"27. The core points are whether D's Main Frame fitted with Starter Plates is a "builders' trestle" (integer 1A), and whether planks/boards on those devices can be "supported in use to make a platform" (integer 1B). The wording of integer 1A and 1B differs very slightly between the 978 and 738 Patents, but raises substantially the same issue in each case. 28. Put simply, D's case is that its Frames (i.e. Main Frame fitted with Starter Plates) are not builders' trestles, and they are not "builders trestles" that can support planks in use to make a platform. Furthermore, again put simply, Ds' case on equivalents is that its Frames are not functioning in the same way as builders' trestles – stability is achieved by an entirely different mechanism, that it to say by the addition of two cross-braces between all adjacent Frames, thereby connecting them, stabilising them, and fixing the distance between them. Ds say that the stability in the trestle / trestle system is provided by the feet of the trestles (which must have sufficient size and rigidity), and that this is not the case with the D's system."
"442. The tests aimed to quantify differences or similarities in performance of a "
"In the Patents Court,PD63 paragraphs 6.1 to 6.3 will continue to apply under this Practice Direction with the following modification: unless the court expressly orders otherwise, no provision in this practice direction nor any disclosure order made under this Practice Direction will take effect as requiring disclosure wider than is provided for inPD 63 paragraph 6.1. "
"6.1 Standard disclosure does not require the disclosure of documents that relate to- (1) the infringement of a patent by a product or process where – (a) not less than 21 days before the date of service of a list of documents the defendant notifies the claimant and any other party of the defendant's intention to serve- (i) full particulars of the product or process alleged to infringe; and (ii) any necessary drawings or other illustrations; and (b) on or before the date of service the defendant serves on the claimant and any other party the documents referred to in paragraph 6.1 (1)(a);"
"6.4 In all cases, an order for Extended Disclosure must be reasonable and proportionate having regard to the overriding objective including the following factors— (1) the nature and complexity of the issues in the proceedings; (2) the importance of the case, including any non-monetary relief sought; (3) the likelihood of documents existing that will have probative value in supporting or undermining a party’s claim or defence; (4) the number of documents involved; (5) the ease and expense of searching for and retrieval of any particular document (taking into account any limitations on the information available and on the likely accuracy of any costs estimates); (6) the financial position of each party; and (7) the need to ensure the case is dealt with expeditiously, fairly and at a proportionate cost."
"by no later than the time(s) set out in paragraphs 9.1 to 9.3, to disclose known adverse documents, unless they are privileged. This duty exists regardless of whether or not any order for disclosure is made;"
"111. The relevant principles are uncontroversial. Although the voluntary disclosure of a privileged document may result in the waiver of privilege in other material, it does not necessarily have the result that privilege is waived in all documents of the same category or all documents relating to all issues which the disclosed document touches. However, voluntary disclosure cannot be made in such a partial or selective manner that unfairness or misunderstanding may result (Paragon Finance plc v Freshfields[1999] 1 WLR 1183 at page 1188D per Lord Bingham CJ). 112. Collateral waiver of privilege allows for documents and other material that would otherwise be non-disclosable on public interest grounds, to be required to be disclosed even though the individual with the right to withhold disclosure objects. The courts have therefore imposed certain constraints on collateral waiver. 113. The starting point is to ascertain "the issue in relation to which the [voluntarily disclosed material] has been deployed", known as the "transaction test" (General Accident Fire and Life Assurance Corporation Limited v Tanter[1984] 1 WLR 100 at 113D per Hobhouse J), waiver being limited to documents relating to that "transaction" subject to the overriding requirement for fairness. The "transaction" is not the same as the subject matter of the disclosed document or communication, and waiver does not apply to all documents which could be described as "relevant" to the issue, in the usual, Peruvian Guano sense of the term as used in disclosure (Compagnie Financière et Commerciale du Pacifique v Peruvian Guano Company(1882) 11 QBD 35 ). 114. … The purpose of the voluntary disclosure, which has prompted the contention that privilege in other material has been collaterally waived, is therefore an important consideration in the assessment of what constitutes the relevant "transaction" (see also Dore v Leicestershire County Council[2010] EWHC 34 (Ch) at [18]-[19] also per Mann J)."
"Patent cases are no different to any other cases in that documents recording activity undertaken for the purpose of litigation attract privilege. Until they are deployed, they remain privileged. Once deployed, the question as to the extent to which, if at all, the effect of doing so is also to waive privilege in any other documents or material. …. In patent cases, as in any other, the opposite party and the court must have the opportunity of satisfying themselves that "what the party has chosen to release from privilege represents the whole of the material relevant to the issue in question"."
" In my view, in the light of the restrictive approach from the general authorities and in the light of MaynePharma itself, the disclosure required to be given does not extend beyond materials recording preliminary investigation leading to the particular experiment which is deployed in evidence and does not extend to other parts of an overall experimental programme even if the design of the experiment in question may have drawn on earlier experiments. That narrow approach is consistent with the authorities above and which treat implied waiver of privilege restrictively in the general law."
"The lesson from the above discussion is clear. There is often no wholly incontestable way of treating one aspect of an experimental programme as completely separable from another. The present case is a good example of such a situation. Some aspects of an overall programme in a complex case may involve deciding what experiments to undertake and what criteria to employ. Some aspects involve undertaking experiments. Some involve interpreting the results. In such a case it can be much harder to identify even what would constitute unfair "cherry picking"
"The general rule is that: Where a person is deploying in court material which would otherwise be privileged, the opposite party and the court must have the opportunity of satisfying themselves that what the party has chosen to release from privilege represents the whole of the material relevant to the issue in question. To allow an individual item to be plucked out of context would be to risk injustice through its real weight or meaning being misunderstood."
"Finally, if the matter is approached in that way, greater and more specific attention can be given to the precise scope of implied or consequential waiver in the materials provided and for what purpose they are deployed."
"The skilled person reading the '978 Patent would understand that builder's trestles have been used for many years in the context of low level working platforms, The skilled person would understand that a typical builder's trestle will have rigid "feet" at the base of each of its two uprights extending outwards from the trestle in the longitudinal direction (i.e. the direction along the platform), and that those feet will be braced with a diagonal base support to ensure that they have sufficient rigidity. The skilled person would also understand that the feet of a trestle would extend a sufficient distance as a proportion of the height of the platform in order to provide the longitudinal stability necessary for the platform to be used normally and safely for tasks such as bricklaying or blockwork."
“The principle which runs through all these cases, and the many other cases which were cited, is that a man must be able to consult his lawyer in confidence, since otherwise he might hold back half the truth. The client must be sure that what he tells his lawyer in confidence will never be revealed without his consent. Legal professional privilege is thus much more than an ordinary rule or evidence, limited in its application to the facts of a particular case. It is a fundamental condition on which the administration of justice as a whole rests”
“The general rule is that: Where a person is deploying in court material which would otherwise be privileged, the opposite party and the court must have the opportunity of satisfying themselves that what the party has chosen to release from privilege represents the whole of the material relevant to the issue in question. To allow an individual item to be plucked out of context would be to risk injustice through its real weight or meaning being misunderstood. The key word here is “deploying”
“…although this statement may well have been privileged from production and discovery in the hands of the [defendant] at one stage, nevertheless when it was used by cross-examining counsel in this way he waived privilege, certainly for that part which was used; and in a case of this kind, if the privilege is waived as to the part, it must, I think be waived also as to the whole. It would be most unfair that cross-examining counsel should use part of the document which was to his advantage and not allow anyone not even the judge or opposing counsel, a sight of the rest of the document, much of which might have been against him.”
"There was this contention raised, which I have not forgotten, that the defendant had waived his privilege, and therefore could not claim it at all. That, in my opinion, was entirely fallacious. He had done this, he had said 'Whether I am entitled to protect them or not I will produce certain of the documents for which I had previously claimed privilege – I will waive that and I will produce them' but that did not prevent him relying on such protection with regard to others which he did not like to produce. It is not like the case of a man who discloses part of a conversation and then claims protection for the remainder, and we think there is no ground for the contention that there has been here a waiver of privilege."
"While there is no rule that a party who waives privilege in relation to one communication is taken to waive privilege in relation to all, a party may not waive privilege in such a partial and selective manner that unfairness or misunderstanding may result."
"Sixth, by adducing evidence at a trial one does get involved in potential further waiver. The underlying principle is one of fairness in the conduct of the trial and does not go further than that. The fact that this principle does not arise unless you adduce the evidence at the trial is clearly stated in the judgment of Mustill J [in the Nea Karteria case] and it was clearly raised by the facts in the Doland case and it was likewise raised by the facts in the Great Atlantic and Burnell cases. Further, if the evidence is adduced, then the extent of the waiver relates to the transaction to which that evidence goes. The extent of the transaction has to be examined and where it is what somebody said on a particular occasion, then that is the transaction. It is not the subject matter of those conversations. It does not extend to all matters relating to the subject matter of those conversations."
"Furthermore, he applies what for convenience can be called a single transaction test. He looks to see what is the issue in relation to which the material has been deployed. He held that the issue was what was said at the meeting between the lawyer and the Greek seaman, and the correct evaluation of that meeting, but he did not accept that it extended to other matters which did not form part of the transaction…. Furthermore, it is central to Mustill J's judgment that you must define what is the subject matter with which you are concerned. He did not treat the subject matter as all the things about which the seaman spoke, but he merely treated as the subject matter what had been said on that occasion."
"What will have happened is that the putting into evidence of that document will have opened up the confidentiality of that transaction. It has not opened up the confidentiality of later privileged communications….."
"…classic judicial statement of principle…of Mustill J in Nea Karteria at 139: 'Where a party is deploying in court material which would otherwise be privileged, the opposite party and the court must have an opportunity of satisfying themselves that what the party has chosen to release from privilege represents the whole of the material relevant to the issue in question. To allow an individual item to be plucked out of context would be to risk injustice through its real weight or meaning being misunderstood.'"
"It is not a case of partial disclosure in relation to his conduct throughout the period in issue, but one of clear severability over two periods within it and of the disclosed and undisclosed documents relating respectively to each period. If the Secretary of State keeps to Mr Richards' word, I can see no unfairness to the applicants…. If the Secretary of State does not seek to take an unfair advantage of his partial discovery at the trial, whether as a matter of evidence or argument, the applicants would be entitled to invite the trial judge to reopen the matter and determine whether there should be further disclosure."
“if you are going to rely on privileged document A to contend that it shows X, the scope of waiver is S(A,X); if you are going to rely on A to contend that it shows Y, the scope of waiver is S(A,Y) – which may not be the same”