Nichia Corp v Argos Ltd

Standard disclosure in a patent action involving obviousness must be determined under the ordinary Civil Procedure Rules. There is no presumptive rule dispensing with disclosure merely because commercial success or long-felt need is not pleaded.

The court must tailor disclosure to the particular case. It should consider proportionality, the likely significance of the documents and the expense of a reasonable search. Contemporary evidence concerning the parties’ activities may assist in testing primary expert evidence, although it remains secondary evidence and must be kept firmly in its place.

Nichia Corporation alleged that Christmas lights sold by Argos Limited infringed two patents concerning white light-emitting diodes. Argos denied infringement and challenged both patents for obviousness.

At a case management conference, Pumfrey J refused Nichia’s proposed disclosure of documents concerning the making of the inventions and experiments undertaken to prove infringement: [2007] EWHC 545 (Pat). Argos appealed.

The principal issue was whether proportionality normally justified dispensing with disclosure about an inventor’s work in a straightforward obviousness case. A further issue concerned disclosure of experimental material bearing upon the reliability of experiments relied upon to prove infringement.

1. Appeal allowed by a majority. Pill and Rix LJJ held that the judge had dispensed with disclosure as a matter of principle without sufficiently considering the needs of the particular case. The proper course was to apply the standard disclosure regime rigorously and tailor any order through case management.

2. Standard disclosure requires disclosure of documents which adversely affect the disclosing party’s case or support another party’s case. The scope of the reasonable search depends upon such matters as the number of documents, the complexity of the proceedings, retrieval expense and the likely significance of the documents. Proportionality may justify severely limiting disclosure, or refusing it altogether, but it does not justify a blanket prima facie rule based upon the type of litigation.

3. Documents concerning contemporary research may assist in testing expert evidence on obviousness. Such material remains secondary to the primary expert evidence and must be kept firmly in its place, consistently with Mölnlycke v Procter & Gamble [1994] RPC 49. The parties and court may limit a search temporally or by reference to particular categories of documents. Translation need not precede the identification of documents requiring disclosure.

4. Pill LJ explained that SKM v Wagner Spraytech [1982] RPC 497 remained capable of assisting the disclosure analysis. Oliver LJ’s reference to the inventor as a skilled man was ambiguous, but the underlying reason was sound if understood as referring to the inventor and applied within the modern standard disclosure regime.

5. Jacob LJ dissented on the principal issue. He considered that inventor evidence was merely secondary and that, in a straightforward obviousness case, proportionality normally required that disclosure of the inventor’s records should not be ordered except in the largest cases. He would have upheld the judge’s refusal.

6. As to experimental work, the parties agreed that Nichia would check for material bearing upon the reliability of the experiments on which it relied. Such material fell within standard disclosure because it might adversely affect Nichia’s case. There was to be standard disclosure, but no more, of other experimental work.

• Court of Appeal (Civil Division): By a majority, allowed Argos’s appeal on the narrow ground that disclosure had been dispensed with as a matter of principle rather than determined through case-specific application of standard disclosure and proportionality: [2007] EWCA Civ 741.
• High Court, Patents Court: Pumfrey J refused disclosure concerning the making of the inventions and experiments relied upon to prove infringement: [2007] EWHC 545 (Pat).