Smithkline Beecham Plc v Generics (UK) Ltd.

A reference to a document in a party’s witness statement is a statement that the document exists. It is therefore disclosure within CPR 31.2, even if the document was obtained from a third party or referred to in an expert’s report. CPR 31.22(2) may consequently restrict its later use.

Whether confidentiality should continue, or be relaxed for related proceedings, requires a fact-sensitive balance between open justice, the interests of the party seeking to use the document, and the interests of its owner. The interests of justice are paramount. Potential availability by third-party disclosure, effective confidentiality safeguards, and the risk that a judge’s prior knowledge may undermine confidence in the process are material considerations.

SmithKline Beecham plc held a patent for a process for producing paroxetine hydrochloride anhydrate. In patent litigation brought by BASF AG and Generics (UK) Ltd, confidential experimental documents originating with associates of Generics were disclosed or supplied after references to them in an expert report.

Pumfrey J initially permitted SmithKline Beecham to use the documents in the BASF proceedings subject to confidentiality. He later continued a CPR 31.22(2) restriction indefinitely and refused permission for their use in separate infringement proceedings against Apotex Ltd.

There were two appeals. The first concerned the court’s power to restrict use of the documents. The second concerned whether the restriction should be varied to permit their confidential use in the Apotex proceedings.

1. The first appeal was dismissed and the second appeal was allowed. Lord Justice Aldous gave the reasons. Lord Justice Chadwick and Lord Justice Latham agreed.

2. Under CPR 31.2, disclosure occurs when a party states that a document exists or has existed. A reference to a document in a witness statement is such a statement. The rule draws no distinction based on the way in which the document was obtained. Documents referred to in an expert report, and documents obtained from a third party, could therefore be documents disclosed for CPR 31.22(2).

3. The judge was entitled to consider the first application under CPR 31.22(2) and to apply the guidance in Lilly Icos v Pfizer. The documents had the quality of confidence, originated with third parties, and had at most peripheral relevance to explaining the earlier judgment. The judge had properly balanced the interests of public justice, the third parties and the parties to the litigation. The indefinite restriction was therefore upheld.

4. A continuing CPR 31.22(2) order could nevertheless be varied for the Apotex proceedings. The decisive consideration was the interests of justice, assessed on the particular facts. A material consideration was that the documents might satisfy the criteria for third-party disclosure under CPR 31.17(3). They could provide some support for SmithKline Beecham’s case, and confidentiality measures could protect their owners.

5. The same judge had already considered the documents in the BASF proceedings and was hearing the Apotex proceedings. Requiring him to put them from his mind could create a real appearance of unfairness if he decided for SmithKline Beecham. Confidence in the administration of justice required that the documents be available for controlled deployment. Their use was accordingly permitted on confidentiality terms equivalent to those used in the BASF proceedings.

• Court of Appeal (Civil Division): The first appeal against the continuation of the CPR 31.22(2) restriction was dismissed. The second appeal, concerning use of the documents in the Apotex proceedings, was allowed subject to confidentiality protection ([2003] EWCA Civ 1109).
• Chancery Division: Pumfrey J continued the restriction on 27 June 2003 and, on 30 June 2003, refused permission to use the documents in the Apotex proceedings.