Oneplus Technology (Shenzhen) Co., Ltd & Ors v Mitsubishi Electric Corporation & Anor

In intellectual property litigation, restrictions on access to highly confidential material must give the receiving party the fullest appropriate disclosure while protecting commercial secrets. An external-eyes-only tier is exceptional, but it may be justified initially where disclosure to party employees would create a serious risk of irreversible misuse or leakage. A staged process, in which independent lawyers and experts filter documents before material documents are disclosed more widely on suitable terms, is lawful. The disclosing party retains the burden of justifying the restriction. Wholesale re-designation is inappropriate where documents vary in relevance and sensitivity.

The respondents sued the appellants, which implement 3G and 4G telecommunications standards, for infringement of standard-essential patents. If infringement and validity were established, the court would later determine fair, reasonable and non-discriminatory licensing terms. The parties disputed access to commercially sensitive licences and patent assignments disclosed for that purpose.

Under a three-tier confidentiality regime, the Patents Court re-designated six documents from attorney’s-eyes-only to highly confidential material, but refused a wholesale re-designation sought by Xiaomi and declined to admit Oppo’s proposed licensing personnel to the highly confidential club. The appellants appealed the order of Sir Alastair Norris, [2020] EWHC 2641 (Pat).

The central issue was whether the restrictions on access to the confidential material unfairly impaired the appellants’ ability to prepare and present their FRAND cases.

1. The Oppo appeal was dismissed and Xiaomi’s appeal was allowed only to a limited extent. Floyd LJ’s reasoning was agreed by Males and Lewis LJJ.

2. The governing exercise required the court to balance the receiving party’s need for the fullest appropriate disclosure against protection of the disclosing party’s and third parties’ confidential commercial information. The court must assess the nature of the information, the risk and practicability of policing misuse, the proposed recipient’s role, the receiving party’s structure, and the likely role of the documents in the litigation. The exceptional character of external-eyes-only access does not make staged disclosure unlawful. The disclosing party must retain the burden of justifying that designation.

3. The judge had applied that approach correctly to Xiaomi’s request for wholesale re-designation. The documents were highly commercially sensitive, some were likely to be peripheral, and independent lawyers and experts could identify documents that genuinely required wider access. The judge did not reverse the burden of proof or apply an erroneous necessity test. The fact that other proceedings had used a different regime did not determine the issue under English procedure.

4. Oppo’s membership application had sought admission to the whole highly confidential category, not a distinct club limited to seven identified documents. The judge was therefore entitled to assess the risks arising from access to an exceptionally broad body of sensitive agreements and to exclude personnel involved in relevant licensing negotiations. The later proposal for a narrow, purpose-built regime raised new issues for agreement or, if necessary, determination by the Patents Court; it did not disclose error in the order appealed from.

5. The Court varied the order affecting Xiaomi’s access to the six re-designated documents. The relevant counterparties’ identities had to be disclosed and the undertaking had to be temporally limited. Since Xiaomi’s representatives could participate in the FRAND litigation, it would make no sense to prevent their participation in settlement negotiations within that litigation merely because a licence might be agreed.

• Court of Appeal (Civil Division): The Court dismissed Oppo’s appeal and allowed Xiaomi’s appeal only to vary the undertaking governing access to six re-designated documents.
• Patents Court: Sir Alastair Norris re-designated six attorney’s-eyes-only documents as highly confidential material, refused Xiaomi’s wholesale re-designation application, and refused Oppo’s membership application: [2020] EWHC 2641 (Pat).
• Patents Court case management stage: Mann J ordered extensive disclosure and established the three-tier confidentiality regime: [2020] EWHC 2177 (Pat).