England and Wales High Court (Chancery Division) Decisions

IN THE HIGH COURT OF JUSTICE
BUSINESS AND PROPERTY COURTS OF ENGLAND AND WALES
INTELLECTUAL PROPERTY LIST (ChD)

		7 Rolls Building Fetter Lane, London, EC4A 1NL
		15 November 2022

This further ruling was handed down by the Judge remotely by circulation to the parties or their representatives by email and by release to The National Archives. The date and time for hand-down is deemed to be NB 16.30pm on 15 November 2022.

MR. JUSTICE MARCUS SMITH:

1. This short judgment is supplemental to my ruling in these proceedings reported under Neutral Citation Number [2022] EWHC 2637 (Ch). In that ruling (the Ruling), which I take as read, and whose terms and abbreviations I adopt, I set out the broad outlines of a specific disclosure regime to apply in these proceedings. Those outlines were subsequently crystallised in an order, approved by me.
2. At various points in the Ruling, I indicated that if the operation of the regime could not be agreed, the matter in disagreement should be referred to me, to be resolved on the papers. One such matter is that set out at [14] of the Ruling, where each party is to identify "custodians, repositories and collections of documents that will be searched, together with any date ranges that will be applied to exclude or include material." I indicated that "[i]n defining the universe of documents to be searched, each Producing Party should err on the side of over-inclusion".
3. An issue has arisen as to how "custodians, repositories and collections of documents" to be searched are to be identified. For convenience, I shall use the abbreviation Custodians. The Defendants have applied the test laid down (in a different context) in Goodale v. Ministry of Justice, [2009] EWHC 841 (QB), which states that "custodians" are "key custodians…known to hold documents likely to be relevant to the issues" (my emphasis). The Claimants contend that this is too narrow a test, and invite me to state what is the correct approach given the terms of [14] of my Ruling, and indeed the terms of the Ruling generally.
4. The approach I laid down in the Ruling was intended to save, rather than increase, the costs of disclosure. It follows that there must be some limits to the Custodians searched pursuant to [14]. However, I am satisfied that the Goodale test is too narrow for the purposes of the regime laid down in the Ruling, in its emphasis on "key" custodians "known" to hold relevant documents. The notion of "key" custodians has no place in the regime set out in my ruling, and knowledge of what is held can only be material after due inquiry has been made.
5. In order to comply with [14], the Producing Party must:

i) Apply their mind to the range of possible – not likely – custodians liable to hold relevant material on a Peruvian Guano test. A number of custodians will be excluded on this basis – but I stress that this is, and is intended to be, a low threshold, erring on the over-inclusive.

ii) If the documents held by these "possible" custodians can easily and with minimal cost be incorporated into the universe of documents to be searched electronically, then that should be done, in accordance with the general tenor of the Ruling. That will then be the end of the question so far as Custodians are concerned.

iii) If, however, cost (in terms of time and money) is liable to render the process disproportionately expensive, then the exclusion of "possible" custodians can be explained and justified on grounds that the over-inclusive process will not (in the judgement of the solicitor making the statement/affidavit) materially add to the corpus of relevant disclosure (defined as disclosure that is responsive to the Peruvian Guano standard) that will ultimately provided at the end of the process given:

a) The potential for duplication;

b) The nature of the documents liable to be held by the "possible" custodian; and

c) The difficulties (which must be explained) in incorporating the "possible" custodian's material into the universe of documents to be searched.

6. I have incorporated this clarification into a ruling, because it augments the Ruling itself.