Pfizer Health AB & Anor v Schwarz Pharma AG & Ors

This is an application by a third party, Strickland (Legal) LLP for permission to obtain copies of documents from the court file in this patent action and counterclaim (“the main proceedings”). The documents ultimately sought are those relating to the validity of patents the subject of those proceedings.

It is well known that third parties are often keen to inspect the Grounds of Invalidity in a patent action, in order to assist their own actual or intended attack on its validity. This is perhaps the most important document sought on this application. It should be noted, however, that the present application falls to be decided under rules which are increasingly of historical interest only. Grounds of Invalidity filed today will normally, as I explain below, be available for inspection by third parties as of right.

The main proceedings were a claim for infringement of two patents relating to a compound for treating urinary incontinence. The main proceedings were commenced in 2005. Shortly before trial, the main proceedings were stayed by virtue of an order of Pumfrey J dated 17^th May 2006. That order stayed the main proceedings pending further order, vacated the trial window fixed for 10^th July to 28^th July 2006, and gave the parties permission to apply. On 25^th July 2006, Lewison J made an order that the proceedings be discontinued, save for the first claimant’s application to amend the specification of European Patent (UK) No 1019358, one of the two patents in suit, with no order for costs. In January 2007 an order was made discontinuing the amendment proceedings.

The third party applicant is a firm of solicitors. Their application notice, dated 8^th April 2010, seeks an order in accordance with a draft order attached, that they be supplied with “all allowable documents” from the court records pursuant to CPR 5.4C. Part C of the application notice simply sets out the provisions of CPR Part 5.4C. The attached draft order seeks an order that:

“Upon payment of the prescribed photocopying fees, copies of the any and all documents on the court file in these proceedings shall be made available to Strickland LLP from the court records”

The application came before Master Moncaster on 29^th April 2010. He provided the applicants with copies of the claim form dated 3^rd May 2005 and the amended claim form dated 19^th October 2005, together with copies of four consent orders made on various dates between 5^th December 2005 and 19^th January 2007. In addition he provided a copy of an order for directions made by HHJ Fysh QC sitting as a deputy High Court Judge dated 21^st February 2006. He ordered an adjournment so that the comments on whether further documents should be disclosed could be obtained from the original parties to the action or their representatives. Strickland then wrote to Baker & M^cKenzie who acted for the claimants, and Bristows who acted for the defendants, by letters dated 18^th May 2010, seeking their consent. The responses they received were:

The application was accordingly restored before the Master on 11^th October 2010. The Master decided to adjourn the matter to the Patents Judge. It came before me on 12^th November 2010.

When the matter came before me, Mr Strickland explained (although this was not made clear in the application notice or in any evidence) that his firm acted for a company active in this area who wished to know of documents having a bearing on the validity of the patents in suit, which remain in force. The company was reluctant to disclose its identity for commercial reasons, but was interested in determining its freedom to act in this technical area. Its purpose in wanting documents from the court records was to assess the material deployed, so as to assess the validity of the patents in suit.

I pointed out to Mr Strickland that it was likely that the document most relevant to the validity of the patents in suit, that is to say the Grounds of Invalidity, together with documents relating to the application to amend the specification, were likely to be available to the public through the United Kingdom Intellectual Property Office. CPR Part 63 in its original form, and in force at the relevant time, required a copy of the Grounds of Invalidity to be served on the Comptroller: see CPR Part 63 PD paragraph 11.2(4) (see the version printed in the 2009 White Book). That is no longer the case. The Grounds were, however, amended several times. Applications to amend the specification of the patent are still required to be served on the Comptroller: see CPR Part 63 PD paragraph 10. The UKIPO has confirmed that documents relating to the validity and amendment of these patents are on their files and may be inspected on payment of the appropriate fee by any member of the public without the need to obtain permission.

The rules governing the supply of statements of case draw a distinction between statements of case filed before and those filed after 2^nd October 2006. The rules which govern statements of case filed before that date were the former rules 5.4(5) to 5.4(9) which are now set out, for convenience, in the Practice Direction to Part 5 at paragraphs 4A.1 to 4A.9. Paragraph 4A(2) of the Practice Direction provides:

“A person who is not a party to proceedings may:

(1)

unless the court orders otherwise, obtain from the records of the court a copy of a claim form, but not any documents filed with or attached to or intended by the claimant to be served with such claim form, subject to paragraph 4A.3 and to any order of the court under paragraph 4A.4; and

(2)

if the court gives permission, obtain from the records of the court a copy of any other statement of case.”

The present application, insofar as it relates to “statements of case” is governed by paragraph 4A(2)(2), and permission from the court is required.

For statements of case filed on or after 2^nd October 2006, CPR 5.4C(1) applies. A third party is no longer required to obtain permission to obtain copies of statements of case:

“(1)

The general rule is that a person who is not a party to proceedings may obtain from the court records a copy of –

(a)

a statement of case, but not any documents filed with or attached to the statement of case, or intended by the party whose statement it is to be served with it; …”

So far as documents other than statements of case are concerned, the position is governed by CPR 5.4C2, whenever that document was filed:

"A non-party may, if the court gives permission, obtain from the records of the court a copy of any other document filed by a party, or communication between the court and a party or another person."

CPR Part 63 PD now makes clear by paragraph 4.2 that the Grounds of Invalidity form part of the Statement of Case. It is not entirely beyond dispute that that proposition held true at the time at which the Grounds of Invalidity in the present case were served. However, the point is of no relevance because, if the Grounds of Invalidity were not a statement of case within the Practice Direction, then they must be an "other document" within the main rule. In either case is the permission of the court is required.

It is important to note that there is no unfettered right of access to the court file other than in accordance with the rules and practice directions. In Dian AO v Davis Frankel & Mead (A Firm) and another (OOO Alfa-Eco and another intervening) [2005] 1 WLR 2951; [2004] EWHC 2662 (Comm) Moore-Bick LJ said at paragraph 20:

“The first thing to notice about rule 5.4(2) is that it does not give the general public an unfettered right of access to the court records. On the contrary, it proceeds of the footing that … there is no right of access to the court files without permission.”

Next, paragraph 4A(8) of the Practice Direction says that an application under paragraph 4A(2)(2) for copies of statements of case filed before 2nd October 2006 "must identify the document or class of document in respect of which permission is sought and the grounds relied upon”. There is a similar provision, namely paragraph 4.3 of the Practice Direction in relation to applications for other documents under CPR 5.4C(2). Moore-Bick LJ again dealt with this, in some detail in relation to old rule 5(4)(2), in AO Dian (supra) at 32-34:

“32.

It is necessary therefore to go back to the rules to see what they provide. In my view it is clear from the language of rule 5.4(2) that the court's permission is required before a search may be made for any document which, if found, may then be inspected and copied. I think this makes it clear, even without recourse to the practice direction, that the documents which the applicant wishes to be allowed to look for must be identified with reasonable position. The rule clearly does not contemplate permission to inspect the file as a whole. What it contemplates is permission as a necessary first step to search the record for a particular document or documents. It is difficult to see on what basis the court can exercise its discretion to permit a search unless the applicant has first identified which documents it wishes to search for.

33.

It is no surprise, therefore to find the paragraph 4.4 of the practice direction expressly requires the applicant to identify the document in respect of which permission is sought…

34.

I agree, however, that the need to identify documents with reasonable precision does not preclude an applicant seeking permission to search for, inspect and copy a class of documents… What is necessary, in my view, is that the documents be identified with sufficient particularity to enable the court properly to consider all the relevant factors when exercising its discretion. Thus, an application to inspect "the pleadings" is likely to be acceptable because it is unlikely that different considerations will apply in relation to individual documents within that class. On the other hand, an application to inspect "the witness statements" may well be too broad because different factors could well apply to individual documents within that class.”

One of the principal reasons for allowing access to the file is the principle of open justice. In Dian AO Moore-Bick LJ explained the importance of this principle, but explained that it had limited bearing in a case where the parties had, as here, compromised the dispute some years earlier. He said at [30]:

"It could be argued that the principle of open justice demands that the court records be open to all and sundry as a right in order to enable anyone who wishes to do so to satisfy himself that justice was done in any given case. But that has never been the law and it is not what r 5.4 says. I accept that the line of authority on the principle of open justice was not specifically drawn to the attention of Nicholls V-C in Dobson v Hastings, but I am unable to accept that he was not well aware of it. It clearly did not strike him as odd, however, that the court's permission should be required in order to obtain access to the record. The principle of open justice is primarily concerned with monitoring the decision-making process as it takes place, not with reviewing the process long after the event."

What principle therefore applies to granting permission to third parties to inspect the file where the principle of open justice is not directly engaged? In Dobson v Hastings [1992] Ch 394, Sir Donald Nicholls VC said at page 406:

“Cases and circumstances vary so widely that any attempt to legislate in detail in advance of access to particular types of documents in particular types of cases across the whole spectrum of High Court litigation would be impossible. So the rules provide, in effect, a general prohibition but with a built-in safety valve: any person may apply, ex-parte, (viz, with the minimum formality and expense) to the court for leave. The court will then consider all the circumstances.”

That passage was cited with approval by Moore- Bick LJ in Dian AO. He went on to say this at [56] – [57]:

“56.

In the present case, although Alfa is not interested in whether justice was properly administered in the Dian case, I think it does have a legitimate interest in obtaining access to documents on the court record in so far as they contain information that may have a direct bearing on issues that arise in the litigation in the Caribbean….I think that in the case of documents that were read by the court as part of the decision-making process, the court ought generally to lean in favour of allowing access in accordance with the principle of open justice as currently understood, notwithstanding the view that may have been taken in the past about the status of hearings in chambers.

57.

On the other hand, I do not consider that the court should be as ready to give permission to search for, inspect or copy affidavits or statements that were not read by the court as part of the decision-making process, such as those filed in support of, or in opposition to, the application for summary judgment in this case. These were filed pursuant to the requirements of the rules but only for the purposes of administration. The principle of open justice does not come into play at all in relation to these documents. I do not think that the court should be willing to give access to documents of that kind as a routine matter, but should only do so if there are strong grounds for thinking that it is necessary in the interests of justice to do so."

I should point out that the application for summary judgment in that case was treated as having been disposed of by a consent order see [47] without the affidavits having been read by a judge.

I would summarise these principles as follows:

I would add that the procedure under the CPR should not in general be used for obtaining copies of documents which are available from public sources, such as the UKIPO or the EPO. Nothing I say should encourage a party to use the route of applying for permission under the CPR to obtain documents which are already available from these sources. It seems to me that the public nature of the register kept by the UKIPO and EPO is in sharp distinction to that maintained of litigation in the High Court. The first port of call must, in permission cases, be the UKIPO, before any case could be made for operating the “safety valve” under the CPR.

In the light of the changes to the rules about the service of the Grounds of Invalidity on the Comptroller, it will in future be necessary that requests for that particular document be made under the CPR. However as Grounds of Invalidity are now clearly a statement of case, there will normally be a right of inspection of that document. I say “normally” only because CPR 5.4C(3) imposes a requirement for permission to inspect a statement of case where only one of several defendants has entered an acknowledgment of service. However, I would regard the case for a commercially interested party to see Grounds of Invalidity even where permission is required, as compelling where the route under the CPR is the only available one.

The first problem presented by this application is that the applicant is merely a representative of an undisclosed commercial interest. I did not have the benefit of contrary argument on this point, but am on the whole persuaded that a professional adviser who is able to say that he acts for a party which it is advising on the validity of the patents in question can claim it has a like interest to the commercial client. The application can be made without disclosing the identity of the party. If the court were concerned about the good faith of the application, it could always ask for further information. In this case I was not so concerned.

Next, Mr Strickland recognised that the application in the present case offended against the principles identified in paragraphs 32-34 of Dian. An application which asks for all the documents on the court file not a proper application, and is not improved by asking for all “allowable” documents. The application does not adequately identify the document or class of documents sought. Absent proper particularisation the court does not have the material on which to exercise its discretion. The application is also defective on the additional ground that it does not identify the grounds on which the documents are sought.

In his skeleton argument and in his address to me Mr Strickland sought to remedy these defects in the application. So far as documents or classes of documents are concerned he said that his application was concerned with documents which “relate to the validity of the patents in suit” including the following documents or classes:

In the absence of any opposition to the application, I was content to allow the application to go ahead as if it had been made for these specific listed documents. I think that the class of documents which “relate to the validity of the patent in suit”, whilst not creating any particular difficulty in the present case, would be hopelessly wide in a case where witness statements on the merits had been exchanged. Nevertheless, having reviewed the file, the only documents which appear on it which are not specifically listed by Mr Strickland are the pleadings in the amendment proceedings, and I will treat the application as if it had included a reference to those specific documents as well.

As to the grounds of making the application, Mr Strickland stressed the fact that the (in one case qualified) consent of the parties had been obtained. He also submitted that there appears to have been at least one public directions hearing at which some material had been deployed. He also drew attention to the fact that the attack on validity had apparently provoked an application to amend. He also submitted that there was a strong public policy in allowing parties to challenge the monopolies granted by patents. In a subsequent elaboration of his skeleton by letter he drew attention to the fact that the UKIPO make the documents on their files relating to attacks on validity available to the public: the court should not take a different approach.

This is not a case where the third party can contend that it is interested in seeing whether justice was done in the main proceedings, far less monitoring that process while it is taking place. I would, however, accept straightaway that a party who is commercially active in a technical field to which a patent relates has a legitimate interest in seeing the grounds on which a patent is attacked. Sight of these documents will help the third party to take sensible commercial decisions. It may in some cases deter him from taking legal action. In other cases it may save him considerable time and effort and money in locating relevant prior art.

I can deal with these quite shortly. The only document of any relevance to the applicants is the Re-Amended Grounds of Invalidity, which will demonstrate the form of the earlier versions. There is no reason to suppose that any of the other pleadings will contain anything other than a formal assertion of invalidity, and that is in fact the case. Whilst I would have preferred to see evidence that this amended document is not available from the UKIPO, I am prepared, in the rather unusual circumstances of the present case (including the absence of opposition and the fact that the document has been amended), to permit a copy to be taken from the court file. The first port of call should have been the UKIPO.

I take this category as including documents on the court file which relate to the application. The only substantive application for directions was that which led to a hearing before HHJ Fysh QC.

It appears from the judgment of HHJ Fysh QC given on 21^st February 2006 that Pfizer had performed experiments directed at supporting the validity of the patent. The dispute before him appears to have been about the defendants’ right to inspect a repetition. For that purpose I think that it can be assumed that he will have read the principal pleadings in the case and the Notice of Experiments.

The Notice of Experiments is not, so far as I can see, on the court file. The application was supported by a second witness statement of Stephen Francis Jones, the solicitor having the conduct of the action for Pfizer, dated 13^th February 2006. He explained that the experiments in question were based on material which had already been filed in the European Patent Office in connection with an opposition to one of the patents in suit. He also explained how the claimants proposed to deploy the experiments. He exhibits to his witness statement the material filed in the EPO. The experiments went to show, so it was contended, that the compounds of the invention had been discovered, after the event, to have advantages not described in the patent. The application was also supported by an expert report of a Dr Robert Wallis, an employee of Pfizer, also dated 13^th February 2006. He explained his experience in conducting experiments of this sort. He exhibits to his statement publicly available material referred to in his statement.

These witness statements were, I am prepared to assume, read by or to the court on the application for directions. I should therefore lean in favour of allowing copies to be taken. They have a bearing on the validity of the patent in question and will help the third party to understand the stance that Pfizer might take if the patent were again to be challenged. I think that the applicants have established a legitimate interest in having copies of the witness statement and expert report.

I cannot, however, see why the applicants should obtain from the court file any of the voluminous publicly available material exhibited to these statements. It is notable that CPR 5.4(C)(1) draws a distinction between statements of case and exhibited documents. I do not see why the gateway under the CPR should be opened in respect of publicly available documents referred to in a witness statement. These may be costly and time consuming to reproduce. If the applicants want to see them they can be obtained from the public sources, by following up the references in the documents.

Apart from those identified above, there are no other documents relating to experiments on the court file.

I suspect that at least the Statement of Grounds in the amendment proceedings is available from the UKIPO. Nevertheless, and again perhaps rather generously, I am prepared to order disclosure of the Statement of Grounds and Statement of Opposition in the amendment proceedings. It seems likely that these will have been considered in the context of the application for directions heard by HHJ Fysh QC. The documents again relate to the stance of the parties in relation to validity. The applicants have a legitimate interest in seeing these documents.

I will make an order pursuant to CPR Part 5 PD paragraph 4A(2) and CPR 5.4 C(2) permitting the applicant to obtain copies of the following documents from the court records: