England and Wales High Court (Patents Court) Decisions

IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
PATENTS COURT

		Royal Courts of Justice The Rolls Building 7 Rolls Buildings London, EC4A 1NL
		30th July 2012

MR. JUSTICE MORGAN:

1. This is an application by the claimant Samsung Electronics Limited against the defendants Apple Retail UK Limited and Apple Sales International for an unless order requiring the defendants, as it is put, to comply with an earlier disclosure order which was made by Floyd J in this action on 5th March 2012.
2. The claimants have the benefit of three patents which are identified in the pleadings in the action. The claimants allege that the defendants have infringed those patents in a number of respects. The particulars of infringing acts which have been served refer to certain devices which are described as the Apple devices; they are, in very brief summary, different kinds of i-Phone and i-Pad. The defendants deny infringement and put forward a number of other defences.
3. On 5th March 2012 Floyd J gave directions intended to lead to what was described as the technical trial, that is a trial of the technical issues arising in the litigation. I am told that this trial is expected to begin towards the end of November of this year. The learned judge's directions deal with a number of matters I need not refer to, such as pleadings. At paragraph 5 of his order the judge made an order requiring the claimant to give disclosure in a particular way. Then, in paragraphs 6, 7 and 8 the judge made an order under the heading "Product or Process Description". I need to read what is said in those three paragraphs of the order. They provide as follows:

"6. The Defendants shall serve, on or before 15 June 2012, a product description which to the best of the Defendants' knowledge and belief is in accordance with paragraph 6.1(1) and 6.2 of Practice Direction 63 - Intellectual Property Claims -- supplementing CPR Part 63 for representative products in issue.

7. In the event that the product description served pursuant to paragraph 6 above is not a complete description of the relevant parts of the products in issue, the Defendants shall, on or before 15 June 2012, make and serve on the Claimant a Disclosure List in accordance with form N265 of any documents in their control which relate to the matters in relation to which the product description is incomplete.

8. The description served under paragraph 6 shall be accompanied by a signed written statement which shall:

(a) state that the person making the statement is personally acquainted with the facts to which the description relates;

(b) verify that the description is a true and, which to the best of the Defendants' knowledge and belief is complete description of the product or process; and

(c) contain an acknowledgment by the person making the statement that he may be required to attend court in order to be cross-examined on the contents of the description."

I have read those paragraphs as they are printed in the order before me, although in one or two places the grammar appears to be somewhat imperfect.

4. Following the making of that order, the defendants considered how to go about complying with paragraphs 6, 7 and 8 of it. Eventually, I think in July of this year, the defendants served a document with the heading "Product and Process Description". The document cross-referred to paragraph 6 of the order I have read.
5. The first two paragraphs of the PPD refer to certain i-Phones and i-Pads and in each case identifies the serial number of the chipset used in the relevant i-Phone or i-Pad. The document then identifies the manufacturer of the relevant chipset; in most cases it was Intel and in some cases it was Qualcomm.
6. The document then in paragraph 3 states that Intel and Qualcomm have provided confidential descriptions of the features of these baseband chipsets which are relevant to the claims under the three patents. The document goes on to say that the confidential descriptions are set out in separate documents. There is then a list of six documents dealing with the matters so described.
7. At the same time as that document was served there was served a witness statement of a Mr. Schell, which appears to be in draft form to the extent that it is not signed by Mr. Schell. Mr. Schell explains he has been employed by Apple Inc. (which is the parent company of the defendants). No point is taken that Apple Inc. is not a party and that the particular defendants sued in this case may know comparatively little compared with the knowledge available to Apple Inc.. Mr. Schell states that he has seen the product and process description, he is able to confirm (apparently from his own knowledge) something about the Apple products listed at paragraph 2 of that document. Then, in paragraph 5 of his statement he refers to the fact that Intel and Qualcomm have provided information and they have restricted access to the information because of its confidentiality. He states that no one within Apple, including himself, can see the information to which he has referred. Then, in paragraph 8 of his statement he confirms that he is personally acquainted with the facts to which the product and the process description relates and the product and process description is true and that by listing the baseband chipsets to the best of his knowledge and belief the document identifies the features in the Apple devices that make the 3G functionality available.
8. Although Mr. Schell says he is acquainted with the facts and that the product and process description is true, it must be understood that he is confirming matters to the extent they are within his own knowledge and to the extent that the matters are being provided by Intel and Qualcomm, effectively what he is saying is that it is true that the information has been provided by Qualcomm and Intel. He is not himself able to, and he does not purport to, verify that information which comes from those third parties.
9. There is a continuing difficulty as regards the information which is available from Intel and Qualcomm; that information has not yet reached the claimant. That is because Intel and Qualcomm have specified considerable restrictions on the use of the information and those restrictions have not to date proved acceptable to the claimants and their professional advisers. It may be that in the near future those difficulties will be resolved and the information referred to in the PPD coming from Intel and Qualcomm will arrive at its destination, so that it can be used by the claimant in this litigation.
10. The evidence that has been served in support of the application goes into considerable detail as to the restrictions which have been put forward by Intel and Qualcomm, which have been the subject of detailed negotiations which have been modified and which may be further modified still.
11. The points that have taken a great deal of time in the course of the negotiations are matters of detail; no doubt it would be said critical and important detail. I have not been asked by either side to this dispute to come to a final decision as to whether the stance of Intel and Qualcomm has been unreasonable; alternatively, whether their stance has been entirely reasonable and the claimant's reluctance, indeed refusal so far, to agree the terms on offer could be used as a criticism of Samsung. If that were to be an issue which the court had to resolve, it would take a considerable period of time and in the end I am not pressed to come to any view about that.
12. The other matter I need to refer to before coming to my conclusion is that I have been shown a witness statement; it is the eighth witness statement of Dr. Watts, who is a partner at the defendants' solicitors, Freshfields. He describes the history of the matter, he refers to the PPD (which I have referred to). He says that that PPD together with the confidential annexes, which I have attempted to describe, complies with paragraph 6 of the order of 5th March 2012. He then says, in paragraph 13(b) of his witness statement, that the defendants do not have any other documents which "relate to the matters in relation to which the product description is incomplete".
13. I can understand that statement in this way. If the PPD includes the confidential information so that the confidential information is part of the description of the product, then Dr. Watts is saying that Apple does not have further documents which ought to be disclosed under paragraph 7 of the order to supplement that which appears in the confidential documents.
14. What that paragraph does not in terms say is what the position is if the confidential documents are removed from the PPD. On the basis that they are to be removed if they are not going to be available to the claimant, what would the situation be then? The PPD in such a case would say very little indeed by way of description of the product and the possibility must therefore exist that Apple would have more documents, some documents at any rate which would supplement the rather basic description contained in the truncated form of the PPD.
15. Having described matters leading up to this hearing today, I can go back to the order made on 5th March 2012. It is possible to work one's way through paragraphs 6, 7 and 8 on alternative bases. The first alternative is that one approaches the PPD which has been served on the basis that the confidential information is not effectively part of it, because it is not information that is going to be received by the claimant for use in the litigation. One can then work through the relevant paragraphs on that basis. The alternative is that one proceeds on the basis that the confidential information is part of this PPD. That alternative could become in due course, quite soon, the relevant alternative.
16. I am told by Mr. Nicholson, who appears for the claimant, that the claimant is still hopeful it will agree terms with Qualcomm and Intel in the near future and that would result in confidential information being provided to the claimant and one would then have to consider working through paragraphs 6, 7 and 8 on that basis.
17. I would have been prepared to consider these paragraphs on both of these alternative bases but Mr. Nicholson, appearing for the claimant who has made this application, invited me to look at matters in a narrower way and simply approach these paragraphs on the basis that the confidential material is not part of the PPD.
18. I will accept that invitation. On that basis, have the defendants complied was paragraph 6? The defendants are required under paragraph 6 to give a product description to the best of their knowledge and belief. If one removes the confidential material from the PPD, then the PPD says very little indeed about the description of the product. On the other hand, it is not said that the defendants know more about the description of the product than would be contained in the reduced form of the PPD. So on that basis, although the PPD will not be very much use to anyone, it will be compliant with paragraph 6 of the order.
19. I can go from there to paragraph 8 which supports paragraph 6. It refers to the description served under paragraph 6 being accompanied by a signed written statement which tells one various things. The statement of Mr. Schell is the relevant statement. Does it comply with paragraph 8 on the assumption that the PPD in question is the reduced form of PPD? Given that the PPD in question is so uninformative and Mr. Schell refers to those parts of it which Apple does apparently know about, it would follow that Mr. Schell's witness statement would comply with paragraph 8.
20. I will pause there before going to paragraph 7. Paragraphs 6 and 8 I have described. The PPD which has been served will need to be slightly revised and re-served. The revision will take the form of removing confidential material which so far the claimants have not been able to see. What I have in mind is a PPD that simply deals with what Apple can itself say and does not cross-refer to documents coming or potentially coming from Intel and Qualcomm. Similarly, Mr. Schell's witness statement can be revised so it refers to the reduced PPD and, of course, it can then be signed to complete the witness statement.
21. On that basis, what of paragraph 7? Paragraph 7 is an obligation on the defendants to give disclosure of documents in their control which relate to matters in relation to which the product description is incomplete. On the basis that I am considering a reduced form of the PPD, the product description will be incomplete. Paragraph 7 will need to be complied with.
22. I am told that a disclosure list in accordance with N265 has not yet been served; so one ought to be served. I will not predict what it will say and how much material it will refer to and how helpful that material will be. It is not for the court to predict that but it is for the defendants' solicitors to comply fully with paragraph 7. Having carried out the relevant searches and having produced the relevant documents, if any, the disclosure list will inform the claimant of what the result has been.
23. In the course of argument it has been suggested by the defendants that very little will be produced. That remains to be seen. All I decide today is that that step should formally be taken, whether it turns out to be very helpful or not particularly helpful.
24. Standing back then, it seems to me the order I should make is as follows. I will order the defendants within seven days to comply with paragraphs 6, 7 and 8 in the following way: as regards paragraph 6, the defendants are to serve a reduced version of the earlier PPD removing the references to material provided by Qualcomm and Intel. On that basis, under paragraph 7 the defendants, again within seven days, are to serve a disclosure list in accordance with form N265 and otherwise in accordance with paragraph 7 of the earlier order. Finally, again within seven days, there is to be a witness statement which complies with paragraph 8 by reference to the reduced version of the PPD which has been served.
25. What the claimant then says is that I should make an unless order. The draft of the order which is put before me is that unless these steps are taken within the time I have set the defendants' infringement defence to the technical trial issues should be struck out. In my judgment, this is not a case in which I should make an unless order. Largely because I do not think that whether I make one or whether I do not make one matters very much. Having identified the potentially very limited steps the defendants have to take, I am not sure that an unless order would be a particularly beneficial thing to the claimant; nor, on the other side of the coin, a very onerous thing on the defendants. It is not easy for me to assess who is really at fault, if anyone is at fault, in bringing this matter to the court against the background and the history which has come about.
26. In the circumstances, it is appropriate not to make an unless order in case there are difficulties even in complying with the very limited order I have identified I will make. So I will simply order that the steps which I have described are to be taken within seven days by the defendants.