27 January 2021
Transceiver - Winter 2021 – 1 of 5 Insights
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.
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:
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:
Oppo and Xiaomi appealed decisions (ii) and (iii) to the Court of Appeal as regards each of their respective applications.
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]:
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.
by multiple authors