.’s observations, which I think can be made generally and not just in the context of the particular problem that he was addressing on the facts of the case when he says this:

“Above all, it would be against the interests of justice if documents known to exist, or easily revealed, which would harm a party’s own case or assist another party’s case need not be disclosed because of a blanket prima facie rule against any standard disclosure”

. In principle, that seems to me to be equally applicable to a rule which precludes disclosure, not of any, but of certain categories of documentation. Of course, that general principle must give way to express provisions. An un-particularised pleading of prior disclosure is subject to the express provisions of the practice direction, but the approach described by Rix L.J. demonstrates the importance of the existence of the discretion identified in Visx.

[33]It is to be noted that the case did not decide what was and was not disclosable. The appeal was allowed on the narrow ground that the Judge had adopted the blanket refusal of disclosure of the type requested as a matter of principle (I think something he said he had been hoping to do for nine years), something which the majority considered to be wrong. The extent of the disclosure would need to be determined subsequently (the court hoped, by agreement in the light of its ruling). In particular, the actual exercise would need to be proportionate.

[34]Before examining how these principles apply in the present case, there are two preliminary issues to deal with.

[35]The first is a rather technical point. As already noted, standard disclosure in a patent action in relation to novelty and invention is restricted to the four year window, although it is open to the court to open the window further. The fifth defendant has given some disclosure - the 1st - 4th defendants say it is inadequate disclosure - but it is limited to that window. This has been done, even though the pleading expressly refers to events outside that window. The fifth defendant takes the position before me that it did not need to do more than that without a specific order. That may be strictly correct, however unhelpful a position it may be. I do not propose to say whether or not it is, in fact, correct because it seems to me clear that I should make an order that provides for standard disclosure in respect of a wider period, wide enough to include the events specifically pleaded.

[36]The second relates to the order of Kitchin J., to which I have already referred. He ordered, by consent it is to be remembered, standard disclosure by 16th February 2007. At that time (the time of his order) the fifth defendant had not decided whether it was going to serve a defence to the counterclaim. It did not at that time, and indeed did not do so until the present application was made, take any point about the inadequacy of the Grounds of Invalidity or suggest that it would not be required to give disclosure on the basis that the pleading was valid. The fifth defendant seems to have thought that, having decided not to serve a defence, its disclosure obligation under the order was somehow qualified. Disclosure was eventually given at the end of April 2007, but revealed only a few documents. As I have said, it was limited to the four year window.

[37]I will come in a moment to see what issues that disclosure went to, but it is not easy to see that it deals with the entirety of the Grounds of Invalidity actually pleaded. The fact is that Kitchin J. made an order and did so by consent. It is in accordance with the terms of that order that disclosure should have been given, not by reference to some other criteria which, had disclosure been challenged on the basis of lack of particularity in the pleading, the court might have adopted. I note also that there has been no application to strike out any of the Grounds, either by the claimant or by the fifth defendant. I will need to return to this aspect of the case in due course. For the moment, I address the disclosure issues, ignoring the order which he has made.

[38]The relevant parts of the two Grounds of Validity are to be found under the particulars of novelty in each pleading.

[39]The two sets of grounds of invalidity are set out in the annex to this judgment: “Lack of novelty “1. None of the claims of the Patent which are alleged to be infringed relate to a patentable invention in that the subject matter thereof was not new as of the priority date of the Patent having regard to the state of the art which comprised the following matter which was made available to the public prior thereto. “Lack of inventive step “2. None of the claims of the Patent related to a patentable invention, in that the subject matter thereof did not involve an inventive step as of the priority date of the Patent in that each of such claims was obvious to a man skilled in the art having regard to the state of the art which comprised the following matter which was made available to the public prior thereto.

[40]It will be seen from these pleadings that reference is made to GA900 and 090 series of IMSI catchers, being products of the claimant. If prior disclosure/use of those products could be shown, then, according to the 1st - 4th defendants, the patent is dead in the water. It is to matters material to the disclosure and use of those products that the application is principally directed.

[41]The application by the 1st - 4th defendants seeks disclosure of nine categories of documents. Ms. Lane (adopting what Mr. Newman had done in his evidence) has, in her skeleton argument, helpfully grouped these documents into three groups, and both she and Mr. Malynicz have addressed their submissions to those three groups. They are:

“(i) Group 1: All documents relating to third party products before the priority date (para.7-9 of Schedule 1 to the draft Order). “(ii) Group 2: All documents evidencing any and all disclosures before the priority date with the patent, whether or not disclosures specifically pleaded in the Grounds of Invalidity, of Rohde’s GA090 and GA900 IMSI catchers (paras.2 - 6 of the Schedule 1 to the draft Order). “(iii) Group 3: All documents relating to the design and manufacture of Rohde’s GA090/GA900 IMSI catchers (para.1 of Schedule 1 to the draft Order).”

Group 2 itself falls into two sub-groups, namely documents related to the pleaded prior disclosure/uses, and documents relating to any other prior disclosure/uses which are not particularised.

[42]Mr. Malynicz submits, of course, that all of these documents should be disclosed. Ms. Lane’s position is(a) that the fifth defendant has no documents in Group 1,

(b) that the second sub-group should not be disclosed until there is a proper pleading, and that the first sub-group should not be disclosed at all, because they were provided under conditions of confidence, and

(c) that documents in Group 3 should only be disclosed where they relate to specific products, of which there is an alleged prior disclosure in Group 2, if any.

[43]The disclosure which the fifth defendant has actually given is very limited. It comprises 11 nondisclosure agreements made by the claimant with different parties whose names have been redacted in the period 25th July 1997 to 23rd February 2001. The search was carried out in the document repositories of the fifth defendant’s Radiomonitoring and Radiolocation division for documents between 5th May 1997 and 5th May 2001. No search was made, other than by reference to these key words or concepts: “GA900”, “GA090” and “IMSI-catcher”.

[44]Part 2 of the disclosure statement - “Refusal of inspection” - includes as category 7: “Documents prepared confidentially by Rohde & Schwarz and/or its legal advisors production of which would be injurious to the public interest or in respect of which Rohde & Schwarz has a right or duty to withhold from inspection and copies thereof”.

[45]Mr. Malynicz makes a number of criticisms of the disclosure actually made. This is on the basis, of course, that disclosure is not limited in the way that Ms. Lane says it should be, in the light of the actual pleadings. I am not sure what her position is in relation to disclosure actually given, if she is wrong in her submissions.

[46]Let me look at some of the things Mr. Malynicz says. He describes these as some of the many points that might be made, and I quite verbatim from his skeleton, for which I am grateful:

“Having accepted that all issues were open, surely R&S [that is the fifth defendant] must surely be taken to accept that it is an “open” issue as to whether the GA090/900 was actually disclosed in circumstances of confidence or not. ... “Further and in any event, the mere existence of a nondisclosure agreement or circumstances importing on an obligation of confidence is not conclusive on the issue. There is European Patent Office case law to suggest that, if all interested parties could get hold of the information, even if each of them was restrained from distributing it, that might still invalidate the patent”

. He refers to Daikin Industries Ltd.

[47]This aspect of the case has not been developed and I have not been taken to the authorities or been responded to. This, at least, is something which I think should be raised expressly in the pleadings, which it has not been. He then says:

“All the other issues in this case are ignored. R&S claim to have no documents relating to the MMI machine, notwithstanding that they have litigated against MMI in the German nullity proceedings. Furthermore, it is as if the R&S machine was developed in an entirely “clean room”

. There was no consideration of rival machines that operated in a similar way. This [he said] beggars belief. It is not fishing on the defendants’ part to insist on disclosure in relation to this”.

[48]He goes onto say that there is reason to believe that even the nondisclosure agreements disclosed are not the complete list. He refers to the German parliament resolution, which I will come to, and which is referred to in the Grounds of Invalidity. There are the pleaded disclosures to T-Mobile, Vodafone and E-Plus at the conference in Munich, also referred to. There is the PowerPoint demonstration in Norway in 1995. That is not pleaded, but it is referred to in Ms. Powell’s witness statement. He says this period is not covered, and then he again refers to the nullity of the proceedings, which I should just mention.

[49]This was an action between the claimant as the plaintiff, and the fifth defendant as the defendant, when they were not as friendly as they now are. It is pleaded that there was manifest prior use by the plaintiff, the claimant in our action, in Australia. It is said that between 17th March 1999 and 23rd March 1999 (in other words, before the priority date of the patent in dispute):

“The claimant offered for sale in several product presentations in Australia a device to carry out a procedure according to the patent in dispute without any obligation to maintain confidentiality. The organisation of these product presentations was done by an independent sales representative in Australia. The name of this independent sales representative is Nicholas Stokes”

. So, at that stage, he was described as an “independent sales representative”.

[50]If one goes slightly further in that document, one finds this:

“During his time as managing director of the fifth defendant in our case in Australia”

. So it appears that he was employed by the fifth defendant at some stage. “Mr. Stokes learned of the product of the defendant with the name GA900, which was a system for licensed listening into mobile stations. At this time, Mr. Stokes did not know the exact way this listening in system GA900 functioned, but he was conversant with the principle of the system. The GA900 device simulated a mobile GS and base station and a mobile station, and thus … user of the system to identify in accordance with the mobile system subscriber. If a call was intercepted by GA900 system, the system could listen in to the call, record it and identify the mobile station, and also the SIM card of the mobile system. Mr. Stokes has never seen a GA900 system”. “Mr. Stokes learned of the product of the defendant with the name GA900, which was a system for licensed listening into mobile stations. At this time, Mr. Stokes did not know the exact way this listening in system GA900 functioned, but he was conversant with the principle of the system. The GA900 device simulated a mobile GS and base station and a mobile station, and thus … user of the system to identify in accordance with the mobile system subscriber. If a call was intercepted by GA900 system, the system could listen in to the call, record it and identify the mobile station, and also the SIM card of the mobile system. Mr. Stokes has never seen a GA900 system”.

[51]With those criticisms from Mr. Malynicz in mind, I turn to the various groups.

Group 1

[52]Ms. Lane says there is no evidence that the fifth defendant has any such documents in its possession. This may come as a surprise to the 1st - 4th defendants, given that the market is a small niche market where competitors are aware of each other’s products. That they are surprised does not lead me to conclude that there is any reason to go behind the clear disclosure statement, provided, of course, that one remembers that it was restricted to the four year window and, presumably, to what Ms. Lane submits is the limited extent of the disclosure obligation, given the absence of particularity in the pleading.

[53]It is also to be noted from Mr. Newman’s evidence that he was provided with copies of documents relating to competitive products. He says that they all postdate the priority date and are in his view irrelevant. I do not know whether he says they are irrelevant because they all postdate the priority date, or because he has examined each of them for relevancy. If it is the former, he will need to review them, because a post-priority date document of that sort might contain information clearly showing a disclosure before the priority date.

[54]I would add at this point something I should have said right at the beginning; that there is confusion likely to arise because the word “disclosure” is used in a litigation disclosure sense and in a patent disclosure sense. Occasionally, it might not be clear in which sense I am using the words, so I will add the description of litigation or patent in order to avoid that confusion. But I do not think we have hit one yet.

[55]Further, if there are, in fact, any documents in this category, there will need to be a review of the disclosure, or rather lack of it, already given in order to reflect the result of my conclusion in relation to the second group.

Group 2: Sub-Group (i)

[56]The prior uses which were specifically pleaded are these, which I take in summary form from Ms. Lane’s skeleton argument. Firstly, the alleged presentation of GA09 to T-Mobile, Vodafone and E-Plus at a conference in Munich in December 1996. Secondly, the alleged use of GA090 and GA900 by divisions of the German police in 1998 and thereafter. The alleged sale of the GA900 device by the Rohde & Schwarz (Australia) Pty Ltd. to the Australian Government on 15th April 1998.

[57]As to these, Ms. Lane submits that no facts are pleaded as required by the practice direction to establish that such matter was made available to the public. She says that the evidence is indeed the other way, and these are matters that she sets out in her skeleton argument at para.19.

[58]It is strictly true that they have not been pleaded. But, subject to the matters to which I will come, it seems to me that there is enough to show a genuine attempt to plead invalidity, based on the disclosures, or in the words of

Lord Justice Roche:

“A real issue is raised in a way which makes it clear what case the other party has to meet”

. For instance, there exists only one Munich presentation, so far as I know, and there is sufficient detail there for the fifth defendant to be able to provide relevant disclosure.

[59]She says that there is documentary evidence in the case of the alleged presentation to T-Mobile etc. of nondisclosure agreements entered into by these parties, and refers to Mr. Newman’s statement. Mr. Malynicz has made some observations that that is not so, because the disclosed nondisclosure agreements are redacted, so one does not know who they relate to in any event. But those are not the documents which Mr. Newman exhibits to his witness statement, which are three short documents, two in German and one in English. I am assuming the German ones mean the same as the English one. The format is the same and I am afraid my German is nonexistent. Interestingly, those documents referred to by Mr. Newman do not appear on the disclosure list, but it may be that that is because they do not fall within the four year rule.

[60]In the case of the alleged use by the German Police, it is clear from the position of the German Ministry, according to Ms. Lane, in relation to disclosure that any use by the German Police would not have been in such a manner as to make the device available to the public. She submits that the same inference can be drawn in relation to the alleged sale to the Australian Government, and that no government is going to be using an intelligence gathering device in a public manner.

[61]I will just refer to the correspondence from the German Minister of Interior, which she relies on. I am not going to read the letters out, but they are dated 4th January 2007 and 15th August 2007. What they say, in effect, is that the German government objects to disclosure of these documents because there would be a risk to German national security. The official writing this letter, however, does not appear to have been shown the documents in question or to have been told very much about them. I will have to return to that.

[62]The point I would make here, however, is that the confidence which is being asserted here is the confidence of the German government. What is more important, from the patent disclosure aspect, is the confidence of the claimant and the fifth defendant. Were the German government to say “We do not care a toss about confidentiality”, and to publish everything that they have had, at the moment I do not see how the claimant, if the German government was entitled to do that, could say that there was confidentiality from its point of view and that, therefore, it had not published the matters in issue.

[63]The third matter which is identified by Ms. Lane is what she calls the very technical information relied upon by the defendants. It clearly dates from after the priority date and is marked “commercial in confidence”; she submits that it can be inferred from this, and from the existence of other nondisclosure agreements which had been disclosed by Rohde, that any disclosures made by them before the priority date were under terms of confidence. This seems to me to beg the question. There is a real issue of confidence which needs to be resolved. The grounds of invalidity expressly state that certain of these matters were disclosed where there was no confidence. It may be that they are confidential, but that that is an issue in the action. I do not think that disclosure can be restricted on the assumption that there is confidentiality.

[64]Accordingly, in relation to sub-category (i), I consider that the pleading is sufficiently particularised to remain as a pleading and to support an application for disclosure. The four year window should be extended backwards, I would suggest - but I will hear argument - to October 1996.

[65]Since it featured in argument, I will interpose here a short digression on an issue of confidentiality, which will almost certainly arise when it comes to inspection. Documents in relation to the German police force are said to be confidential. The German authorities have indicated that no documents should be disclosed, as to do so would pose a security risk. That objection to inspection can be met when inspection is sought. I would remark at this stage that the official who has corresponded with the fifth defendant on this issue has not been shown the relevant documents. Nor, so far as I am aware, has he been told of their precise nature, or more importantly, their dates. I am somewhat sceptical about the security risks of disclosure, within a carefully constructed confidentiality ring, of documents predating the priority date and two years thereafter. The merits of this aspect are for another time. It is clear, however, that the 1st - 4th defendants will want to inspect, and it seems likely that the fifth defendant will raise an inspection objection. The parties should proceed on the basis that that will happen so that no time is lost in dealing with this issue in the light of the impending trial date in December.

[66]Accordingly, at the same time as the fifth defendant is preparing its further list of documents for disclosure, it should produce a separate list to be provided to the German authorities. At the earliest possible stage, the list and copies of the documents should be sent to the German authorities with a request for specific objection to inspection of the documents to be made. Of course, the documents that I have in mind are the ones that might be confidential to the German Government. They should be informed that, in the absence of objections, it is likely that the court will allow inspection. If there are objections, the matter should be brought before the court, on notice to the German authorities, as soon as possible.

Group 2: Category (ii)

[67]Ms. Lane says that the 1st - 4th defendants are on a fishing expedition here, whereas Mr. Malynicz says that the grounds of invalidity are very full. There is a side-spat, which I will dispose of at once, relating to who asked whom for what further information. The position is that the fifth defendant has not asked for further information, but the claimant has done so. Requests for further details for the prior disclosure of GA090 and GA900 are met with an answer to the effect that better particulars of the Grounds of Invalidity cannot be given until after disclosure has been given. This does not take one any further in either direction in relation to the present application for disclosure.

[68]I need to look then at the various matters on which the 1st - 4th defendants do rely on the Grounds of Invalidity.

[69]There are in the context the following: The resolution dated 4th July 1997 of the German Federal Council, the article by Dirk Fox and an article in the December 1997 issue of Computer & Communications Security Review. These, according to the 1st - 4th defendants, describe GA900 in general terms. The resolution describes the technology as already in place. It says:

“The technology is already in place for the identification of unknown call numbers of a suspicious party by means of radio measures. These types of equipment, which are not yet approved by the Post and Telecommunications Ministry, are known as IMSI catchers or GA900. These types of equipment are capable of detecting radio waves radiated by a mobile telephone and thus determine the network internal call numbers”

. I will not read the rest of that paragraph, but it shows that something was afoot.

[70]It is said that the first article (by Mr. Fox) describes the device in sufficient detail. The second article (in the magazine) is said to give further information about the products. Reliance is also placed on a publication on an unknown date in 1999 by Nordrhein-Westfalen. It is said that it is to be inferred that the matters stated in it were made available to the public on or before 31st December 1998.

[71]There is also a technical information leaflet published by the fifth defendant in 2000. It is true that this comes after the priority date, but it is said that the device described accords with the description given in the articles already referred to above. There is also product information dated in 1995 referred to and exhibited by Ms. Powell in her witness statement and which the 1st - 4th defendant say is a PowerPoint presentation shown by the fifth defendant in Norway.

[72]In response, it is said that the resolution, the article by Mr. Fox and the publication by Nordrhein-Westfalen contain only limited references to GA900, and that, in any case, the article by Mr. Fox appears to be based solely on the resolution. I have already set out the material parts of the resolution. I think the article goes further than mere journalistic hyperbole in expansion of the resolution (or, at least, the extract with which I have been provided). Mr. Fox may have found out more from somewhere.

[73]The technical information leaflet is said to be irrelevant because it postdates the priority date. That is true, I think, but it does lend force to the submissions which are made about the resolution and Mr. Fox’s article, since one can see that the product described in each is the same.

[74]The 1995 product information is said by Ms. Lane to seem on its face to be an internal document. No evidence is given, she says, as to why the 1st - 4th defendants believe it to be a PowerPoint demonstration by the fifth defendant in Norway, a document which she notes is not pleaded. That is true. What is very odd, however, is that, although Mr. Newman himself deals with this in his own evidence, making the same point himself, he does not go on to say that what the 1st - 4th defendants believe is, in fact, incorrect, a matter which would be within his client’s own direct knowledge. I think that I am entitled to infer, unless and until contrary evidence is given, that this was indeed a PowerPoint presentation demonstrated in Norway in 1995.

[75]I find the decision whether to order any further disclosure in relation to sub-group (ii) very finely balanced.

[76]On the one hand, the 1st - 4th defendants have put forward documents which do lead one to think that there have been disclosures to the public of GA900 and GA090. The current attempt to obtain (litigation) disclosure is based on a justifiable assertion that there has been prior use or publication in a situation where(a) the 1st - 4th defendants cannot be expected to know precisely when or where such disclosure was made, and

(b) it is, or certainly was in the past, within the knowledge of the fifth defendant when and how such disclosures were made, if they were made at all. This is not quite the sort of fishing which Aldous L.J. found to exist in relation to paras.(p) & (q) in Visx where, so far as I can see from the judgment, there was no evidential material on which to base an allegation that the invention had been disclosed, other than that which was expressly pleaded in other paragraphs (including the new paras.(m) to (o)). At least, no such material was mentioned in the judgment.

[77]On the other hand, the pleading in relation to disclosures and uses which are not particularised fails in significant respects to comply with para.11 of the practice direction. It is precisely to avoid a large and onerous disclosure obligation that para.11 of the practice direction is in place.

[78]I find the balance tilts in favour of the 1st - 4th defendants. In my judgment, they are correct in their case that disclosure should, in principle, be given. It does, however, seem to me that the extent of the disclosure sought may be disproportionate. Items 2 - 6 in the schedule to the draft order could, I imagine, include a large amount of documentation for which it would be onerous to search. I have not heard argument on how, if at all, disclosure would be restricted if I am against Ms. Lane on her primary submissions.

[79]My preliminary views, taking these categories in turn, are as follows, but I will hear further argument on this at the end of the judgment if the parties wish.

[80]Item 2:

“Documents evidencing in the sale of GA090/GA900 IMSI catchers prior to the priority date, e.g. purchase orders and invoices”

. It is not realistic to think that a sale would not be accompanied by an order or an invoice. I see no need to search for any other documents in this category. It is reasonable and proportionate to order disclosure of these documents; i.e. purchase orders and invoices. If it is the claimant’s case that there has been no such sale, the task should be easier because the individuals with knowledge will be able to say that there is no need to search because we know that there were no sales, although a disclosure statement could usefully explain that that is so.

[81]Item 3:

“Marketing and sales literature relating to the GA090/GA900 IMSI catchers prior to the priority date”

. Similarly, the provision of these documents is reasonable and proportionate.

[82]Item 4:

“All correspondence to or from third parties relating to the sales or demonstration or features of GA090/Ga900 IMSI catchers prior to the priority date”

. If items 2 and 3 are provided, there is no need for item 4. If there is nothing in paras.2 & 3, it would not, I think, be reasonable or proportionate to require a search of correspondence to extract letters which may deal with these matters.

[83]Item 5:

“All documents relating to the participation in trade fairs and conferences at which the GA090/GA900 IMSI catchers were being demonstrated prior to the priority date”

. In my view, this category is too widely drafted. It should be restricted to promotional material distributed, or available for distribution, to those attending such fairs, including material used in presentations.

[84]Item 6:

“All correspondence to or from government agencies (in any country) relating to GA090/GA900 IMSI catchers prior to the priority date”

. In my judgment, this should be restricted to the German, Australian and New Zealand governments. There is no evidence at all of dealings with other states. This material, so far as those categories are concerned, is already covered under sub-group (i)/(ii).

Group 3

[85]Ms. Lane submits that (litigation) disclosure, if ordered at all, should not go beyond documents relating to instances of properly pleaded prior use, not prior (patent) disclosure. This is said to follow from the fact that the only relevant matter in relation to a prior (patent) disclosure is the contents of the particular document or documents disclosed. I suppose that, so far as prior use is concerned, the most helpful evidence would be an example of the item which has been used (perhaps one is to be found in a back room or in the claimant’s museum) but I do not know if anyone has asked if any such item exists. Absent of that, then documents in category 3 could be of help.

[86]However, so far as concerns novelty, I agree that (litigation) disclosure should go only to properly pleaded instances of prior use. I do not consider that it is appropriate to order any disclosure under this head in relation to novelty until particulars are given, following the disclosure which I am willing to order, of alleged prior use.

[87]But there is, in addition, an obviousness claim, just as there was in Nichia. There is no blanket exclusion of Group 3 documentation. But the evidence will be secondary and must be kept firmly in place and so disclosure, in particular, must be carefully circumscribed. This aspect of disclosure was not really argued before me and I am reluctant to make any order without the parties being given the opportunity specifically to address this aspect and to adduce, if they wish, further evidence from the 1st - 4th defendants about the need for this disclosure, or from the fifth defendant about the difficulties in producing it. At present, I propose to make no order.

[88]Finally, I need to return to the order of Kitchin J.. I have already expressed the view that, where an order for disclosure is sought, the person against whom the order is sought should only be ordered to give disclosure to the extent that that accords with the principles exemplified in Visx. But, if an order is sought and made without any objection being taken to the pleading, it seems to me that disclosure must be given by reference to that pleading. The point on the pleading ought, it seems to me, to be taken when the application for disclosure is made. That is not to say that an application could not subsequently be made to strike out the pleading but, unless and until that is done, the order for disclosure bites on the pleading as it stands. The same applies, or so it seems to me, when an order for disclosure is made by consent. Accordingly, the consent order made by Kitchin J. required standard disclosure to be given by reference to the un-particularised pleading, since the fifth defendant did not reserve its position on that.

[89]That is not to say that the court must necessarily hold the fifth defendant to the order to which it consented. There was no sanction attached to a failure to comply with the order. Although the court’s order, even where made by consent, is there to be observed, I do not consider that I now have no alternative other than to repeat - perhaps, with some sanctions for non-compliance attached - the order which Kitchin J. made. There having been a failure to comply with that order, it is now necessary for the 1st - 4th defendants to apply for a further order, and in relation to that I think I must take account of the principles set out in Visx.

[90]But there is this difference. I am also, I consider, entitled to take into account the consent order when considering the extent of disclosure which must now be given. Or, to put the same point in a different way, I have a discretion to reduce the disclosure ordered by the consent order so as to reflect, to a greater or lesser extent, those principles exemplified in Visx. I consider that I have, in the context of this case where a consent order has already been made in relation to an un-particularised pleading without any objection being taken to that pleading, a discretion to order, or to reinforce the order already made, the disclosure which goes beyond that which would follow from the strict application of Visx principles. I have a discretion, effectively, to make the same sort of disclosure order that I could make in any action, other than a patent action.

[91]I have already stated the conclusion which I reach ignoring the order of Kitchin J.. If I am wrong in that approach which I have adopted on that footing, I would be entitled, taking account of that order, to reach the same conclusion, quite apart from Visx principles, and I would adopt that course.

[92]Subject to any further argument, I will make orders accordingly. __________