England and Wales High Court (Patents Court) Decisions

IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION PATENTS COURT

		Royal Courts of Justice Strand. London. WC2A 2LL
		29/04/2008

MR. JUSTICE FLOYD :

1. This is an application by Nokia Corporation ("Nokia") and Nokia Siemens Networks OY ("NSN") in this litigation brought against it by InterDigital Technology Corporation ("Interdigital"). In some two months' time, a trial is to start in which the issue of whether the court should exercise its discretion to grant certain declarations concerning the essentiality of certain patents is to be decided at a preliminary hearing.
2. The principal issue which divides the parties in relation to that question is whether InterDigital have demonstrated a sufficient commercial or business interest in obtaining the declarations to justify the court in exercising the declaratory jurisdiction that it has held that it is entitled to exercise in cases such as this.
3. The issue on this application concerns the terms on which documentary disclosure, which has been given by InterDigital in relation to that issue, can be disclosed to individuals on the Nokia and NSN side of the case. The disclosure in question was given pursuant to an order which I made requiring InterDigital to give disclosure of a category of documents. The category in question is set out in full in paragraph 5 of the fourth witness statement of David Barron and reads as follows:

"The Claimant shall carry out a reasonable and proportionate search for all documents falling into the following categories within the possession custody or control of any member of the InterDigital (as defined in the Particulars of Claim):

(a) product roadmaps, business plans, customer target information and agreements relating to the manufacture or supply of the products or proposed products (both hardware or software) referred to in the First and Second Witness Statements of Mark Anthony Lemmo, provided always that documents relating to the technical details of said products or proposals are not required to be disclosed;

(b) documents relating to whether such products or proposed products are claimed to be compliant to the 3GPP Standard;

(c) documents relating to InterDigital's reasons for bringing these proceedings against Nokia Corporation and Nokia Siemens Networks Oy respectively, limited to the 7 reasons identified in the Further Information (including any such documents dating from after these proceedings commenced);

(d) any other documents which the Claimant intends to rely on at trial."

4. It can readily be seen the documents of the category ordered to be disclosed are likely to be commercially confidential, notwithstanding the fact that it was certainly my intention when making that order not to require production of documents which went solely to technical issues, those issues being the ones which are to be decided subsequently in a series of trials beginning in October 2008 and finishing in the October term 2009.
5. It is not disputed that these documents are the sort of documents which it is entirely proper should be the subject of some confidentiality restrictions. There are, however, some issues between the parties as to how far those restrictions should go. I have been shown some of the documents. Mr. Abrahams, who appeared for Nokia and NSN, identified documents which have, in fact, already been disclosed to Nokia commercially, albeit subject to non-disclosure agreements, and by Mr. Alexander Q.C on behalf of InterDigital identified documents which plainly have a sensitive commercial content. It is not necessary to go into the details of those documents in a judgment delivered in open court.
6. Both sides have adopted a somewhat blanket approach to this application. InterDigital have designated some 505 documents out of the 515 disclosed as confidential. Nokia/NSN, on the other hand, say that the same provisions should apply to all of the documents. I have no basis on this application on which to distinguish particularly sensitive documents from others. It is suggested by InterDigital that the right approach, therefore, is not at this stage to make an order which would result in wider disclosure of the documents than is strictly necessary and that, in due course, if particular difficulties arise on the Nokia/NSN side, then an application can be made for extending the disclosure appropriately.
7. My concern about taking that course is that evidence is due to be exchanged in 11 days; the trial is approximately two months away and Mr. Abrahams on behalf of Nokia has already indicated that he is having difficulties taking detailed instructions from his clients in relation to the overall approach which they propose to adopt at the forthcoming trial. It seems to me, in those circumstances, that I must approach the matter in a somewhat blanket way as well.
8. Turning to the first discrete issue, which is whether in respect of the documents disclosed to Bird & Bird (who are the solicitors acting on behalf of Nokia and NSN) it should be required that the individual solicitors, assistant solicitors and other individuals who receive the documents should be required to give personal undertakings as opposed to an undertaking being given by Bird & Bird as a firm. Mr. Alexander says the personal undertakings are better because they bring home to the person giving the undertaking the importance of the undertaking which they are giving. Mr. Abrahams for InterDigital says that that is all too cumbersome and time consuming. It would require a fresh undertaking to be given, in theory, for someone to photocopy the bundle.
9. It does seem to me that the appropriate course here is for Bird & Bird to give the undertaking. That undertaking should require that the documents remain in Bird & Bird's premises in London except to the extent that they are required either for the purposes of applications to court or for delivery to counsel.
10. I also do not think it is necessary, given the nature of counsel's obligations in relation to documents generally, for counsel to be required, provided they are counsel instructed in the case and properly instructed in the case, to give personal undertakings. It seems to me that the firm's undertaking and counsel's well known obligations are adequate.
11. The second discrete issue concerns a further firm of solicitors who have been instructed to protect the interests of NSN. Bird & Bird are, in fact, the solicitors conducting the litigation for NSN, but this additional firm is, as I understand it, the normal London solicitor of NSN and has been instructed to keep an eye on the litigation as a whole. Nokia and NSN seek an order which would permit two named individuals at that firm to have access to the documents on their personal undertakings.
12. I am not satisfied on the material before me that a sufficient case is made out for disclosure to be extended to a further firm of solicitors. At the moment I do not see why these documents go to anything other than the day-to-day conduct of this litigation. Should a case be made out that it is necessary for NSN's own London solicitors to see particular documents for some specified purpose connected with their instructions, then this decision does not foreclose a further application.
13. The third discrete issue concerns a Mr. Laakkonen, a former employee of Nokia, who is a solicitor but who has now moved from Nokia to Bird & Bird. So far as he is concerned, there is concern on the part of InterDigital that he, because of his historical closeness with Nokia, is not a suitable person to whom the documents should be disclosed. Ms. Mutimear, on behalf of Bird & Bird, has said that she wishes to make him part of the team.
14. I consider that it would not be appropriate for the court to pick and choose amongst the solicitors who are entitled to see these documents on the basis suggested by InterDigital. It seems to me that Ms. Mutimear must be the judge of whom it is reasonable and necessary to disclose the documents to and it does not seem to me that Mr. Laakkonen's historical association with Nokia should debar him from seeing these documents. Notwithstanding that, I consider that it is reasonable to ask him to give a personal undertaking to impress on him the need to keep these documents confidential and strictly within the confines of this case.
15. The final discrete issue is whether two individual employees of Nokia and NSN, one for each company, should be permitted access to these confidential documents. The individuals concerned are, so far as Nokia is concerned, a Mr. Richard Vary, who is senior litigation counsel at Nokia UK. Mr. Vary is handling intellectual property litigation in Europe on behalf of the Nokia group. He is a qualified solicitor, having previously practised at Linklaters. He is not involved in Nokia's patent licensing activities or in Nokia's business purchases.
16. The representative identified for NSN is Vanessa Bailey. She is a dual qualified United States attorney and English solicitor. She is responsible for NSN's patent litigation and is not involved in NSN's patent licensing programme.
17. InterDigital suggest that the stage has not yet been reached where it can properly be said that those individuals have a sufficient need to see the confidential documents on a wholesale basis to justify disclosure to them. They say that in due course, if problems arise, a specific application can be made in relation to specific documents or classes of document. InterDigital's position is met by Nokia by saying that, so far as they are concerned, difficulties in obtaining instructions on the documents have already arisen and what is more, they say that the mechanism proposed by InterDigital is likely to reveal to InterDigital what steps behind the cloak of privilege are being taken by Nokia in preparing for the action.
18. I have to balance, on the one side, the interests of InterDigital in protecting these documents and, on the other side, the need to ensure that Nokia can prepare properly for this action. A number of factors come into that balancing exercise. First of all, these are not parties who are in head to head competition. The business of InterDigital emerging through the evidence in this case is not that of a head to head competitor of Nokia; Nokia is a potential customer for Interdigital. Secondly, whilst the documents are undoubtedly confidential, it does not seem to me as to the broad class that they are so confidential that they will immediately provide Nokia with information which could be of immediate use to them in their business, except to the very limited extent that has been demonstrated to me in relation to a few documents by Mr. Alexander.
19. I also have to bear in mind the identity of the individuals concerned, both of whom are qualified solicitors and both of whom are, therefore, officers of the court. They will be well aware that access to information of the kind which InterDigital wish to protect may place them in a difficult position in relation to their participation in any commercial activity by Nokia or NSN where information of this character might be of relevance; but it does seem to me that the situation with which I am confronted is very different from putting this information directly into the hands of business people at Nokia or NSN.
20. Doing the best I can to balance these various factors, it seems to me that I should allow those named individuals at Nokia and NSN to have access to these documents against their personal undertakings. Plainly, the documents should remain at Bird & Bird's offices in the way that I have already. The individuals indicated and subject to the exceptions I have already indicated, they need to be made aware, as I am sure they will be, of the importance of the undertakings which they are giving to the court. But subject to those provisos, I am prepared to make the order that Nokia and NSN seek.

MR. ABRAHAMS: My Lord, a couple of matters. Your Lordship during your judgment I think misspoke. Your Lordship said that InterDigital is a customer of Nokia. You meant to say the other way around.

MR. JUSTICE FLOYD: Yes.

MR. ABRAHAMS: The other order I would ask your Lordship to make, obviously, is to discharge the undertakings already given, which are now too narrow.

MR. JUSTICE FLOYD: Save to the extent that they are not consistent with my judgment.

MR. ABRAHAMS: Yes, OK. At the moment I have signed an undertaking saying I cannot show the documents to Mr. Laakkonen.

MR. JUSTICE FLOYD: Yes.

MR. ABRAHAMS: So discharged to that extent. My Lord, costs.

MR. JUSTICE FLOYD: Yes.

MR. ABRAHAMS: My Lord, I do submit that you should order that InterDigital should pay both sides' costs of this application, for two cumulative reasons. First of all, apart from the relatively minor matter of Simmons & Simmons, your Lordship has effectively given us all the relief that we wanted, so we have very substantially won this application in the face of opposition. Your Lordship will also bear in mind that the application was an application for disclosure because at the time we made the application no disclosure had been given at all.

MR. JUSTICE FLOYD: Do you mean disclosure or inspection?

MR. ABRAHAMS: Technically both. The list itself had not been provided at the time we made the application because, for technical reasons, they could not supply the list without the documents because they came together. I think they were all hyperlinked, because it was all done electronically. The second reason following on from that is that what actually happened in this case is that your Lordship made an order for disclosure on the 11th. That was extended by agreement to the 18th and on the 18th InterDigital unilaterally decided not to give disclosure.

Now, what ought to happen in cases like that is that a party who is disclosing documents it considers to be confidential should well in advance try and agree terms of confidentiality. If it cannot, it should make an early application to the court, preferably with the application getting on before the date for exchange of lists so that it is not in breach, but certainly make a prompt application to the court asking the court to impose a confidentiality regime.

In my submission, it is simply not acceptable for a party to say that it refuses to give disclosure until the other party agrees to whatever regime it is unilaterally imposing, of course, a fortiori , when that regime is then subsequently held by the court to be far, far, far too stringent, but, in any case, it is simply not right. It is something that happens and parties do too often and it ought to be very strongly discouraged. So your Lordship ought to in some way indicate that the procedure adopted by the other side was wrong and not acceptable.

That is all I would say on costs.

MR. JUSTICE FLOYD: You are not asking me to assess any costs?

MR. ABRAHAMS: We have not got a costs schedule.

MR. JUSTICE FLOYD: Then you are not asking me to assess any costs. Mr. Alexander?

MR. ALEXANDER: My Lord, we say that this is a matter of the kind that is very commonly and trivially brought before the court. Although it is right that my learned friend has got something of what he wanted, he has not got everything of what he wanted. It should be costs in the case or rather costs in the preliminary issue in any event. But there is nothing in the point, really, about disclosure not having been given. Disclosure was given. This was an issue that was going to have to be sorted out at one point or another.

As to my learned friend's point that one should always try and do this in advance of giving disclosure, in some cases it might be sensible to do it; in some cases it is actually not sensible to do it in advance. It is perfectly sensible to provide the documents to the other side. Quite often, as one can see from the Helitune case, there is an agreement from the other side's solicitors that they are not going to disclose it further until the need actually arises. There is no reason to suppose that that is something that may well not have been forthcoming here. We say that the course that was adopted here was a perfectly reasonable and appropriate course, and there should be costs in cause.

MR. JUSTICE FLOYD: I am going to say that Nokia should recover 75% of their costs of this application. That reflects the fact that Nokia have got most of what they wanted but they have not got everything.

MR. ALEXANDER: My Lord, there is only one final matter which is that my instructions are to ask my Lord for permission to appeal on this matter. Although it is an interlocutory factor and it might be said that it is a matter which involves weighing various factors, we respectfully submit that in the circumstances in which a party, particularly, should be required to give disclosure to representatives of the other party for confidential business documents, it is a matter that is fit for consideration by the Court of Appeal. We would ask, my Lord, that in order for that, as it were, to take place, that my clients can take instructions as to whether they wish to pursue it, having considered my Lord's judgment overnight. My Lord would stay the operation of this order until 10 o'clock tomorrow morning so that my clients can consider whether they wish to take the matter further. It has not been possible to take instructions. We have tried to do that on this, but not knowing what my Lord was going to say, it was a bit difficult to do that.

MR. JUSTICE FLOYD: The two-part nature of the judgment made that rather difficult. I need not trouble you on permission to appeal, but the stay until 10 o'clock tomorrow morning?

MR. ABRAHAMS: I will oppose it and sit down.

MR. JUSTICE FLOYD: I am not going to grant permission to appeal. This is a case management matter involving the exercise of the court's discretion. I will grant a stay of the operation of that order until 10 o'clock tomorrow morning. Presumably, you want that to carry on if you do make an application for permission to appeal?

MR. ALEXANDER: Yes, indeed. Yes, it probably has to while we make an application for permission to appeal. What I did not want was for it to continue, as it were, without a cut-off time. Perhaps the appropriate course is to just extend the time very slightly so that if we need to make a further application for stays and so forth before my Lord or, indeed, someone else, we can do that tomorrow morning without unbelievable pressure, perhaps up until midday.

MR. ABRAHAMS: Can I suggest that the bit that is stayed is the paragraph that says that the documents will go to Mr. Vary and Ms. Bailey because, as I understand it, I think that is the objection. What I would then suggest is that if they make an application for permission to appeal, that bit be extended by a very short period, say 24 or, at most, 48 hours.

MR. JUSTICE FLOYD: I cannot put pressure on the Court of Appeal. It has got to be that if an application is made, then until that application and any appeal is determined, is it not?

MR. ABRAHAMS: Well, your Lordship then has to find some way to put them under extremely stringent terms to get it on, for example, by saying that as regards the application notice for permission to appeal, your Lordship has complete discretion as to when the appellant's notice can be filed, and say that that has to be filed by close of business tomorrow, and then say that they have to make an immediate application for permission to extend the stay and that they have to make efforts to get an immediate hearing of that ASAP.

MR. JUSTICE FLOYD: It has got to be pursued with the utmost diligence, but I cannot be more specific than that.

MR. ALEXANDER: Yes, all of that is fine, if that is what my learned friend would like. That is absolutely fine, of course.

MR. JUSTICE FLOYD: Yes. I think that ought to be reduced to writing but, in principle, I am prepared to grant a stay to allow for an extremely expeditious application to the Court of Appeal.

MR. ABRAHAMS: That is a stay just of the provision relating to Mr. Vary and Ms. Bailey.

MR. JUSTICE FLOYD: Yes.

MR. ABRAHAMS: And the appellant's notice in by close of business tomorrow.

MR. JUSTICE FLOYD: Or sooner. It should not be a very long document.

MR. ABRAHAMS: No. Finally, my learned friend and I had a chat over the short adjournment about the evidence timetable, and we thought, we both agreed, that it would be sensible to extend the time for evidence-in-chief to 23rd May, and for reply evidence to 6th June. Nobody could work out when reply evidence was due under the current timetable, but everyone agrees that 6th June is where it ought to be.

MR. JUSTICE FLOYD: Is that agreed, Mr. Alexander?

MR. ALEXANDER: Yes, my Lord.

MR. JUSTICE FLOYD: There is one other matter. I have noticed the correspondence which is passing between the parties in relation to scientific advisers, and one of the letters which I saw suggested that the court might wish to raise the question at the forthcoming hearing. It is obviously desirable from the point of view of Mr. Wiffen, who is proposed, that he be "organised", if I can put it in that general way, as soon as possible. The rules seem to provide -- no more than that -- that the costs of such scientific advisers are met out of public funds. That may not be something which is of particular interest to Mr. Wiffen, and I do not want to get to the position in this case where it is uncertain how he is to be remunerated, given the level of the undertaking which the parties and the court are asking him to embark on.

A number of possibilities arise. We could, for example, find out somehow what the level of remuneration that is provided out of public funds in these circumstances is, but in so far as that is less than he is indicating he would charge, then I think the parties have to be responsible for the balance. The other is that you could forget altogether about trying to get Parliament to pay for it, and the parties could accept now that his costs would be part of the costs of the proceedings and would be borne by the losing party. I am not asking you to take any final decisions about this now, but it does seem to be in Mr. Wiffen's interests that this ought to be sorted out sooner rather than later.

MR. ABRAHAMS: He is a professional consultant, and I do know his fees. I do not know the amount of money paid out from Parliament, but let us not even pretend there is any possibility that it would cover his fees. So if it is going to be him, then the parties have to agree that they will pay the difference between that and whatever they can get out of Parliament, which may be zero. On this side, we have certainly always been proceeding on the basis that the parties would share the costs in the first instance and then, obviously, those would be costs in the case, or costs in each of the individual trials to be dealt with by the trial judge with all the other costs.

MR. JUSTICE FLOYD: On the basis that whichever party was ordered to pay the costs would ----

MR. ABRAHAMS: Yes.

MR. JUSTICE FLOYD: Yes. That also, it seems to me, needs to be thought about a bit because Mr. Wiffen may not be terribly happy about waiting until December or possibly even to 2010.

MR. ABRAHAMS: No, sorry, what we had always understood it to be would be that the parties would share his costs in the first instance. They would pay him as he presented his invoices on whatever terms are agreed, and then those costs would be disbursements. Just like Marten Walsh Cherer, they would be paid in advance and then it would be ----

MR. JUSTICE FLOYD: That seems to me to be the sensible course. Mr. Alexander?

MR. ALEXANDER: My Lord, I am told that this is all in hand in terms of discussions concerning this, and doubtless this will be resolved.

MR. JUSTICE FLOYD: Yes. Can you copy my clerk in on this particular aspect of the communication so that I can keep an eye on it?

MR. ABRAHAMS: Your Lordship's indication is most helpful and welcome.

MR. JUSTICE FLOYD: Good. Thank you both very much indeed.

MR. ALEXANDER: We are obliged.