MMI Research Ltd v Cellxion Ltd & Ors

Fresh evidence admitted on appeal must be confined to the issues and documents identified in the remission order. A pleading concerning prior publication must identify the relevant document and its alleged date and means of publication with sufficient precision. Evidence of provenance and authentication must be cogent where the document’s authenticity is central. Contractual restrictions on manuals, technical information and software may prevent prior publication, including disclosure to third parties, while permitting resale subject to equivalent obligations. A court should not infer the date or terms of publication from speculation about software versions or document contents.

The claimant owned, with the fifth defendant, a patent for technology used in a GSM test system. In the original action the patent was held valid and infringed. The defendants’ attacks based on prior sales and manuals failed.

The Court of Appeal admitted fresh evidence and remitted tightly defined issues concerning alleged supplies of manuals and a floppy disk to the Italian Carabinieri and German Federal Criminal Police, together with reconsideration of Australian sales on the existing evidence. The central questions were whether the identified material had been supplied or published before the patent’s priority date and whether it was supplied free of confidentiality obligations.

The defendants’ case based on the new material failed.

1. Pleading. The amended pleading was construed purposively but with the precision required by the Court of Appeal’s order. The allegation concerning the sale to the Italian Carabinieri referred to the manual and disk supplied with the identified machine. The separate allegation concerning the Carabinieri officer could potentially concern a different manual. A broader construction would have left the alleged document, date and means of publication unidentified and would not have complied with Civil Procedure Rules 1998, Part 63 Practice Direction, paragraphs 11.3(1) and 11.4(1). Amendment was refused because the disclosure point did not amount to exceptional circumstances.
2. Evidence of publication. The Italian Manual post-dated the priority date. The English File was an incoherent assembly containing later material and could not have been supplied in that form with the machine. The floppy disk was created after delivery and there was no reliable evidence of when, or whether, it was supplied. The court rejected inferences based on software versions, the IDET feature and the machine’s LAC button. The provenance and authentication evidence was inadequate, particularly because of contradictory accounts, missing witnesses and the failure to explain the document’s composition.
3. Confidentiality. The General Conditions were incorporated into the contract. Properly construed, they restricted copying, disclosure and use of the manuals, technical information and software, subject only to a sale accompanied by equivalent obligations. They therefore prevented the relevant information from being freely available in law and equity. The Italian public-law argument, based on Law No 241/1990, did not establish a restriction on the State’s ability to disclose information, but the contractual restrictions were sufficient.
4. The alleged German supply was wholly unspecified and unsupported by adequate evidence. The court was not persuaded to alter its previous conclusion concerning Australia. The remitted invalidity pleas were therefore not established.

The original patent judgment was followed by an application for permission to appeal. The Court of Appeal admitted fresh evidence and remitted tightly defined issues to the Patents Court for determination. This judgment decided those remitted issues.