Positec Power Tools (Europe) Ltd & Ors v Husqvarna AB

There is no blanket rule requiring standard disclosure, or disclosure on obviousness, in patent proceedings. Under Civil Procedure Rules r31.5(7), the court must select the appropriate disclosure order by applying the overriding objective and limiting disclosure to what is necessary for a fair trial at proportionate cost. The principal considerations are the likely probative value of the documents and the cost of searching for and deploying them. Disclosure of an inventor’s documents may be justified where the patentee relies on the inventor, commercial success, reactions to the invention, or internal documents. In an ordinary obviousness case, however, such documents are generally of limited value because the inventor is not necessarily equivalent to the notional skilled person and their use may introduce hindsight or satellite disputes. Disclosure may be ordered later if the issues crystallise.

The claimants sought revocation of a patent concerning robotic lawnmowers and declarations of non-infringement. Obviousness was alleged over the prior international patent application WO 99/59042, known as Peless. At a case management conference, the court considered whether the defendant patentee should give validity disclosure concerning the making of the invention.

The parties relied on the modern disclosure regime under Civil Procedure Rules r31.5(7), and addressed the effect of Nichia v Argos and earlier authority on inventor’s documents. The central issue was whether disclosure on obviousness was justified on the facts and proportionate to the likely value of the material.

1. Applicable regime. Rule 31.5(7) provides six possible disclosure orders, including dispensing with disclosure, issue-based disclosure and standard disclosure. Standard disclosure is no longer the default. The court must select the appropriate order by applying the overriding objective and the need to limit disclosure to what is necessary to deal with the case justly and at proportionate cost.
2. Proportionality. The relevant assessment compares the likely probative value of the proposed material with the cost of searching for, reviewing and deploying it, considered in the context of the proceedings as a whole. Disclosure remains an important element of a fair trial, but fairness does not require material of marginal utility to be produced automatically.
3. Inventor’s documents. The generic reasons identified in SKM v Wagner Spraytech and discussed in Nichia v Argos did not justify disclosure here. The judge preferred Jacob LJ’s reasoning that cross-examination based on an inventor’s documents usually raises the uncertain question whether the inventor resembles the notional skilled person. Evidence of the inventor’s actual steps can also risk hindsight. Such disclosure may nevertheless be appropriate in particular cases, including where the patentee relies on the inventor, commercial success, reactions to the invention, or internal documents, or provides such documents to its expert.
4. Application. Husqvarna did not intend to rely on those matters. The proposed disclosure would cost approximately £90,000 overall, and its likely utility was uncertain. The alleged relevance of the inventor’s notes to the Peless obviousness case might never arise once the pleadings and expert evidence were complete. Focused disclosure could still be ordered later if the issues required it.
5. The court therefore refused an order for standard disclosure or issue-based disclosure on obviousness. Husqvarna was required to notify Positec promptly if it changed the way it advanced its obviousness case.