Halliburton Energy Services Inc v Smith International (North Sea) Ltd

In complex patent proceedings, the court may control disclosure by requiring each party to identify a limited number of products that exemplify its infringement or non-infringement case. Where a party has sufficient information to make that selection, it should comply with the case-management order rather than obtain unrestricted disclosure concerning every potentially relevant product. The court may enforce the timetable where delay threatens the preparation of the action for trial.

Halliburton and Smith were litigating patent infringement and revocation issues concerning two patents and related drill bits. Earlier orders had transferred the proceedings to the High Court and directed Smith to provide a list of imported bits, after which each party was to select four bits exemplifying its case. Smith supplied a list, later supplemented by 17 further bits. Halliburton did not select its four bits and instead sought extensive further disclosure concerning every listed bit, its design and its designers.

Smith applied for an order requiring Halliburton to make the selection promptly. Halliburton cross-applied for full disclosure before making its selection. The central issue was whether Halliburton should comply with the existing case-management order or obtain the wider disclosure it sought.

1. Application granted. Halliburton was required to comply with the order made by Pumfrey J and nominate the four drill bits on which it relied within the time directed by the court.
2. The court had already adopted a proportionate disclosure regime requiring each party to select four representative drill bits. That order was intended to prevent disclosure from becoming uncontrolled in a technically complex patent action. Halliburton’s proposed order would effectively restore the position before the earlier case-management decision and require full disclosure for every imported bit.
3. Halliburton had adequate information to make its selection. Its United States proceedings had involved specialist patent counsel, the same expert was being used in the English proceedings, and extensive disclosure had already been given there. The court found no sufficient difficulty preventing compliance with the existing order.
4. The accidental omission of 17 further bits from the original list did not justify the wider disclosure sought. The court accepted that Smith had not deliberately withheld them.
5. Inspection was ordered to take place between 15 and 19 November, dates which Halliburton had indicated its relevant personnel could meet. The court treated compliance with the existing timetable as necessary to protect the forthcoming trial date.