Summary

The Court of Appeal has outlined a number of points of importance for courts to consider when managing the disclosure of highly confidential information and admittance of proposed individuals into confidentiality clubs to enable them to see confidential documents. These points will be important to be borne in mind for anyone dealing with similar issues in litigation.

Background

The appeals related to litigation concerning standard essential patents (SEPs) and highly confidential documents disclosed during the course of the proceedings which were subject to more restrictive measures than the CPR.

Mitsubishi and Sisvel own SEPs alleged to be required for the implementation of the 3G and 4G mobile telecommunications standards, which are part of a wider SEP portfolio called the MCP Pool administered by Sisvel. The Oppo/OnePlus group of companies (Oppo) and the Xiaomi group of companies (Xiaomi) are implementers of the 3G and 4G standards and sell telecommunications equipment.

At a case management conference before Mr Justice Mann on 22 July 2020 Mitsubishi and Sisvel were ordered to provide disclosure and inspection of copies of licences where the rights licensed included any of the patents in the MCP Pool and copies of assignment agreements relating to patents or patent applications comprised in the MCP Pool.

At the same CMC, Mann J established a confidentiality regime for the disclosure. Under this regime the parties could designate documents as one of three categories, with mechanics for the receiving party to object to any designation, and with resolution of any disputes to be made by the court:

• Attorney’s Eyes Only (AEO): documents only made available to external representatives (lawyers and experts) in the AEO Club
• Highly Confidential Material (HCM): documents may be seen by the HCM Club, which includes the AEO Club and up to two representatives of each party whose identity must be previously agreed
• “Ordinary disclosure materials” governed by the CPR disclosure rules.

First instance decision

Following disclosure, Mitsubishi and Sisvel objected to 3 of Oppo/OnePlus' nominated representatives for the HCM Club primarily on the basis that those individuals were involved in licensing activities. Oppo then applied to the Court for the inclusion within the HCM Club of its nominated individuals (the "Oppo Membership Application"), and also requested that 6 of the AEO documents disclosed by Mitsubishi and Sisvel be re-designated as HCM so that they could be discussed with the HCM Club members (the "Oppo Re-designation Request"). Xiaomi sought the wholesale re-designation to HCM of all AEO documents disclosed by Mitsubishi and Sisvel (the "Xiaomi Re-Designation Request").

In the first instance decision, Sir Alastair Norris:

• Allowed the Oppo Re-designation Request (subject to specified restrictions and requirements regarding who could have access to the re-designated documents)
• Dismissed the Oppo Membership Application
• Refused the Xiaomi Re-designation Request.

Oppo and Xiaomi appealed decisions (ii) and (iii) to the Court of Appeal as regards each of their respective applications.

Court of Appeal

In their judgment on the appeals, the Court of Appeal set out a non-exhaustive list of points of importance for the court to consider when managing the disclosure of highly confidential information: [para 39]:

• the court must balance the interests of the receiving party in having the fullest possible access to relevant documents against the interests of the disclosing party, or third parties, in the preservation of their confidential commercial and technical information
• an officer / employee of the receiving party gaining no access at all to documents of importance at trial will be exceptionally rare, if indeed it can happen at all
• there is no universal form of order suitable for use in every case
• restricting disclosure to external eyes only at any stage is exceptional
• if an external eyes only tier is created for initial disclosure, the onus remains on the disclosing party throughout to justify that designation
• different types of information may require different degrees of protection, according to their value and potential for misuse (e.g. the protection to be afforded to a secret process may be greater than the protection to be afforded to commercial licences where the potential for misuse is less obvious)
• difficulties of policing misuse and the extent to difficulties of policing misuse which a party may be expected to contribute to the case based on a document are relevant
• the role which the documents will play in the action is a material consideration
• the structure and organisation of the receiving party is a factor which feeds into the way the confidential information has to be handled.

On the basis of these points of importance, as well as other factual considerations, the judges dismissed both the Oppo and Xiaomi appeals. While the reasons for these dismissals was, in the circumstances, fact specific, the Court of Appeal's list of points of importance for the court to consider when managing the disclosure of highly confidential information and admittance of proposed individuals into confidentiality clubs is of wider relevance to intellectual property proceedings involving these points, and should be borne in mind and considered by any parties involved in disputes such as these.