Dendron GmbH & Ors v Regents of the University of California & Anor

Evidence obtained compulsorily in civil proceedings is subject to an implied restriction against collateral use unless the court permits it or the witness consents. The restriction applies equally to documents, inspections and evidence obtained by deposition. CPR 34 does not provide a complete code removing that restriction for compelled evidence.

Permission depends on the interests of justice and the circumstances of the particular case. Relevant considerations include the purpose and likely utility of the proposed use, any confidentiality or privacy interests, the neutrality of the witness, and whether the material could be obtained through the procedures of the foreign court or tribunal. Permission was granted for use of independent witnesses’ evidence in related German and Dutch proceedings, but refused for use of English disclosure in those proceedings.

Dendron sought revocation of a patent concerning apparatus for delivering detachable coils used in the treatment of aneurysms. The University and Boston Scientific counterclaimed for infringement. The applications concerned the collateral use in foreign proceedings and before the European Patent Office of evidence obtained through letters of request, and of documents disclosed in the English proceedings.

The court had to determine whether such material was automatically restricted, whether the restriction survived the introduction of the CPR, and whether permission should be granted for the proposed uses.

1. Compulsory evidence. Evidence obtained under letters of request is subject to an implied obligation not to use it for collateral purposes without the court’s permission or the witness’s consent. The same principle applies to disclosure, inspection and compelled depositions because each is a means of obtaining information by compulsion for use in the pending proceedings (paras 24–30).
2. Effect of the CPR. CPR 31 codifies restrictions concerning disclosure and inspection, but CPR 34 was not shown to be a definitive code governing collateral use of compelled evidence. The implied restriction therefore remained applicable. Evidence taken under a letter of request was not equivalent to evidence given at trial until the court determined how it should be treated (paras 31–34).
3. Regulation 1206/2001. The Council Regulation (EC) 1206/2001 has a limited purpose concerning cooperation between Member State courts in taking evidence for civil or commercial judicial proceedings. Use outside that purpose is prohibited unless permitted by the requesting court or by the person or parties from whom the evidence was obtained. The requested court was entitled to follow its own procedure in taking evidence in private (paras 20–24, 35–36).
4. Discretion. Permission to lift the restriction is governed by the interests of justice and the individual facts. The court should consider the interests of the applicant and the person protected by the restriction, whether the proposed use serves a real purpose, whether the foreign court will receive and use the material, confidentiality and privacy, the source and neutrality of the evidence, and whether the material could be obtained directly through the foreign court’s procedures (paras 39–42, 45–51).
5. Professor Schumacher’s and Professor Horton’s evidence could be used in the German and Dutch proceedings. The evidence could not usefully be deployed before the EPO Technical Board of Appeal, and permission for that purpose was refused (paras 43–47).
6. Permission to release the Defendants’ English disclosure for use in the German and Dutch proceedings was refused. The material could be sought through the procedures of the relevant foreign courts, and no special circumstances justified lifting the restriction (paras 48–51).