Varian Medical Systems AG v Elekta Ltd & Anor

A product and process description in patent proceedings addresses the nature and characteristics of the product or process, and whether it falls within the patent claims. It does not ordinarily relieve a defendant from disclosing documents relevant to the separate factual question of whether acts of infringement, such as offers to dispose of a product, have occurred. The court may require disclosure of communications with customers or potential customers where that issue is pleaded and materially in dispute. Publicly available documents need not be ordered again. Costs may reflect partial success and cooperative case management.

The claimant alleged that the defendants had infringed and threatened to infringe patent claims relating to magnetic-resonance-guided radiotherapy machines. It sought disclosure concerning public statements about the defendants’ products and communications with customers or potential customers. The defendants relied on a product and process description and argued that the relevant acts were not in issue.

The court held that the pleaded case included offers to dispose of a product falling within the claims. The application concerned whether disclosure relating to those acts was required notwithstanding the product and process description.

1. Disclosure issue. The claimant was required first to provide further particulars of the public statements relied on in support of its allegation concerning offers to dispose of a product.
2. Scope of a product and process description. Under CPR Part 63 and practice direction 63PD6.1, a product and process description concerns the nature and characteristics of the product or process in issue and whether it falls within the claims. It does not determine whether particular acts have been carried out.
3. Effect on disclosure. Service of a product and process description did not relieve the defendants of their separate obligation to disclose documents relating to acts of infringement. The court therefore refused disclosure of category (d), because the documents were already publicly available, but ordered disclosure of category (e), relating to communications with customers or potential customers about product development.
4. Costs. The claimant had achieved substantial but incomplete success, while the defendants had cooperated pragmatically. The defendants were ordered to pay half of the claimant’s assessed costs of the application. The costs were summarily assessed at £66,000, so £33,000 was payable.