Evalve Inc & Ors v Edwards Lifesciences Ltd

Admission to a confidentiality club requires a fact-sensitive balance between the risk of prejudice from disclosure and the prejudice caused by restricting access. The court should permit as full a degree of disclosure as is consistent with adequate protection of confidential information. Relevant considerations include the nature of the secret, the parties’ positions, the extent of disclosure, the genuine need of the proposed recipient, and the risk of deliberate or inadvertent disclosure. A very small risk of inadvertent disclosure may be outweighed by the impairment of a legal team’s ability to conduct litigation effectively. Conditions, including undertakings against collateral use in related proceedings, may appropriately protect the confidential information.

The claim concerned alleged infringement of patents relating to devices for the percutaneous treatment of mitral regurgitation. The immediate applications concerned the composition of an agreed confidentiality club for information relating to Edwards’ planned UK launch of its PASCAL device.

Edwards opposed the admission of two additional Abbott in-house lawyers, principally on grounds of inadvertent disclosure and possible collateral use of the information in United States proceedings. Abbott contended that both lawyers were needed for the effective functioning of its litigation and intellectual property teams. The central issue was whether their admission should be permitted and, if so, on what protective terms.

1. Applications granted in substance. Edwards’ three proposed in-house lawyers had been admitted by consent. Abbott’s application to admit Mr Yasger and Mr Devore was granted, subject to appropriate confidentiality undertakings and the resolution of the collateral-use undertaking.
2. The governing approach, summarised from Roussel Uclaf v ICI [1990] RPC 45 at 54, is fact-sensitive. The court must decide how justice can be achieved by balancing the applicant’s need for disclosure against the risk that confidential information will leak to, or be used by, competitors. The court should allow as full a degree of disclosure as is consistent with adequate protection of the secret.
3. Abbott established a prima facie case for admission. Its evidence showed that the proposed recipients occupied important complementary roles in the litigation and intellectual property teams, and that excluding all in-house intellectual property lawyers impaired the effective conduct of the litigation.
4. The risk of inadvertent disclosure was assessed as vanishingly small. The proposed recipients were lawyers who understood their confidentiality obligations, and any breach would have serious consequences. The increased number of authorised lawyers did not necessarily increase the risk and could reduce it where unequal access would impair the functioning of the same legal team.
5. The court also addressed collateral use. Abbott was required to give an undertaking preventing use of the access granted in the United Kingdom to obtain an advantage in the United States proceedings. Abbott was given the opportunity to elect whether to provide the further undertaking sought concerning challenges to Edwards’ confidentiality designations; if it did not, the two lawyers would not be admitted.

Not stated in the judgment.