American Home Products Corporation & Anor v Novartis Pharmaceuticals UK Ltd & Anor

Non-party disclosure under section 34 of the Supreme Court Act 1981 and CPR 31.17 may be ordered where the documents are relevant, are likely to support the applicant’s case or adversely affect another party’s case, and disclosure is necessary for fair disposal or to save costs. A relevant class may be specified even though some individual documents, viewed separately, prove immaterial. Context may make the class relevant as a whole.

The power should further the proper administration of justice. Relevant evidence should ordinarily be available to the trial court, subject to proportionate limits and exceptional grounds for exclusion. Court of Appeal confidentiality orders require compelling commercial or other reasons.

In continuing patent proceedings, Novartis challenged the novelty and obviousness of a patent claiming the use of rapamycin to inhibit transplant rejection. It sought non-party disclosure from Fisons Ltd of patent-department files concerning a collaboration with Fujisawa over the structurally related immunosuppressant FK-506.

Laddie J refused the application on 18 December 2000. He considered that section 34 of the Supreme Court Act 1981 and CPR 31.17 did not permit an order encompassing irrelevant documents. He also held that disclosure was unnecessary for fair disposal or saving costs and that the material had no relevance to novelty.

The central issues were whether the files constituted a relevant class, whether disclosure satisfied CPR 31.17, and whether the judge had exercised his discretion correctly.

1. Appeal allowed unanimously. Aldous LJ delivered the judgment, with which Robert Walker LJ and Sir Anthony Evans agreed. Section 34 of the Supreme Court Act 1981 confines non-party disclosure to documents relevant to an issue. CPR 31.17 further requires that the documents are likely to support the applicant’s case or adversely affect another party’s case, and that disclosure is necessary for fair disposal or saving costs.
2. The Fisons–Fujisawa collaboration files were relevant to obviousness. Evidence that the collaborators appreciated the structural similarity between FK-506 and rapamycin and expected similar properties could support expert evidence that trying rapamycin was obvious. It could also answer an allegation that the expert’s reasoning depended on hindsight. The fact that some individual documents might prove immaterial did not prevent the files from constituting a relevant class. Their context could be necessary to assess the weight and meaning of particular documents.
3. The class nevertheless required a temporal limit. Documents created long after the patent’s June 1989 priority date could not bear on what was then obvious to the skilled person. By analogy with the standard disclosure period in patent actions, the order was limited to documents created before 6 June 1991.
4. The documents were also relevant to novelty. Whether the October 1987 letter disclosed information in confidence was best determined in its surrounding context. The files might show whether that letter was connected with the Fisons–Fujisawa collaboration and illuminate the circumstances in which the communication occurred.
5. The judge’s discretionary refusal was erroneous. Following O’Sullivan v Herdmans Ltd [1987] 1 WLR 1047, the statutory power should be exercised to further the proper administration of justice and the objectives of the CPR. Fisons did not object, the documents had already been assembled and inspected, compliance costs were small, and the application was not a fishing expedition. Relevant evidence should not be withheld from the trial court merely because it may lengthen the trial, save in exceptional circumstances.
6. Fisons was ordered to disclose within 21 days the pre-6 June 1991 documents in the identified box relating to its collaboration with Fujisawa. A confidentiality order was refused generally because Court of Appeal proceedings are conducted in open court and no compelling justification existed. With Novartis’s consent, protection was confined to two specified exhibits.

• Court of Appeal (Civil Division): The appeal was allowed unanimously. The court ordered limited non-party disclosure of the identified collaboration documents and confined confidentiality protection to two exhibits.
• Chancery Division: Laddie J refused Novartis’s application on 18 December 2000 for non-party disclosure under section 34 of the Supreme Court Act 1981 and CPR 31.17. No citation for that decision is stated.
• Earlier patent proceedings: Laddie J had determined infringement and insufficiency in a decision reported at (2000) RPC 547. The Court of Appeal subsequently held on 27 July 2000, in an unreported decision, that the relevant derivative did not infringe and that the insufficiency challenge consequently failed.