Thursday, 21 June 2012

Inspection of redacted documents in patent trials

Don't ask for a copy of this extempore judgment, since it's not on BAILII and you'd need to be a Lawtel subscriber to read the Marten Walsh Cherer computer-aided transcript, but Danisco A/S v Novozymes A/S [2012] EWHC 1641 (Pat) is an interesting little Patents Court, England and Wales, judgment from Mr Justice Arnold (yes, he can produce short judgments too: this one covers just four sides). The topic is a delicate one: disclosure of documents and the inspection of redacted [i.e. censored] parts of them.

In short, Daniusco applied for specific disclosure and/or inspection of certain documents in the possession of Novozymes, this being in the course of Danisco's application to revoke a Novozymes patent, there being parallel proceedings in respect of the same patent before the European Patent Office (EPO). One of the documents, a May 2009 report, had been redacted for disclosure but Novozymes' solicitors let Danisco's solicitors inspect it.  Inspection of further redacted monthly reports was also sought. In Danisco's view was that disclosure of the document  was necessary in order to help it understand documents already disclosed; that the redacted parts of the May 2009 report should not have been redacted in the first place and that they were in any event relevant to the dispute; and that the redacted parts of the further monthly reports were relevant to Novozymes' evidence of its production capacity in 2004/5.

Arnold J allowed the application in part. In his opinion:

  • The document in question set out the statistical method which was referred to by a number of disclosed documents.  Danisco was not just speculatively fishing when seeking it, but it still had to be asked whether it was actually relevant to the dispute which was the subject of the litigation.
  • The document was actually necessary in order to understand the figures in another document that had already been disclosed -- though ultimately it might not possess any evidential weight.
  • Disclosure of that document would not place any substantial burden on Novozymes, nor was it unfair to ask Novozymes to disclose it with the EPO hearing being just two weeks away. In any event, Novozymes could have disclosed the document earlier and, regarding the EPO hearing, the EPO would not allow Novozymes to be prejudiced by this disclosure.
  •  As to the redacted parts of the May 2009 report, inspection would be ordered.  The report was sufficiently relevant to be able to support Danisco's case or undermine Novozymes'.  If this wasn't a patent trial, disclosure would have been ordered, the problem here only being that Danisco's application for inspection was made outside the four-year window for disclosure in patent cases. Again, no burden would be placed on Novozymes in complying with the inspection request.
  • Disclosure of the redacted parts of the further monthly reports would not be ordered: they post-dated the issues to which Danisco claimed they were relevant by one-and-a-half to two years.

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