Dendron GmbH & Ors v Regents of the University of California & Anor

In these proceedings the Claimants, which I will refer to as Dendron, seek the revocation of a patent owned by the defendant, which I will refer as the University. The University and a company called Boston Scientific Limited ("BSL"), which claims to be an exclusive licensee under the patent, have counterclaimed for infringement. For most purposes it will not be necessary to distinguish between the University and BSL. I will refer to them together as the Defendants even though BSL is, in fact, only a Part 20 claimant. The trial of the action is currently listed to commence in May of this year.

The patent, EP 0 803 230 B1, which has a priority date of 24 February 1992, is concerned with equipment used to treat aneurysms, a condition in which the walls of an artery are weakened, balloon outwards and tend to rupture. A Dr Guglielmi invented a method of treating these, potentially catastrophic, defects which involves inserting a special metallic coil into the cavity created by the aneurysm. This blocks or slows the flow of blood with the result that a blood clot is formed. This reduces the chances of the aneurysm bursting. Dr Guglielmi’s devices are known as Guglielmi Detachable Coils (“GDCs”). The patent is not for the GDCs themselves. It relates to what is claimed to be a different and later invention, namely special apparatus for getting the GDCs accurately to their desired location and inserting them in the aneurysm. The named inventors on the patent are Dr Guglielmi and Mr Ivan Sepetka.

The current action was commenced by claim form dated 21 January 2003. However these are not the only proceedings concerning the patent. First, there are opposition proceedings on foot before the European Patent Office (“EPO”). The Opposition Division upheld the validity of the patent. An appeal was lodged and the University sought expedition. The appeal is due to be heard by the Technical Board of Appeal in late April of this year. Applications by Dendron to postpone that hearing have been unsuccessful. I understand that the parties’ briefs are due to be filed by 22 March or thereabouts.

There are also two other court actions on foot. One is in the Netherlands, the other in Germany. I understand that issues of validity arise in both.

In addition to these substantive proceedings, Dendron made an application to the District Court of the Northern District of California under the provisions of s. 1782 USC. It was made for the purpose of obtaining information which, Dendron argued, would be of assistance in the English, Dutch and German proceedings and for the EPO. The court made an order (“the USC Order”) which required the production of documents which had been disclosed by a company called Target Therapeutics (at one time the exclusive licensee of the University) in infringement proceedings against a company called Cordis in the United States and also provided for the deposition of three witnesses who were or are connected with Target, including Mr Sepetka. That order is being appealed. I understand that the hearing of the appeal is likely to be heard on 26 March. If it is unsuccessful, deposition of the witnesses will take place shortly thereafter.

The dispute which I have to resolve concerns an issue of prior use. Dendron alleges that the technique and apparatus which is covered by the patent was used extensively and openly by a considerable number of people in a number of locations well before the priority date. In support of that exploitation, it is said that examples of apparatus within the scope of the patent were sold and distributed before the priority date. Mr Tappin, who appears for Dendron, says that it appears that the University only thought of applying for a patent as an afterthought.

I understand that, at least for the purpose of this application, there is no dispute that the invention was used extensively before the priority date by a number of surgeons in a number of locations. That this is so is supported by publications which are relied on by Dendron. For example Mr Tappin took me to an article in the Journal of Neurosurgery, of October 1992. Although this is after the priority date, the manuscript was delivered to the Journal before that date and it purports to describe what it describes as a “multicenter” study of the new procedure and apparatus carried out between April 1990 and December 1991. The authors include Dr Guglielmi and Mr Sepetka. The article records that 120 patients were treated and it gives some details of the history, procedure and outcome in relation to 38 patients. As is to be expected, publication of this material was facilitated by the fact that all the patients are anonymous. Dendron alleges that some 200 patients in total were treated before the patent was applied for. As I understand it, Mr Waugh QC, who appears for the Defendants, does not dispute that there is an arguable case of extensive public prior use by or under the control of the University. However he emphasises that his client’s position will be that none of this material invalidates the patent in suit, not least because it is said that the prior use was not public. It was experimental and secret.

The allegation of prior use is raised in the current English proceedings. It has given rise to a certain amount of disclosure by the Defendants. To date that disclosure has been treated as confidential and has only been made to a limited number of people within an agreed confidentiality club. There is an outstanding dispute between the parties as to whether any of the disclosed documents, and if so which, are really confidential. Dendron says that all or the overwhelming majority are not. This dispute is due to be aired before me in a few days’ time. Mr Tappin accepts that, for present purposes, it is to be assumed that the claim to confidentiality is justified in whole or in part.

According to Dendron, this prior use was not discovered until quite recently. For that reason, the opposition in the EPO did not include this ground of attack. As will be explained more fully below, Dendron now wishes to introduce this objection, and material relating to it, into the opposition.

In relation to the English proceedings, Dendron applied for two letters of request. The first application came before me at the end of last year. I made an order dated 2 January of this year. It was made under the provisions the new Council Regulation (EC) 1206/2001 of 28 May 2001 (“the Regulation”). I understand it is, as far as the parties are aware, the first such order made since the Regulation came into effect at the beginning of this year. Under the Regulation, the request must be made by a requesting court, in this case the English High Court, to a requested court, in this case the Amtsgericht of Freiburg, Germany and directed to the examination of and production of documents by an individual. In this case the order was made in respect of the examination of Professor Martin Schumacher, a neuroradiologist who is head of the Neuroradiology Department of the University of Freiburg.

Professor Schumacher was one of the medical specialists who were present during some of the pre-priority date surgical procedures which are the subject of the alleged prior use. Those procedures were allegedly carried out by a Professor Vinuela. Besides Professor Schumacher, Dr Guglielmi and a visiting doctor from Japan were present. Although Professor Schumacher is, according to the material before me, willing to give evidence and has given unsworn statements to both sides, he was anxious not to appear partisan. For that reason it was necessary to obtain the letters of request so that his neutrality could be respected. In the event he was examined on 4 and 18 February. In accordance with relevant German procedure, the examinations were conducted in private. A copy of a translation of the first of these examinations has already been prepared. The second is in the course of preparation. Paragraph 2 of my order of 2 January provides that true copies of the evidence taken pursuant to the request may be read and given in evidence on the trial of this action, saving all just exceptions, without any further proof. I understand that the Defendants may contend that some of the questions put to the Professor went beyond the scope permitted under the Request. That is an issue which, no doubt, will be ventilated at the trial.

A request under the Regulation has to be made on a specified form. It has to identify the requesting and the requested court. In this case they are identified as explained above. Furthermore, at item 11, the form requires the requesting court to specify the nature and subject matter of the case and a brief statement of the facts. In this form the nature of the case is described as follows:

“This is a patent dispute over European Patent EP 0 803 320 (“EP ‘230”), which concerns a method of treating vascular malformations by means of metal coils. It is being conducted in the Patents Court, part of the High Court of Justice of England and Wales.”

The provisions of the Regulation govern the procedure for making and responding to letters of request amongst Member States of the European Union, save for those who have opted out. I understand that Denmark has opted out.

The second application for letters of request came before Pumfrey J on 24 February this year. Because it was directed to the courts in the United States, it was not made under the provisions of the Regulation. It is directed to the courts in Alabama. It seeks the deposition of a Professor Horton, who is said to have visited Buffalo, New York in 1990/1991 and saw (and performed) procedures using the claimed apparatus without being under any duty of confidence. The examination of Professor Horton has yet to be conducted, but it is scheduled for 30 March 2004.

For convenience, I will refer to the first of these letters of request as the Freiburg Request and the latter as the Alabama Request. Although the Alabama Request was drafted in terms of obtaining evidence for use in these High Court proceedings, by the time the application came before the court, it had become apparent that Dendron had wider use in mind. In particular Dendron wished to use the material it obtained from its various foreign evidence gathering exercises in the EPO and the Dutch and the German proceedings. Because there was a dispute between the parties as to whether Dendron is free to do that, Pumfrey J’s order was made subject to an undertaking that the results of the examinations of Professors Schumacher and Horton pursuant to the Freiburg and Alabama Requests should not be used for any other purpose than in these proceedings, subject to further order of the court. One of the purposes of this application is to relieve Dendron from that undertaking.

The above matters have given rise to what are, in effect, three applications before me. The first is either to confirm that Dendron can use the Schumacher testimony given pursuant to the Freiburg Request wherever it likes, including in the EPO and Dutch and German proceedings, or, if permission is needed, to obtain such permission. The second is an equivalent application relating to the Horton testimony to be given pursuant to the Alabama Request.

The third relates to the USC Order. Mr Waugh does not dispute that material provided to Dendron through the process of disclosure in these proceedings can be put to the three witnesses to be examined pursuant to that Order (assuming it survives the appeal) for use in these proceedings. However, the USC Order is expressly directed to gathering evidence not only for these proceedings but also for use before the EPO and the Dutch and German courts. Dendron wants its Dutch and German lawyers to be allowed into the confidentiality club so that they can see the documents which are to be put before the witnesses. It also wishes to use the results of such examination, and such documents as are put to the witnesses, in the Dutch and German proceedings. The Defendants’ position is that there is no justification for either of these courses. The disclosure here is subject to an express limitation on use. Since it is only to be used for these proceedings, there is no basis for allowing the German and Dutch lawyers into the club and no justification for allowing them, or the German and Dutch courts, to see either the Defendants’ disclosed documents or the witnesses’ evidence relating to them. If Dendron is restricted as the Defendants argue, it applies for permission to use the disclosure documents for the EPO and the Dutch and German proceedings. I think it is conceded in argument that, in practice, if the Defendants are entitled or are given permission to use the disclosure documents in this way, then all of them are likely to be put formally to the three witnesses who respond to the USC Order – which includes at least one current employee of Target – with the result that they all will find their way into one or more of those proceedings.

Mr Tappin says that there is no restriction at all on the use which his client can make of the evidence given by Professor Schumacher. This comes in a number of parts. First, he says that there is no explicit restriction on use and, because of the recent codification of our procedural rules, there is no room for an implied restriction of the sort which used to exist in relation to discovery in pre-CPR days under the doctrine developed from Alterskye v Scott [1948] 1 Ch D 469. He accepts that this court has a discretion to impose an express restriction on collateral use but it has not done so here and there are no grounds why it should do so now. Second, he says that the fact that the evidence was taken in Germany in camera is irrelevant. The procedural rules to be adopted when evidence is given pursuant to a request under the Regulation must be that of the requesting state. It would be an exceptional case where evidence relating to public prior use would be taken in private in the English courts and no request was made to me to require the evidence to be so taken. In the alternative, if there is a restriction, this court has a discretion to remove it and this is a case in which it should be removed. Save as to the existence of the two discretions, all of these points are disputed by Mr Waugh.

The question of whether there is an automatic restriction can be looked at in two ways. First, is there an automatic restriction under the Regulation and, second, whether there is such a restriction at common law. I will consider each in turn.

I am told by Counsel that, because the Regulation is new, there is no authority in this country, in any other Member State or in the ECJ dealing with the issues arising here. Furthermore, there are no relevant travaux preparatoires. The issue must be looked at from first principles. In doing that, one should keep in mind the width of the freedom to use for which Mr Tappin argues. He says that absent an express restriction imposed by this court, his client can do whatever it likes with the Schumacher evidence. It can supply it to anyone, it can use it in any proceedings, including in the EPO, Denmark or any country outside the EU. It can be published in a newspaper. Presumably, although he did not say so expressly, the evidence could be supplied to criminal authorities or deployed in criminal proceedings.

Although the Regulation seeks to facilitate the taking of evidence, it is of restricted scope. This is apparent even from its title; “Regulation On Cooperation Between The Courts Of The Member States In The Taking Of Evidence In Civil Or Commercial Matters”. The Regulation is only concerned with co-operation between courts, they must be courts of Member States and the co-operation only relates to civil and commercial matters. These limitations are also referred to in the first and seventh recitals to the Regulation:

“(1)

The European Union has set itself the objective of maintaining and developing the European Union as an area of freedom, security and justice in which the free movement of persons is ensured. For the gradual establishment of such an area, the Community is to adopt, among others, the measures relating to judicial cooperation in civil matters needed for the proper functioning of the internal market.

(7)

As it is often essential for a decision in a civil or commercial matter pending before a court in a Member State to take evidence in another Member State, the Community's activity cannot be limited to the field of transmission of judicial and extrajudicial documents in civil or commercial matters which falls within the scope of Council Regulation (EC) No 1348/2000 of 29 May 2000 on the serving in the Member States of judicial and extrajudicial documents in civil or commercial matters(⁴). It is therefore necessary to continue the improvement of cooperation between courts of Member States in the field of taking of evidence.”

Furthermore Article 1 of the regulation provides that this procedure shall only be used for civil and commercial matters and, in particular, for use in judicial proceedings before courts of a relevant Member State:

“l . This Regulation shall apply in civil or commercial matters where the court of a Member State, in accordance with the provisions of the law of that State, requests:

(a)

the competent court of another Member State to take evidence; or

(b)

to take evidence directly in another Member State.

2.

A request shall not be made to obtain evidence which is not intended for use in judicial proceedings, commenced or contemplated.

3.

In this Regulation, the term ‘Member State’ shall mean Member States with the exception of Denmark.”

It is clear that it is not intended that this procedure should be used for the purpose of obtaining evidence for use in non-judicial proceedings, such as opposition proceedings in the EPO. Mr Tappin accepts that that is so. Nevertheless, although that may not be its intention, because there is no restriction on the use which can be made of the material obtained on execution of a request, that material can be passed to any non-judicial tribunal. Similarly it is clear that it is not intended that the procedure be used to obtain evidence and documents for use in criminal proceedings, or in any proceedings in a state outside the Community or for use in Denmark (because it has opted out). Once again, Mr Tappin’s point is that this restriction on the purpose of the Regulation does not restrict its effect.

Absent higher, or indeed any, domestic authority or guidance from the ECJ, I do not accept Mr Tappin’s submissions. It seems to me that the Regulation has a limited purpose as indicated above and, as a corollary, any use outside that limited purpose is prohibited save with the permission of the requesting court or the person or parties from whom the evidence is being sought. Implicit in Article 1.2 is a prohibition on use of the material for a purpose other than one sanctioned by the requesting court. Although it might be, as a matter of construction of English legislation, that absence of permission to do something is not the same as a prohibition against doing it, I do not think that it is necessary to construe Community legislation in the same way. The limited purpose of the Regulation should be matched by a limitation on the power to use material produced under it.

Mr Waugh argues that the same result is achieved if one simply considers this to be an exercise akin to obtaining disclosure. Before the introduction of the CPR, it was expected, in accordance with Alterskye v Scott, that all compulsory procedures for collecting information were subject to an implied obligation not to use the information for collateral purposes. As far as the collection of information in the form of evidence is concerned, the same applies now.

Mr Tappin disagrees. Although he accepts that, under the previous law, material obtained under compulsion could not be used until it was read in open court, he says that this only applies to documents produced on disclosure or on a compulsory inspection. It does not apply to evidence obtained by deposition. Even if he is wrong on that, he argues that the CPR provides a complete code for dealing with the use of material obtained by compulsion during the course of proceedings. The old notions of implied undertaking (which had to be created because there was no express provision in the rules) have been replaced with express obligations where that was thought necessary. In support of this he relies on SmithKline Beecham v. Generics [2004] FSR 8. Insofar as evidence is concerned, he says that the only limitation on the use of depositions is that contained in CPR 34.12 which provides:

“(1)

Where the court orders a party to be examined about his or any other assets for the purpose of any hearing except the trial, the deposition may be used only for the purpose of the proceedings in which the order was made.

(2)

However, it may be used for some other purpose –

(a)

by the party who was examined;

(b)

if the party who was examined agrees; or

(c)

if the court gives permission.”

Taking these arguments in turn, I do not accept that there is a difference in principle between obtaining disclosure or inspection by compulsion on the one hand and obtaining evidence by compulsion on the other. These are all different ways of achieving the same objective, namely the provision of information which can be used to prove relevant facts at the trial. I do not see why, as a matter of principle, it should make any difference whether the information is obtained in the form of a written document, examination of equipment or a process or by examination of a witness. Take the case of the USC Order. That is directed at, inter alia, current and former employees of Target, a company in the Defendant’s camp, designed to compel them to give evidence of the public prior use of the apparatus which is the subject of the patent. If full details of such use were recorded in writing within Target, it would be the subject of an order for disclosure. Before the CPR came into force, it would have been subject to the implied obligation not to use for collateral purposes. If the same information could have been obtained by inspection, for example of a museum of apparatus owned by Target, it would have been subject to the same implied obligation, as Mr Tappin concedes. I can not see why the same information obtained by compulsion from an unwilling witness should be treated any differently. Of course, once the evidence is given in court, it will be free to be used subject to any special order made by the court.

In Grapha Holding A G v Quebecor Printing (UK) plc [1996] FSR 711, Jacob J was faced with an argument that the implied obligation which applied to documents obtained on discovery should not apply to information obtained from the inspection of a piece of machinery under court compulsion. In holding for the party who had given inspection, the judge held:

“I have no doubt that an implied undertaking also arises when, instead of actual documents, an equivalent process of compulsory disclosure is used by the court. In this case for instance the inspection of the machine is a substitute for or in addition to discovery. …

I can see no reason in principle why the rules relating to inspection should be different to those relating to discovery, and I can find plenty of authority suggesting that the rules are exactly the same...” (p 714)

One of the authorities he relied on was Prudential Assurance Co Ltd v Fountain Page Ltd [1991] 3 ALL E R 878 in which Hobhouse J said:

“The rational basis for the rule is that where one party compels another, either by the enforcement of a rule of court or a specific order of the court, to disclose documents or information whether that other wishes to or not, the party obtaining the disclosure is given this power because the invasion of the other party’s rights has to give way to the need to do justice between those parties in the pending litigation between them; it follows from this that the results of such compulsion should likewise be limited to the purpose for which the order was made, namely the purposes of that litigation then before the court between those parties and not for any other litigation or matter or any collateral purpose.” (p 886, emphasis added)

Although Grapha was concerned with inspections, it seems to me that Jacob J’s approach applies just as much to evidence forced from a witness by depositions. That also is information obtained by an “equivalent process of compulsory disclosure”, to use his words. Furthermore the rationale of Prudential Assurance applies to such cases with equal force. It follows that, subject to the effect of the CPR, there exists an implied obligation not to use, without the permission of the court or the consent of the witness, evidence obtained by compulsion under letters of request.

Mr Tappin argues that all has changed since the introduction of the CPR. Even if the principles in Alterskye v Scott used to apply to evidence given under compulsion, there is no room for them now. Such limitations on use as exist are prescribed precisely by the CPR. In support of this, as mentioned above, he relies on the SmithKline Beecham decision.

In SmithKline Beecham the Court of Appeal said that CPR 31 is a complete code. That Part deals with the disclosure and inspection of documents only. In relation to that, there can be little doubt that the principles restricting the collateral use of material produced under compulsion has been lifted out of the case law and, with certain modifications, codified. That case and CPR 31 are not concerned with the taking of evidence under compulsion. That is dealt with by CPR 34. Mr Tappin says that that Part should be treated as a complete code as well. The only reference to limitations on the right to use evidence produced under compulsion is contained in CPR 34.12 which is set out above. As Mr Tappin says, if the principles in Alterskye still apply, CPR 34.12 would be otiose.

This is a powerful argument. However, with some hesitation, I reject it. If one were convinced that the provisions of CPR 34 were attempting to cover all possible situations and had clearly in mind all restrictions to be placed on the use of evidence obtained under compulsion, Mr Tappin’s argument would be unanswerable. However I do not think it is safe to assume that CPR 34 was intended to be a definitive code in relation to the issue of collateral use of evidence. It does not appear that such use has figured much in the jurisprudence before the CPR. The case law on collateral use of documents produced on disclosure was extensive and well known. For that reason it was an obvious candidate for codification and, where necessary, modification. The same does not apply where collateral use of evidence is concerned. I am not persuaded that the implied restriction on collateral use has been removed by the CPR.

I should mention that Mr Tappin also argues that evidence given pursuant to a letters of request is equivalent to oral evidence at the trial. It is not like a witness statement which is to be treated as confidential until confirmed at the hearing. I do not agree. The evidence is taken subject to all just exceptions. It is open to any party to argue at the trial that some or all of the evidence should be excluded. Until the court determines at the trial how it is to be treated, it is not the same as oral evidence given there.

In the light of these holdings, it is not strictly necessary to deal with Mr Tappin’s additional argument as to whether or not it was open to the German court to take the evidence of Professor Schumacher in private or, if it was, whether that should be ignored. Since both parties agree that, whatever the nature of the German procedure, it is open to the requesting court to allow the material to be used for collateral purposes, the fact that the evidence was taken in camera adds nothing. Nevertheless, it seems to me that on this point Mr Tappin is wrong. Article 10.2 and .3 of the Regulation provide:

“2.

The requested court shall execute the request in accordance with the law of its Member State.

3.

The requesting court may call for the request to be executed in accordance with a special procedure provided for by the law of its Member State, using form A in the Annex. The requested court shall comply with such a requirement unless this procedure is incompatible with the law of the Member State of the requested court or by reason of major practical difficulties. If the requested court does not comply with the requirement for one of these reasons it shall inform the requesting court using form E in the Annex.”

In this case it is said by the Defendants, and not denied, that the reason why the German court executed the letters of request in private is because, in accordance with German constitutional law, it is required to do so in all cases where the court is not being asked to give judgment. In my judgment, the German court was entitled to follow its own procedure in this respect.

It follows that, whether one adopts the construction or the common law route, Dendron does not have a right to use the evidence of Professor Schumacher as it wishes. If it is to be released to do so, that must be either by order of the court or with the agreement of the Professor. Since there is no suggestion of the latter here, the question is whether the court’s discretion should be exercised in Dendron’s favour in this case. I will consider that below.

Although the letters of request relating to Professor Horton were not applied for under the provisions of the Regulation, there has been no argument before me that different considerations would apply to it. The letters of request were issued by Pumfrey J for a limited purpose. Indeed, in this case there was an express restriction on use given by way of undertaking. In my view Dendron is not free to make collateral use of Professor Horton’s depositions once they have been taken. Permission either from the court or from the Professor is necessary.

This takes me to the question of discretion. I was taken through a number of cases on this topic including Bonzel v Intervention Ltd [1991] RPC 43. Mr Waugh relies on that as indicating how collateral use should only be allowed in very special and unusual cases.

It seems to me that the law on this subject is now encapsulated in the SmithKline Beecham case. There, counsel seeking to prevent collateral use relied upon the following passage in Halcon International Inc v Shell Transport and Trading Co [1979] RPC 97:

“However, these authorities to my mind, lead to this conclusion, that the use of a document disclosed in a proceeding in some other context, or even in another proceeding between the same parties in the same jurisdiction, is an abuse of process unless there are very strong grounds for making an exception to the general rule. It does, I think, emerge that some overriding public interest might be a good example, but not the mere furtherance of some private interest even where that private interest arises directly out of or is brought to light as a result of the discovery made.” (p 109)

In rejecting that, Aldous LJ (who, as a puisne judge, had decided Bonzel) said:

“At paragraph 22 of his judgment the judge said that the dictum of Whitford J (in Halcon) had not, so far as the researches of counsel had been able to reveal, ever been doubted or disapproved. However that statement was not followed by the House of Lords in Crest Homes plc v Marks [1987] AC 829 at 860. Lord Oliver said:

‘Your Lordships have been referred to a number of reported cases in which application has been made for the use of documents obtained under Anton Piller orders or on general discovery for the purpose of proceedings other than those in which the order was made. Examples were Halcon International Inc v Shell Transport and Trading Co [1979] RPC 97 and Sybron Corporation v Barclays Bank Plc [1985] Ch 299. I do not, for my part, think that it would be helpful to review these authorities for they are no more than examples and they illustrate no general principle beyond this, that the court will not release or modify the implied undertaking given on discovery save in special circumstances and where the release or modification will not occasion injustice to the person giving discovery. As Nourse LJ observed in the course of his judgment in the instant case (ante, p 840G), each case must turn on its own individual facts.’

The Halcon case was considered by Laddie J together with the other relevant authorities in Cobra Golf Inc v Rata [1996] FSR 819. The guidance he gave as to the matters the court will include in its considerations is useful. However it is important under the CPR to have in mind the overriding principles when considering whether to lift an order made under CPR 31.22. The most important consideration must be the interest of justice which involves considering the interest of the party seeking to use the documents and that of the party protected by the CPR 31.22 order. As Lord Oliver said each case will depend upon its own facts. …”

I have considered again what I said in Cobra v Rata and the guidance given by the Court of Appeal in SmithKline Beecham. It seems to me that amongst the factors which should be taken into account and which was not mentioned in either case was whether the release of the material from the restriction on collateral use would serve a purpose. In particular if it is clear that it is intended to put the material before a foreign court or tribunal which will not accept it or pay any attention to it, it would be pointless to release it. It would not serve the ends of justice. That has particular application here as far as the EPO is concerned.

It is Dendron’s wish to put Professor Schumacher’s testimony before the Technical Board of Appeal. I understand that the same is not sought in relation to Professor Horton because his depositions are unlikely to be available before the hearing of the appeal. Dendron has notified the Technical Board of Appeal of its intention to introduce new evidence . The response from the Board was as follows:

“An appellant is obliged to present its case fully and completely together with the grounds of appeal, and this applies particularly in cases of allegation of prior use. If this is not done at the outset the situation cannot be remedied at a later stage of the procedure. Thus, the appellant cannot now repair his case by producing Dr Henkes as a witness, nor can the outcome of the proceedings of the pending validity/infringement trial in England, or the evidence and documents presented in that trial, however relevant, influence the present proceedings before the EPO.

For this reason the Board does not consider it necessary to hear the witness Dr Henkes or any other witness the appellants may want to produce. Therefore, the fact of their availability or reluctance to appear before the EPO is not relevant.”

In my view this disposes of the application so far as the EPO is concerned. It is not in the interests of justice to release Professor Schumacher’s evidence for use in those proceedings because it cannot be used there.

This leaves the question of whether or not Professor Schumacher’s and Professor Horton’s evidence should be released for use in the Dutch and German proceedings. There is no suggestion that their evidence will not be received by the relevant courts.

I have not found this an easy question. Mr Waugh places particular reliance on the confidentiality of the medical records which are the subject of Professor Schumacher’s evidence and will be the subject of the evidence of Professor Horton. That, however, is somewhat less telling than it might appear at first blush. All the medical records are anonymised so no patient confidentiality is at risk. Furthermore it must be remembered that just such anonymised data was published by the defendants or Dr Guglielmi in journals such as the Journal of Neurosurgery. Apparently no difficulty was anticipated or caused by that. Furthermore Mr Waugh puts particular emphasis on the fact that this is a process of compulsion. That is clearly a significant point, but it must also be borne in mind that this is not the usual case where the person being forced to give evidence is an unwilling party or one of its employees. On the contrary, the evidence here is being obtained from independent professionals who have no fears of the outcome of this litigation. Indeed, as explained above, Professor Schumacher has given statements to both sides. His reasons for refusing to give a witness statement to one side or the other is because of a fear of being thought to be partisan. I have no reason to doubt that Professor Horton feels much the same thing. Allowing the wider use of their testimony is not so great an invasion of rights of privacy as is normally involved, say, where a party is seeking permission to make collateral use of his opponent’s own documents. In addition to that, it is to be borne in mind that what is at issue here is whether the types of use of the GDC equipment which Dr Guglielmi described in his own papers 12 years ago were public or not. Much of the relevant material is already out of the bag.

On balance I have come to the conclusion that, in all the circumstances, it would be just to allow this material to be used in the German and Dutch proceedings. To use the words of Lord Oliver, I am not persuaded that such use will occasion injustice to the Defendants. However the permission to make such collateral use is limited to the German and Dutch proceedings.

As I have explained already, the Defendants do not object to their disclosure being put to the three witnesses who are to be deposed in the United States, assuming that the current order is not revoked on appeal. Their objection is to Dendron using those procedures as a round about way of disclosing their documents in the Dutch and German proceedings. As Mr Tappin points out, unless there is a relaxation of the restriction on collateral use of the disclosure documents, there will be considerable disruption of the deposition process. Since that process is expressly designed to furnish evidence for use in the English, German and Dutch proceedings, maintenance of the restriction will mean that for part of the depositions the German and Dutch lawyers will need to be excluded. Although, no doubt, that will be inconvenient, I do not see that as a significant factor in determining whether to give permission to allow collateral use of this material.

The guidance given by the Court of Appeal in SmithKline Beecham applies here just as it applies to the Freiburg and Alabama Requests. However this is not a rubber stamping exercise. In SmithKline Beecham Nourse LJ said that each case had to be determined on its own facts. The same must apply to each application. Here what is at issue is the wider use of the Defendants’ own documents. The neutrality of the source which is a factor which weighed in the balance when deciding what to do about the Professors’ depositions does not exist here. The major argument in favour of giving Dendron permission to add the German and Dutch lawyers to the confidentiality club is that the material here at issue relates to the Defendants’ own prior use of their claimed invention. What injustice would be caused to them by disclosing the truth about their own exploitation prior to their application for a patent? There can be no injustice in invalidating a patent which the patentee has obtained notwithstanding his own prior use. Such or similar arguments could be raised in any patent case where the alleged infringer wants to release the patentee’s documents for use in foreign proceedings. Equivalent arguments could be advanced in most cases where the patentee wants to release the alleged infringer’s documents for use in foreign proceedings. It follows that in the majority of cases permission should be given for release of disclosure documents (and, presumably, the results of compulsory inspections).

It seems to me that in deciding what is just in all the circumstances involves considering what the foreign court wants. In our system all disclosure should be relevant and, to that extent, it can be said that releasing it to foreign courts helps the pursuit of justice. But if that is the approach we adopt, the restriction on collateral use would be virtually vanish. The fact is that foreign courts have their own procedures for determining legal disputes and thereby achieving justice. It is primarily for them to decide whether they need to compel one or more of the parties to give evidence or produce documents. The provisions of the Regulation apply as much to the Netherlands and Germany as they do to us. Under it, not only could those courts submit a request to England for the taking of evidence but, according to Article 4.1 (e) and (f), any such request shall be on a form which can specify;

“(e)

… - where appropriate, any other information that the requesting court deems necessary;

(f)

where the request is for any other form of taking of evidence, the documents or other objects to be inspected”

In this case, although the documents at issue relate to alleged public prior use by the Defendants, I have not been persuaded that there is sufficient justification to lift the restriction on collateral use. As Lord Oliver said in Crest Homes, the court will only lift the restriction in special circumstances. I have not been persuaded that this material would have sufficient impact on the German and Dutch proceedings or that this material could not have been obtained by application directly to the relevant national courts. There are no special circumstances here. In the result, I decline to exercise my discretion in Dendron’s favour in relation to this part of the application.