Generics (UK) Ltd v Yeda Research & Development Co Ltd & Anor

A barring injunction protecting confidential information requires a real risk of disclosure or misuse. A merely fanciful, theoretical or subconscious possibility is insufficient. The court must assess the information’s nature, relevance and the evidence as a whole.

The court differed on the wider legal route. Sir Robin Jacob held that the Bolkiah principles apply equally to former employed litigators. Etherton LJ considered employment principles, contractual limits and freedom to work decisive, with barring relief exceptional absent a restrictive covenant. Those differences did not affect the result because no real risk was established. Appeal allowed.

Generics, trading as Mylan, sought revocation of and a declaration of non-infringement concerning Yeda’s patent, exclusively licensed to Teva. Mylan’s Director of Intellectual Property had previously worked for Teva as an in-house patent attorney and became responsible for Mylan’s Copaxone litigation.

After Mylan sought access to confidential documents, Yeda and Teva sought an injunction preventing the patent attorney from assisting with the proceedings. Floyd J applied the principles in Prince Jefri Bolkiah v KPMG and granted the injunction in [2011] EWHC 3200 (Pat). The appeal concerned both the applicability of those principles to a former employed patent attorney and whether the alleged information created a real risk of disclosure or misuse.

Disposition. The appeal was allowed. The injunction restraining Mylan’s Director of Intellectual Property from assisting with the litigation was discharged. Its operation had meanwhile been suspended pending the appeal.

1. The common basis for the result was that the alleged information was peripheral and the evidence did not establish a real risk of disclosure or misuse. A suspicion that information might unconsciously influence litigation strategy fell short of the required threshold. The relevant standard was a real risk, not a fanciful or theoretical possibility: Prince Jefri Bolkiah v KPMG [1999] 2 AC 222.
2. Sir Robin Jacob held that the Bolkiah principles apply equally to a former employed patent attorney conducting litigation. Once confidential information relevant to an adverse matter is established, the evidential burden shifts to the former litigator to show that acting will not create a real risk. He considered that an in-house patent attorney performs the same litigation work as an in-house solicitor. Privilege under the Copyright, Designs and Patents Act 1988 reinforced that functional equivalence.
3. Etherton LJ disagreed with that wider analysis. He considered that Bolkiah rested on the fiduciary relationship arising from a private retainer and should not automatically govern employees. Employment is contractual, employees must be able to use their general skills and experience, and post-employment restraints should ordinarily be imposed by valid restrictive covenants. Under Faccenda Chicken Ltd v Fowler [1987] 1 Ch 117, continuing protection ordinarily concerns trade or business secrets. A barring order against an employee without a restrictive covenant would be exceptional. On any view, the evidence did not establish the necessary risk.
4. Ward LJ agreed with the outcome and with the conclusion that there was no real risk. He accepted that patent attorneys and solicitors should be treated alike for the relevant professional work, but expressed tentative support for Etherton LJ’s concerns about restraint of employment and did not decide the wider issue.

• Court of Appeal (Civil Division) allowed the appeal and discharged the injunction.
• High Court of Justice, Chancery Division Floyd J granted an injunction restraining Mylan’s Director of Intellectual Property from assisting with the proceedings in [2011] EWHC 3200 (Pat).