High Court of Ireland Decisions

1. There are before the Court two applications, each brought by the Plaintiff, for leave to use documents discovered by the Defendant Madex in proceedings pending before the Courts of the Kingdom of Spain and of Switzerland.

2. It is common case that these documents, having been disclosed on foot of discovery orders, are subject to an implied undertaking on the part of the Solicitors to the Court, that the documents will not be used nor be allowed to be used for any purpose other than the proper conduct of this action. In support of that proposition, see the dictum of Finlay C.J. in Ambiorix Limited -v- The Minister for the Environment, No. 1 , [1992] 1 I.R. 277 where he says, and I quote:-

3. And see also the decision of the House of Lords in Home Office -v- Harman, [1983] 1 AC 280 and in particular, the statement from the speech of Lord Diplock which appears at page 284 and I quote:-

4. The matter is further addressed by the House of Lords in the case of Crest Homes Plc -v- Marks , [1987] 2 All ER 1074 and in particular, the statement of Lord Oliver in the course of his speech which is to be found at page 1583 in the All England Reports version at 1987, 2 All England, beginning at 1574 and the passage is at 1583 where he reiterates that principle. Insofar as the obligation not to use the material disclosed on discovery is concerned, I am satisfied that the law in this jurisdiction and the law in England and Wales is the same.

5. The Plaintiff here seeks to have that implied undertaking modified so as to permit the use of a small number of the documents disclosed in litigation which is pending in the Courts of the two jurisdictions which I have already mentioned.

6. The first matter which I must address in this ruling relates to my jurisdiction to entertain an application of this sort at all. Mr. Gordon, on behalf of the Defendant Madex, says that there is no such jurisdiction and that the implied undertaking which attaches to all of the discovered documents may not be released or modified in any circumstances.

7. An absolute prohibition of this type is a rare thing to encounter in law. Nonetheless, I am satisfied that I will have to give effect to such an absolute prohibition if

8. I am going to take each of these three propositions in turn.

9. First, the contention that there is a binding decision of the Supreme Court which I must loyally follow. The basis for that contention is to be found in two dicta or two Judges of the Supreme Court in two different cases. The first is the passage which I have already cited from the judgment of Finlay C.J. in Ambiorix -v- The Minister for the Environment, No.1 and I don't think that it is necessary for me to repeat that since the passage has already been recited by me in full earlier in the course of this ruling.

10. The second is a statement which appears in the judgment of O'Flaherty J. in the case of Mega Leasing (UK) Limited & Others -v- Vincent Barrett & Others, [1993] ILRM 497 and is as follows:-

11. In my view, neither of those two quotations constitute a binding authority on me. The statement from the judgment of Finlay C.J. in Ambiorix is clearly one which is made obiter. It is not made in the context of a dispute such as the one in suit here and it seems to me to do no more than state a general proposition but without addressing or being called upon to address the precise nature of the dispute which is in issue here.

12. Similarly, I take the view that the statement from the judgment of O'Flaherty J. is also made obiter. But in any event, even if it is not, it has no relevance, in my view, to the matter in dispute here since it seems to me to address a case where an action for discovery simpliciter is brought. That is not the case here, because it's quite clear that there are substantive issues which fall to be determined between Plaintiff and Defendant.

13. I therefore have come to the conclusion that there is no binding authority which compels me to hold that I am devoid of jurisdiction to modify or vary the implied undertaking which exists concerning the documents which have been disclosed on discovery.

14. I turn, therefore, to consider the second matter which seems to me might give rise to my holding that there is such an absolute prohibition on variation or modification of the undertaking.

15. Are there persuasive authorities which convince me that Mr. Gordon's proposition is sound?

16. Having reviewed the case law which has been produced here in argument before me, it is clear that there is no single case which is of persuasive authority which supports Mr. Gordon. In fact, all of the persuasive decisions are against him.

17. Insofar as the Courts of England and Wales are concerned, one can commence consideration of the authorities there by reference to the decision of the House of Lords in Crest Homes Plc -v- Marks [1987] 1 AC 829 and the speech of Lord Oliver makes it abundantly clear that there is a jurisdiction in the Courts of England and Wales to permit of a modification or variation of the undertaking and all of the case law which has been cited subsequent to that decision of the House of Lords is to like effect.

18. Insofar as this jurisdiction is concerned, nobody has been able to cite a written judgment dealing with this topic, but I cannot lose sight of the fact that even in this very litigation, my colleague, McCracken J., a Judge of no small experience in commercial litigation, has made orders of the type being sought. Furthermore, my attention has been drawn to an order made by the then President in July, 1995, in a case of Yske Bank, Gibraltar Limited -v- Jan Henning & Others who made an order of the type which is sought here. I am therefore satisfied that insofar as there is persuasive authority either from the Courts of England and Wales or in this jurisdiction, it is all entirely against Mr. Gordon's submission.

19. The third matter that I must look at is this, even if the persuasive authorities are against Mr. Gordon, can I conclude that his submission to me is sound in law? If I am so persuaded, then I ought obviously to ignore the persuasive authority both from here and in England and Wales and to find in his favour and indeed if he persuaded me that such was the case, I would be ready to do so.

20. In my view, the principle which Mr. Gordon contends for has little to recommend it either in law, logic or common sense. I cannot see any justification for such an absolutist approach. Such an approach, in my view, is likely to give rise to injustice, and in my view, it is not necessary to take such an approach with a view to providing the necessary protection for the rights of parties to litigation. Those rights are, in my view, already addressed by the form of undertaking and no injustice will result in the Court being conferred with a jurisdiction to vary or modify such an undertaking in an appropriate case.

21. Indeed, it seems to me that if one were to adopt the submission made by Mr. Gordon, one would be left with the position where the Court's hands would be unduly and unnecessarily tied and this would, in my view, frustrate the constitutional obligation which is imposed upon the Court to administer justice.

22. I have therefore, come to the conclusion that the submission made to the Court to the effect that I am devoid of jurisdiction to make an order of the type sought is unsound, unsupported by authority, and is incorrect. I therefore reject that first contention on the part of Mr. Gordon.

23. In my view, the law on this topic in this state has marched alongside with the law on the same topic in England and Wales. There is, in my view, a discretion vested in this Court to release from, or modify the implied undertaking which affects Solicitors to litigation of this sort concerning discovered documents. The issue then arises is, when should that undertaking be modified or released?

24. The circumstances in which the Court may make such an order will of course vary from case to case. But it may also be said that they may vary depending upon the type of order which threw up the documents which are the subject of such an application. It seems to me therefore to be arguable that documents disclosed on foot of either an Anton Piller Order or on foot of a Norwich Pharmacal or Megaleasing type Order may fail to be approached differently from documents disclosed as part of the ordinary process of discovery in inter parties litigation.

25. But I do not have to deal with this aspect of the matter in this case because in the course of his submissions, Mr. Fysh, QC, indicated that he was content to have the documents in suit here dealt with as thought they were disclosed in ordinary discovery. The rationale for that approach which appears to me to be sound is to be found in the judgment of Jacob J. in the case of Jade Engineering Conventry Limited -v- Antiference Windows Systems Limited & Others [1996] FSR 461. I think it is appropriate that I should quote the relevant passage from the judgment of Jacob J., which is at page 466 of the report where he says as follows:-

26. So it seems to me that in making the concession which he did, Mr. Fysh did so on the foot of the views expressed by Jacob J. to the effect that insofar as this particular case is concerned, it being an intellectual property case, that the same test is to be applied as though these documents were thrown up on ordinary discovery.

27. What then are the principles which ought to apply in considering an application of this sort? The first port of call in relation to that appears to me to be the decision of the House of Lords in Crest Homes Plc -v- Marks . And at page 1083 of the All England version of that report, in the course of the speech of Lord Oliver, the following is to be found:-

28. So it seems to me that in the exercise of this discretion, first there has to be a demonstration of special circumstances and secondly, it has to be shown that the making of an order of this type will not occasion injustice to the person giving discovery. But as the matter is one of discretion, it doesn't appear to me that the exercise of discretion simply stops there.

29. I am of the view that in deciding whether or not to grant leave, the appropriate approach for the Court is to look at all of the circumstances, including, if necessary, the circumstances of the original disclosure, the nature and the strength of the evidence, the type of wrongdoing which is alleged to be involved and the interests of both the Applicant and the party providing discovery as well as any public interest which may be involved.

30. So the first question I must pose for myself is; are there here special circumstances? I have dealt with a very large number of the interlocutory applications in this litigation and so I have acquired a great deal of knowledge concerning the dealings of the parties to the litigation. In my opinion, there are here, special circumstances which would warrant the Court making an Order of the type sought.

31. I do not propose to list them in an exhaustive fashion, but amongst the matters that appear to me to be germane as demonstrative of special circumstances are the fact that we are here dealing with an alleged infringement of either the same or similar patents. The product which is the subject matter of the litigation is the same. We are dealing with both transnational and indeed international alleged infringements and the products appears to emanate from the same source.

32. It seems to me that they do constitute in the overall context of this litigation, a special circumstance which would warrant the Court making an Order of the type which is sought.

33. The next question that has to be addressed is the general exercise of discretion. Bearing in mind the factors which I have already set out and bearing in mind the obligation to avoid injustice as between the parties as much as possible, I come to consider each of the two species of documents in respect of which disclosure is sought.

34. I have come to the conclusion that in the case of the Swiss litigation in respect of which documents are sought, I ought to refuse relief to the Plaintiffs in that regard. I have come to that conclusion for a number of reasons.

35. First, I am not satisfied on the basis of the evidence before me that any injustice will be caused to the Plaintiff by having this application refused at this stage without prejudice to its entitlement to revive that application at the conclusion of the litigation. But I am satisfied that there is a danger of an injustice being caused to the party disclosing the information by virtue of the fact that it appears that the confidentiality which they would wish to afford to the document may be lost by that document being placed into the domain of the Lugano Court and that seems to me to be a risk which I ought not to take.

36. But over and above that, I am quite satisfied that insofar as the Plaintiff's case in Lugano is concerned, it is admitted that there is no urgency involved in obtaining the documents which are the subject matter of this application and I therefore do not see that any injustice is caused to the Plaintiff by having to wait until such time as there is a fuller exposition of the issues as between the Plaintiff and Madex at trial. In that regard, I bear in mind the expressed approach of Madex in this regard, namely that if they are unsuccessful in this action, then there will be no objection to the disclosure of the documents and even if they are successful in this action, they may well take the same attitude although there is of course no watertight warranty being given by them in that regard.

37. So insofar as the Swiss proceedings are concerned, there not being any urgency, there being no risk of injustice, in my view, to the Plaintiff and a risk of injustice to the Defendant, Madex, I refuse, at this juncture, to permit of the undertaking being varied.

38. I have come to the conclusion that different considerations apply in relation to the Spanish proceedings. It seems to me that there is there an element of urgency, albeit that these proceedings have moved very slowly indeed. But the position has been arrived at where they are effectively over and an application is going to have to be made to admit these documents. Now, unlike the possible danger of the loss of confidentiality in the Swiss proceedings, I am quite satisfied that there is no such danger to the Defendant in relation to Spain. I have come to that conclusion for two reasons.

39. First, the documents are going to be delivered into the custody of the Spanish Court and the first matter that has to be dealt with in Spain is a determination by the trial Judge as to whether the documents are admissible and whether they are relevant. If he decides against the Plaintiff, then the documents will be returned forthwith and there is an undertaking to that effect.

40. If, on the other hand, the documents are disclosable, they are going to be dealt with by Court experts. They are not going, as far as I can ascertain from the evidence, to be put into the public domain and as I have already held, there is, in my view on the basis of the Affidavit evidence concerning Switzerland and in particular the Affidavit of Pietro Moroni, a risk that that will occur in Switzerland. I do not apprehend any such risk in respect of the Spanish proceedings.

41. I am therefore satisfied that there is a risk of an injustice to the Plaintiff if these documents are not disclosed and there is no risk of injustice, in my view, to the Defendant. Their apprehension concerning the confidential nature of the documents, is, in my view, adequately protected by the way in which the documents will be dealt with which has been explained to the Court and the way which they will fall to be dealt with by the appropriate Spanish Court.

42. In these circumstances, the Order will be to permit the use of the documents which are sought for the Spanish Courts but to refuse the documents for the Swiss Court, but that determination concerning Switzerland is without prejudice to the entitlement of the Plaintiff to renew this application at the conclusion of the trial. And in that regard, I may say, that I might have come to a different view if I were satisfied that the trial here was going to be unduly delayed, but I have made it clear that as far as the Court is concerned, it is my intention to ensure that the action as between Plaintiff and Madex at least, will commence in this Court not later than the beginning of Trinity term of this year, so that at trial all of the issues can be decided in a relatively short period of time and an application concerning the Swiss documents can be renewed at the conclusion of that trial.