Nestec S.A. & Ors v Dualit Ltd & Ors

DEMB Holding BV ("DEMB") seek access to certain documents arising from Nestec SA and Others v. Dualit and Others, Case No. HC12D02673. DEMB are not parties to this action.

Nestec v. Dualit came to trial early this year, before Arnold J, and he gave judgment in the matter. It is a patent case. The patent in question is number EP 2 103 236. The patent is also in opposition proceedings before the European Patent Office. The Technical Board of Appeal of the European Patent Office is due to hear the matter in just over one month's time. The familiar one month deadline for the filing of documents before the Technical Board of Appeal expires very soon; that is to say, on 9th September. If DEMB could get the documents in question, they wish to use them in a filing at the EPO on 9th September.

The documents in issue are documents which were exhibits to evidence or were documents which were put to witnesses during the course of cross-examination at the trial. They played a part in the case, in particular, in relation to two attacks based on prior use, which succeeded before Arnold J. DEMB wish to run the same prior use attacks in the EPO. They want the documents in order to bolster and assist them in that attack. The documents include photographs and other things.

I should also mention there is a point on priority, although, for what it is worth, it is not clear to me how the documents relate to the priority, but that does not matter.

DEMB has copies of the skeleton arguments and witness statements and experts' reports from the proceedings. Some of them were produced as a result of an order I made today. The reasons for that order were given at the hearing this morning and there is no need to elaborate in this judgment.

The list of documents sought in the original application is as follows:

DEMB already has item number 1, and as mentioned above, I ordered that they should obtain items number 9 and 10 this morning. Items 1, 9 and 10 are not what this judgment relates to. At the hearing this morning I indicated that I would not accede to DEMB's application in relation to documents 2 to 8 because I did not believe I had the power to make the order DEMB seeks. This judgment explains my reasons why I formed that view.

I am satisfied that all these documents played a part in the trial. I am informed that none of them are covered by an order under CPR 31.22 restricting their use post-trial. I will say that if I have the discretion to do so, I can see that Mr. Pritchard, who appears for DEMB, has a good case to justify its exercise in his client's favour. I think DEMB have a legitimate interest in having access to and use of these documents in the EPO.

DEMB puts its application on two bases. The first is under the CPR, Part 5 r.5.4C. However, that rule cannot help DEMB on this application because, in the time available, the court administration has not been able to locate the file or any other records relating to Nestec v. Dualit, so I cannot say what is on the file and I cannot make the order sought, on any view. Of course, it is not a very satisfactory basis on which to deal with that part of the matter but I bear in mind that this application has been made very late and in a great hurry so the problem is, in many ways, one of DEMB's own making.

The second basis upon which this application is put is that Mr. Pritchard submits that I should make an order in relation to documents 2 – 8 under the inherent jurisdiction of the court. I will approach that aspect of the application on the basis, as Mr. Pritchard put in his skeleton, that documents in categories 2 to 8 are not available from the court file. I suspect that if or when the file or the court records were to be found, I rather think that it would be the case that those documents would not have been in the file or in the records in any event.

Mr Pritchard submits that the court has the jurisdiction inherently to regulate its own procedure, provided that it does not do so in a manner that is contrary to the substantive law, or inconsistent with the established rules of procedure, that is to say, the CPR. For that proposition he cites the case Al-Rawi v. The Security Service [2012] 1 A.C. 531. He also submits this is bolstered by CPR 1.1(1). Mr Pritchard also refers to the principle of open justice and refers to the well-known case of Scott v. Scott [1913] AC 1417.

He also refers to the judgment of Keith J in Sayers v. SKB [2007] EWHC 1346, pp 21, in which Keith J said:

"Anyone with a legitimate interest in having access to a copy of a document which has been read or treated as being read by the judge should normally be allowed to have it".

However, he accepts that that statement by Keith J was in the context of CPR r.5.4C and was not concerned with the court's inherent jurisdiction. I have mentioned already the problem DEMB has under r.5.4C.

Mr. Brandreth, who appears for the claimants in this case, opposes the application, submitting that the court has no power to make the order Mr. Pritchard seeks.

Mr. Aikens, who appears for the defendants, adopts a neutral position.

Mr. Pritchard accepts that there is no provision in the CPR which permits the court to make the order sought but, as I say, he says that the considerations of open justice mean that the power must exist in the court’s inherent jurisdiction.

I accept that open justice is a very important principle. However, in the context of this application, I do not accept that reference to open justice gives the court the inherent power to make the order that Mr. Pritchard seeks. It is important to understand the nature of what is sought. The order is to give DEMB copies of documents which were exhibits to evidence or were put to witnesses in cross-examination. The trial is over in this court and this application is made well after the trial.

Mr. Pritchard says they are needed in order to understand the evidence in the trial and I agree that seeing these documents would allow a better understanding of what happened in court than one would have if one did not have access to them. A rule which gave the court the power to accede to this application would not be a very surprising rule, but it does not exist. Moreover, in my judgment, the rules which do exist leave no room for the order sought to be granted under the inherent jurisdiction.

In order to explain this, I will start with GIO Personal Investment Services Ltd v. Liverpool and London steamship protection and Indemnity Association Ltd and Others (FAI General Insurance Co. Ltd Intervening) [1999] 1 W.L.R. 984. In this case the Court of Appeal drew a clear distinction between witness statements and skeleton arguments and documents of that kind on the one hand and copies of exhibits and documents of that kind on the other. In the judgment of Potter LJ at page 993, between B and D the learned judge said this:

"It is thus important to appreciate that when, in the course of the reported decisions relied on by Mr. Leveson, documents have been described as being 'in the public domain' use of that expression has meant in context no more than that any other person present in court may report without restriction and/or that the inter partes confidentiality which previously attached to the document has been lost by reference to it in court: cf. Plant v. Plant [1998] B.P.I.R 243, 251 per Carnwath J. In the latter respect it is to be noted that R.S.C. Ord. 24, r. 14A was introduced to put the position beyond doubt, following the decision of the House of Lords in Home Office v. Harman [1983] 1 A.C. 280. References to the 'public domain' go no further than that, and certainly do not have the effect of transforming such a document into one to which the public has a right of access, as opposed to one in respect of which access and the right to copy depends upon the consent of the party entitled to the document."

This is an important passage because it shows that the documents in issue before me could be described as being in the public domain but, nevertheless, based on what Potter LJ said in the paragraph I have mentioned, are not ones in relation to which the public necessarily has any right to make or take away copies.

The next important passage is at p994. There, at C, Potter LJ refers to Scott v. Scott, the judgment of Lord Shaw of Dunfermline; then he refers to Lord Diplock in Attorney General v. Leveller Magazine [1979] AC 440; to Home Office v. Harman [1983] 1 AC 280 at E; then finally to Article 6 of the European Convention on Human Rights between F and G. Potter LJ then continues as follows, at H:

"It should be noted that the authorities I have quoted and other leading statements on the question of public justice (see for example Scott v. Scott [1913] A.C. 1417, per the Earl of Halsbury, at pp. 440-443, and per Lord Shaw, at p. 482, Rex v. Governor of Lewes Prison, Ex parte Doyle [1917] 2 K.B. 254, 271, per Viscount Reading C.J. and Hodgson v. Imperial Tobacco Ltd. [1998] 1 W.L.R. 1056, 1069-1070, 1071E and 1072A-C, per Lord Woolf M.R.) deal with the matter in broad terms of 'open doors', the right of the press and the public not to be excluded, and the need for public announcement of the court's decision. They do not condescend to greater particularity than that and they certainly do not seek to suggest that, in devising and applying its procedures for the expeditious dispatch of judicial business, the public should be given access to such documentary material as may be before the court by way of evidence".

Then at 995, between F and H:

"So far as concerns documents which form part of the evidence or court bundles, there has historically been no right, and there is currently no provision, which enables the member of the public present in court to see, examine or copy a document simply on the basis that it has been referred to in court or read by the judge. If and in so far as it may be read out, it will 'enter the public domain' in the sense already referred to, and a member of the press or public may quote what is read out, but the right of access to it for purposes of further use or information depends upon that person's ability to obtain a copy of the document from one of the parties or by other lawful means. There is no provision by which the court may, regardless of the wishes of the parties to the litigation, make such a document available to a member of the public. Nor, so far as such documents are concerned, do I consider that any recent development in court procedures justifies the court contemplating such an exercise under its inherent jurisdiction".

I note in particular the reference to inherent jurisdiction by Potter LJ at H.

Finally I also refer to the passage at page 997, between B and C:

"That said, the issues canvassed upon this appeal plainly raise matters appropriate for consideration in the course of the revision of the rules of court currently being conducted in relation to the proposed introduction of various civil justice reforms in the wake of Lord Woolf's report, Access to Justice: Final Report to the Lord Chancellor on the Civil Justice System in England and Wales (July 1996), whether by way of some specific provision in the rules, or as the subject of a practice direction. It is of great importance to the beneficial saving in time and money which it is hoped to bring about by such new procedures should not erode the principle of open justice."

In this latter passage the court indicated that consideration should be given to making rules that deal with the issues arising before it, and indeed this happened. The rules in the CPR applicable today are products, in part, of the process envisaged by Potter LJ between B and C at page 997. Although, as Mr. Pritchard pointed out, the GIO Personal Investment Services case was before the CPR came into force, in my judgment that does not make the GIO case irrelevant. The CPR, as I have said, contains rules that grapple with the territory covered by the GIO case and set boundaries; for example in CPR Part 32, r.32.13. However, Mr. Pritchard's application falls outside r.32.13. That rule is limited to witness statements. Whatever the limits of r.32.13 may be, it is clear that the rules do not go as far as Mr. Pritchard requires. I can only infer that the draftsman of the rules chose not to overturn the effect of the GIO case and permit access to exhibits and other evidence at trial.

In that respect I should also refer to the judgment of Flaux J in British Arab Commercial Bank v. Algosaibi Trading Services Limited and Others [2011] EWHC 1817 (Comm). In that case the relevant passage from Flaux J's judgment is at paragraphs 20-22. He said as follows:

"20.

Exhibits are not covered by 32.13 and, correspondingly, they are not covered by 32.12. Although Ms. Thornley says the rule is cast very widely, it only refers to witness statements and I am simply not prepared to accept that it covers exhibits to witness statements as well. Ms. Thornley also seeks to put her application under rule 5.4, but that is only concerned with court records and given that witness statements do not form part of the court record or court file in the Commercial Court, a fortiori exhibits to those statements do not either. So Ms. Thornley is really driven to fall back on the concept of the inherent jurisdiction of the court.

"21.

In those circumstances, what Potter LJ said in GIO seems to me to be clearly against any suggestion that the court has some inherent jurisdiction to order access to documents which have not been read or referred to in open court. At 995 F, Potter LJ said:

[… cited above]

"22.

It seems to me that in that last sentence the learned Lord Justice may have in mind by way of 'recent development in court procedures' the fact that in Commercial Court litigation by the 1990s, (and, as it transpires now under the Civil Procedure Rules, in most civil litigation) the court is often invited to read a great deal of material before the trial begins, including documents from trial bundles, rather than having those documents read out in the old fashioned way in open court. I did point out during the course of argument that it may be that there is a tension between different parts of Potter LJ's judgment, because in one sense, if one is looking in that context at the short circuiting of the necessity to read out documents in open court in the old fashioned way, because the judge is being invited to read them, one might say, what difference is there in terms of principle between that and the fact that the evidence-in-chief of the witness is taken as read from their witness statements. In a sense, one has the same lacuna in terms of open justice."

As I have said, an important point is that rule 32.12 and 32.13 does not permit a third party having access to exhibits. This is a key problem, it seems to me, for DEMB's application. The rules could have before drafted to permit access subject to safeguards to both witness statements and other documents, but the rules are not drafted in that way. Given the GIO case, that cannot have been accidental. If the rules had been intended to permit the sort of access that Mr. Pritchard seeks, they could and would have been drafted in that way.

Finally, I should mention Article 117 of the European Patent Convention and the corresponding provisions in the practice direction, PD 63 paragraph 13. It may be that those provisions might have been applicable to provide a mechanism whereby the EPO could have sought what Mr. Pritchard wants. I gather that one opponent in the EPO proceedings in this case has asked the EPO to make such a request, but so far no request has been made and that is not the basis on which the application is made before me.

It seems to me that obtaining copies of documents of the kind in issue in this case raise different questions from access to witness statements, experts reports and skeleton arguments, as Potter LJ explained in the GIO case. Third parties are given access to documents like skeletons, witness statements and experts reports because the idea is that the trial is in public and a person could sit in court and hear what is said -- they could write it down and they could quote and reproduce it. The modern paper-based approach to proceedings should not provide a fetter to that open justice.

But copies of other documents raise different considerations. A third party sitting in court does not ordinarily have unfettered access to such materials, e.g. the photographs sought on this application. Such access does not normally allow a third party to take copies of photographs which are used in court. A journalist could write up the proceedings and describe what has happened but that is a different thing. In my judgment, the law explained in GIO governs the matter in relation to documents 2 to 8 and the rules of court have not, save for CPR r5.4C about the court records and r32 about witness statements, sought to change anything since that case.

One might imagine all kinds of safeguards and balances which might be required to be dealt with in such a rule if it covered exhibits and other similar documents. It might deal with handling the timing of applications of this kind, confidentiality, any copyright in the documents, the rights of third parties and, no doubt, other things.

I also bear in mind that this application is not concerned with the scrutiny of the court's decision-making process. It arises because a party wants to use the documents elsewhere. As I have said before, I do not think DEMB's purpose is illegitimate and in support of that I refer to the judgment of Floyd J in Pfizer Health AB v. Schwarz Pharma Ltd [2010] EWHC 3226 (Pat). That was concerned, however, with access to the court file. As I have indicated already, if I thought I had the power to do this I would probably, as Floyd J did in the Pfizer case, accede to the application, subject to suitable safeguards.

Rules could have been formulated to give access to the documents of this kind. To exceed to Mr. Pritchard's application makes the limitations which exist in the CPR today nugatory. In essence, DEMB's case is that the application does not satisfy the rules which have been set up to regulate this sort of situation, but even though they do not satisfy the rules I should make the order anyway. I do not accept that is a proper approach to the court's inherent jurisdiction and I dismiss this application in relation to categories 2 to 8.