Nokia Corp v Interdigital Technology Corp

Where confidential documents may materially affect an application to strike out or for summary judgment, the court may order their disclosure even though contractual confidentiality and arbitration issues remain unresolved.

The court should accommodate a pending arbitration concerning the documents’ use. It may stay the application to deploy the documents, and any related strike-out application, until the arbitrators have ruled, while allowing the underlying action to continue.

Confidential material disclosed to the court may be protected by appropriate orders, including restrictions under CPR 31.22 and private hearings.

Nokia sought to use two documents, exhibited as JMM5 and JMM6, in proceedings concerning whether InterDigital’s patents were essential to specified mobile-telephone standards. InterDigital contended that the documents were confidential under the parties’ Master Agreement and invoked its arbitration clause.

InterDigital also sought to prevent disclosure through proceedings in the United States District Court. The issue before the Patents Court was whether the documents should be disclosed for use on forthcoming strike-out and summary-judgment applications, and how the English proceedings should be managed pending arbitration.

1. The documents were potentially relevant to the forthcoming applications. Evidence about how declarations of patent essentiality were used in licensing negotiations could affect whether Nokia’s claim disclosed a viable issue and whether it had a real prospect of success. The court therefore considered disclosure appropriate in the interests of justice.

2. The court had not inspected the documents, but was entitled to act on the available evidence that they contained relevant material. The disclosure order could be made even if the documents were not already exhibits to a witness statement.

3. The arbitration clause had been invoked and the arbitrators had to determine whether the proposed use of the documents was permitted by the confidentiality provisions, including the provision concerning disclosure required by a court order. The English court therefore had to accommodate the arbitration.

4. Because it was not yet known whether the documents could be deployed, it would be unfair to allow the strike-out application to proceed without them. The application to strike out was stayed pending the arbitrators’ decision. The application to deploy the documents was likewise stayed.

5. The underlying action itself was not stayed. The court ordered disclosure, referred the contractual issue to the arbitrators, and preserved confidentiality. If the documents were deployed, protective measures could include an order under CPR 31.22 and a hearing in camera.