Posted: February 12th, 2019
Illumina, Inc and Sequenom, Inc v TDL Genetics Limited, The Doctors Laboratory Limited and Ariosa Diagnostics, Inc, Patents Court, London, UK, 22 January 2019, Case no.  EWHC 79 (Pat)
This application was made by the Claimants for an order that they are entitled to receive confidential information under the terms of an existing confidentiality club, rather than new more stringent terms. The existing confidentiality club included two in-house lawyers for Illumina and one from Sequenom and the previously agreed terms included provisions for the club to be extended to include experts, subject to the Defendants’ consent.
After the original confidentiality club had been agreed, the Defendants provided a Product and Process Description with confidential Annexes (‘PPD’) which they suggested was for the eyes of UK counsel and solicitors instructed in the proceedings only. The Defendants suggested that it could only be shared with the named in-house lawyers if they agreed to an additional undertaking that these in-house lawyers would not be involved in any parallel non-English proceedings.
Further, the Defendants purported only to allow the Claimants’ expert into the club on the basis that he would not assist in any foreign proceedings relating to patents equivalent to the patent in suit. The Claimants agreed to the additional restrictions, under what they described as duress, in order to receive the PPD before the application was heard, but also sought removal of these restrictions.
Mann J dealt first with the question of the additional restrictions on the three named in-house lawyers. The Claimants argued that the provision of the PPD was something that fell within the original confidentiality club (as set out in an earlier order of Arnold J), and that any variation of that order would require an application by the Defendants which fulfilled the requirements of Tibbles v SIG plc  1 WLR 2591. The Claimants also argued that the Defendants could not fulfil these requirements as there had been no material change of circumstance.
The Defendants argued that the order only applied to documents that a party choose to disclose under the regime provided for by that order. Mann J disagreed, and found that the order established a regime applicable to all documents which a party designated as confidential and was in fact proposed by the Defendants themselves.
While the Defendants had not made a formal application to vary the order, Mann J treated the hearing as though such an application was before him. The Defendants suggested that the particularly confidential nature of some of the PPD should be considered as being a material change of circumstances which would justify a variation. Mann J disagreed, noting that the need to disclose the sort of information that was said to be contained in the PPD must have been appreciated when the original order was agreed. He also noted that he would not have accepted parallel proceedings as a change in circumstances, as the parties would have appreciated that there would or might be proceedings in other jurisdictions. Mann J did comment that in some cases something short of a change of circumstances might justify a variation, but that this was not such a case.
In case he was wrong in this finding that no circumstances justifying a variation of the order had arisen, Mann J went on to consider whether it would have been justifiable to adjust the original confidentiality regime insofar as it related to the three named individuals.
The Defendants submitted that only one of the two named individuals from Illumina should receive the PPD subject to the additional undertaking (a narrower approach than was adopted in correspondence between the parties). This was based on the possibility that the in-house lawyers may inadvertently disclose the confidential information elsewhere. Mann J found that the three individuals were appropriate members of the confidentiality club, as there was no evidence that they were anything other than appropriately discrete, honest and conscientious, which must have been accepted when they were originally allowed into the club.
Mann J then turned to the extra limitation proposed by the Defendants, namely that the three named members of the club who receive the PPD should not be involved in foreign litigation about related patents. The Defendants were concerned as to the accidental leakage of information into foreign proceedings. Mann J agreed with the Claimants in that the English Court should not be party to any attempt to conceal material from a foreign court, and that the Claimants have an understandable desire to use the same people to oversee patent disputes in a number of different jurisdictions. He noted that the Defendants’ case was simply an inadequately argued risk, which had to be weighed against the justifiable need for the Claimants to take instructions. He therefore found that the in-house lawyers should not be subject to the additional undertaking.
Mann J then turned to consider whether the Defendants’ approval of the Claimants expert was unreasonably withheld when they sought extra restrictions as a condition of his admission to the confidentiality club. The Defendants’ concerns were akin to those relating to the in-house lawyers, namely that the expert might find himself in a position where he is asked a question where a full answer would be based on his knowledge acquired from the PPD rather than the information disclosed in those foreign proceedings. Mann J disagreed, finding that there was no suggestion that the expert would be anything other than conscientious in the use of the information he received. Mann J therefore found the Defendants had unreasonably withheld their consent and that he should be added to the confidentiality club without the additional foreign proceedings restriction.
A copy of the judgment can be found here.
Headnote: Emma Irwin, Bristows LLP