|Has IPOff's disclosure got Cautious|
into a real stew ...?
"IPOff has asserted that the design of its allegedly infringing Robot Octopus was independently created – produced by an independent design agency, Fishy Designs. In the Case Management Conference (CMC), the PCC ordered specific disclosure in relation to the allegation of independent design. IPOff provided a list of documents, and copies of the disclosable documents on the list [Note: this list should include non-disclosable documents (such as privileged ones) although usually in a fairly cursory manner]. However, Cautious’s patent attorney thinks the list is deficient and wrote to IPOff’s solicitors, asking that his client make a better effort at disclosure.
The response is blunt. Our client has done a proper job. There is no further disclosure. They add that the instructions to Fishy Designs are privileged, as containing legal advice [not sure about that!]. Cautious’s patent attorney’s assistant has prepared a note on current position:
“You have asked me to comment on what steps we can take in relation to IPOff’s clearly inadequate disclosure.
The first point to make is that, even where a party has given disclosure, you can make an application for further disclosure (CPR 31(12), PD31 5.1). The application must set out specifically what documents are sought and provide evidence in support of the application (PD31 5.2, and see the White Book para 31.12.2). The Court must take into account the overriding objective (PD31 5.4), and so it seems that the application or evidence should also explain why disclosure is proportionate. However, where it appears that the failed to comply with the obligations in the CMC Order, it will usually make an order (PD31 5.4).
In this case there are several aspects which we can rely on:
· There appear to be several deficiencies in relation to disclosure of emails. First it is clear that “electronic documents”, such as emails, word documents and spreadsheets are disclosable (CPR 21.4 and PD31A 2A.1 and also see the Practice Direction on Disclosure of Electronic Documents PD31B at para 5 for examples). The standard form of “Disclosure Statement” which is set out in PD31A, Annex (and N265) specifically requires a statement as to the extent of search carried out – including a statement of what electronic document resources have been searched (such as PCs, laptops and servers). IPOff has simply left that statement untouched. Clearly it should have searched some of these resources. Indeed its reference to emails seems to show that it has. Note that where “there is a failure to make a sufficient search, the court will "usually" make such order as is necessary to ensure that the obligations on the respondent are properly complied with” (Digicel v Cable & Wireless  EWHC 2522 at para 36 applying PD31 5.4)
· PD31A also makes specific comments about “deleted” documents: “In addition … the definition [CPR 21.4] covers those documents that are stored on servers and back-up systems and electronic documents that have been ‘deleted’.” This makes it clear that IPOff should have considered searching for deleted documents on some of those resources. In practice ‘deleted’ documents often still remain in place after deletion; they simply cannot be viewed using simple resources such as the application from which they have been deleted, or the file listing.
· There is also an obligation to search for copy documents where these might be materially different from those disclosed (CPR31.9) – these might for example be on a colleague’s computer, or smart phone. This rule means that it is not necessary to list every copy – eg where they do not differ in a respect which a party intends to rely upon or which may assist either party. However, clearly when the copy of the document which is disclosed has been deleted, any remaining copies which have not deleted should be disclosed.
· PD31B 20 to 23 make clear what the scope of a reasonable search for electronic documents is. It should take into account the overriding objective, including dealing with a case in a manner which is proportionate (PD31B 20). Where specific disclosure is sought of documents which are not “reasonably accessible” you must demonstrate that the relevance and materiality justify the cost and burden of retrieving and producing the document(s). Thus ‘deleted’ documents, unless they are readily accessible from an archive copy, may require us to show that production is justified.
· Note that under the Practice Direction on Disclosure of Electronic Documents (PD31B 8), the parties are urged to discuss electronic disclosure before the Case Management Conference. [There is an extensive discussion of electronic disclosure, emails and back-ups, and failure to agree the extent of search in Digicel v Cable & Wireless  EWHC 2522 (see para 33 onwards]. This must be even more relevant in the PCC where the objective of the procedure is slim-line. But it is not clear that discussion would have been realistic here, where IPOff was disputing giving any disclosure but it is pretty clear that they should have raised it as soon as they knew that disclosure was required. PD31B 9 specifically says that where a party plunges in without discussion the court may require it to do it all again.It might be a chance to show you superior knowledge of the electronic disclosure rules!
Secondly, IPOff has not listed any previous drafts of the drawings, although the minute refers to the 5th draft being sent to it. Clearly earlier drafts exist and it seems probable that IPOff was sent copies of them, and should have listed them whether or not it still has the copies.
IPOff should also have considered documents in the possession of Fishy Designs. CPR 31.8 covers not just documents in a party’s possession, but also those which a party is entitled to, or of which it is entitled to obtain copies (see the White Book, para 31.8.2, 31.8.3 for a further explanation of possession and control, and for example Langbar International v Rybak  EWHC 3255 para 47 (only need to establish prima facie case for control)). It seems quite possible that Fishy Designs have some documents which belong to IPOff. This should cover both the emails and, if IPOff deny having previous drafts of the drawings, those previous drafts.”
[This is rather a bold statement. Only some documents belonging to subcontractors will be ones which the principal is entitled to or to make copies of. This will be subject to the terms of engagement with the contractor. Secondly, the common position for a person providing services, is that material created for the principal, belong to the principal. That means that original drawings may well belong to IPOff. This is a good reason for making sure that the client is aware of looking for documents their subcontractors have generated. However Fishy Designs’ copy of letters sent by IPOff belong to Fishy Designs, and Fishy Designs’ copies of letters sent by them to IPOff also belong to Fishy Designs. The same would seem to apply to emails – so it is far from clear that Cautious could insist on disclosure of these. However, Langbar v Rybak ( EWHC 3255 para 47) notes the difficulty that the other party will have in knowing what is in the principal’s control, and provides that only a prima facie case for control need be established – go for it.]
One further possibility that Cautious might consider is to approach Fishy Designs for its side of the story. There is no property in witnesses and, unless they are employed by the other party, no ethical reason for not approaching them. There may of course be some practical reasons, so tread with care".