VISX Incorporated v NIDEX Co; Birmingham Optical Group Ltd; Optimax Laser Eye Clinics (a firm)

In a patent action, Order 104 rule 6 does not invariably require every particular of an invalidity objection before discovery. The court must decide whether the pleading identifies a genuine issue sufficiently to define the scope of relevant discovery, or is merely a fishing expedition. Where the omitted details are likely to be within the opponent’s knowledge, further particulars may generally be delayed until after discovery. Transcripts of depositions taken in the presence of both parties for use in foreign proceedings are not protected by litigation privilege merely because the proceedings were confidential or intended for litigation. Served answers to interrogatories are likewise not privileged. Confidentiality and privilege are distinct concepts.

VISX Incorporated sued NIDEX Co, Birmingham Optical Group Ltd and Optimax Laser Eye Clinics for infringement of European patents concerning ophthalmological surgery. The first defendants sought to amend their patent invalidity particulars by adding alleged prior disclosures derived from United States interference proceedings.

Laddie J refused the amendments on the view that the pleadings had to be fully particularised before discovery. In a separate judgment, he held that depositions and answers to interrogatories from the United States proceedings were not privileged, or that privilege had been waived. The Court of Appeal considered the amendment of the invalidity particulars and the availability of litigation privilege.

1. First appeal allowed in part. The authorities did not establish an inflexible rule that all particulars required by Order 104 rule 6 must be supplied before discovery. Avery Ltd v Ashworth, Son & Co Ltd concerned an allegation which did not itself raise a proper invalidity issue. It did not decide that further particulars could never be postponed.
2. The court has a discretion whether to permit an insufficiently particularised amendment. The question is one of degree. A genuine allegation which identifies the alleged disclosure, the person involved and sufficient surrounding detail may be allowed where the missing information is likely to be within the opponent’s knowledge. Further particularisation may then follow discovery. An amendment intended merely to obtain documents in the hope of discovering a case should be refused.
3. The proposed amendments generally identified genuine alleged disclosures and were allowed. Allegations (p) and (q), which supplied only a date or cut-off period without identifying the place or substance of the disclosure, were fishing allegations and were refused.
4. Second appeal dismissed. Litigation privilege is an exception to the general rule favouring disclosure and must be confined according to its public-interest justification. The depositions were evidence taken in the presence of both parties and intended to be available to both sides as records of that evidence. They were not confidential communications between client and lawyer, nor confidential preparatory materials reflecting legal advice. Their foreign origin and the protective arrangements in the United States did not create privilege under English law.
5. Served answers to interrogatories were not privileged. Draft answers could be privileged, but the served answers were produced by court order to provide relevant information to the opposing party. They were not confidential communications or litigation-preparation documents. The question of waiver therefore did not arise.
6. The orders were: first appeal allowed, excluding amendments (p) and (q); second appeal dismissed; costs of both appeals awarded to the first defendants.

• Court of Appeal (Civil Division) [1998] EWCA Civ 855: allowed the appeal against the judgment refusing amendment of the invalidity particulars, except as to allegations (p) and (q); dismissed the appeal concerning privilege.
• Chancery Division (Patents Court): Laddie J refused the amendments on 27 January 1998 and rejected the privilege claim on 10 March 1998.