Illumina, Inc. & Anor v TDL Genetics Ltd & Ors

A confidentiality club established by consent to govern confidential material in patent proceedings ordinarily applies to all material falling within its terms. A party seeking different restrictions must apply to vary the order under CPR 3.1(7).

Variation is subject to the principles in Tibbles v SIG plc [2012] 1 WLR 2591. The later appreciation that anticipated disclosure is particularly sensitive will not normally amount to a material or exceptional change of circumstances. Restrictions on in-house lawyers or experts participating in related foreign proceedings require a real and serious risk of misuse or leakage. An abstract assertion of subconscious leakage is insufficient.

The claimants brought patent infringement proceedings concerning a prenatal genetic test. An earlier consent order established a confidentiality club comprising external lawyers, counsel, specified in-house lawyers and approved experts.

The defendants sought to provide parts of a Product and Process Description under narrower conditions. They proposed limiting access to one in-house lawyer and requiring recipients, including the proposed expert, not to participate in related foreign proceedings. The claimants sought confirmation that the existing regime applied and that the restrictions should not be imposed.

The issues were whether the consent order required variation, whether variation was justified, whether access should be limited, and whether consent to the expert’s admission had been unreasonably withheld.

1. The court held that the consent order established a regime covering all documents designated as confidential in the proceedings. The defendants’ Product and Process Description therefore fell within that regime. Any attempt to impose different restrictions required an application to vary the order under CPR 3.1(7) (paras [14]–[20]).

2. Under Tibbles v SIG plc [2012] 1 WLR 2591, the power to vary an order is principled and is normally exercised only where there has been a material change of circumstances, a material misstatement, or circumstances sufficiently out of the ordinary. The defendants had anticipated the need to disclose a Product and Process Description and should have proposed any special regime when the consent order was made. The later appreciation of the sensitivity of the information did not justify variation (paras [20]–[28]).

3. The court declined to limit disclosure to one in-house lawyer or to require the three named recipients to give undertakings excluding them from related foreign proceedings. The defendants disclaimed deliberate misuse and identified no concrete mechanism by which subconscious leakage would occur. Such an abstract risk did not outweigh the claimants’ justified need to obtain instructions and strategic advice from appropriate representatives. A real and serious danger would be required before imposing the proposed restraint (paras [38]–[49]).

4. The same reasoning applied to the proposed expert. The defendants had unreasonably withheld consent to Professor Lovett’s admission to the confidentiality club. If future foreign proceedings created a genuine difficulty, he could answer on the basis of material properly available there, explain the position, or decline or recuse himself where appropriate. No general prohibition was necessary (paras [50]–[54]).

The defendants’ proposed restrictions were refused, and Professor Lovett was admitted without the additional foreign-proceedings restriction.