Productivity-Quality Systems Inc v Cybermetrics Corporation & Anor

Under the Evidence (Proceedings in Other Jurisdictions) Act 1975, the court should give effect to a foreign letter of request as far as possible once the statutory jurisdictional requirements are met. The discretion is informed by judicial comity, but relief may be refused or qualified where compliance would be oppressive, disproportionate, irrelevant or speculative. A claim brought against the proposed witness in England does not, by itself, establish oppression. Confidentiality concerns concerning commercially sensitive documents may instead be addressed by undertakings or protective orders, and production may be stayed until suitable protection is arranged. On a without-notice application, material non-disclosure requires a fair and even-handed presentation, but the appropriate sanction may be costs rather than setting aside the order.

Productivity-Quality Systems Inc applied to give effect to a letter of request from the United States District Court for the Southern District of Ohio in proceedings concerning alleged copyright infringement and misuse of confidential information relating to statistical process-control software. An order required Jeffrey Aughton, a former employee and alleged competitor, to produce documents and attend oral examination.

Mr Aughton applied to set aside or stay the order, alternatively to transfer or vary it. He relied on oppression, pointlessness, material non-disclosure, confidentiality concerns and the burden of parallel United States and English proceedings. The central issues were whether the order should be withdrawn or limited and how the requested evidence and documents should be protected.

1. Jurisdiction and discretion. Sections 1 and 2 of the Evidence (Proceedings in Other Jurisdictions) Act 1975 authorised the order because the request came from the foreign court and concerned evidence for civil proceedings before it. Once those requirements were satisfied, the court had a discretion under section 2 to make appropriate orders, subject to section 2(3).
2. Oppression. The relevant approach was to balance the legitimate requirements of the foreign court against the burden imposed on the witness, following First American Corporation v Zayed [1999] 1 WLR 1154. A breach of confidence claim could in principle be used oppressively to harass competitors or former employees, as recognised in Ocular Sciences v Aspect Vision Care [1997] RPC 289. However, the court could not assume that the United States proceedings were illegitimate, and Mr Aughton’s evidence was central and relevant. The existence of related English proceedings did not itself make compliance oppressive. The examination topics were directed to the issues in the United States proceedings and were neither speculative nor a fishing exercise.
3. Notice and confidentiality. The preferable course was to contact a proposed witness before issuing an application and seek voluntary cooperation. An application without notice was appropriate only where there was reason to fear evasion or a failure to respond. The source-code concerns were valid and should be addressed through undertakings or protective orders. Production of documents was therefore stayed pending appropriate confidentiality arrangements in both jurisdictions.
4. Pointlessness. The court would not assume that production was pointless. If documents or source code were no longer in Mr Aughton’s possession, he could state that fact and explain what had happened to them. Expert comparison might still be possible.
5. Material non-disclosure. The governing touchstone on a without-notice application was fairness in all material respects, applying the guidance collected in Wild Brain Family International v Robson [2018] EWHC 3163 (Ch). The failure to exhibit or set out the order made by HHJ Barker QC was material non-disclosure, but it would not have affected the decision. The appropriate sanction was the costs of dealing with that issue, not setting aside the order.
6. The order of 16 July 2019 was not set aside but varied. Document production was stayed pending confidentiality arrangements, and the date of oral examination might require adjustment.

First-instance decision. The judgment records related proceedings in the Business and Property Court but does not state any appeal from this decision.