Mitsubishi Electric Corporation & Anor v Archos SA & Ors

Confidentiality designations in patent and competition litigation are exceptional departures from ordinary court procedure. They must be limited to the narrowest extent possible and scrutinised carefully for fairness to the parties and affected third parties.

The court should assess confidentiality disputes document by document, having regard to the materiality of the document, the sensitivity of the information, the risk of leakage and the practical consequences for the opposing party’s ability to prepare its case. Admission to a confidentiality club may properly be refused where a proposed representative is involved in related commercial negotiations or litigation. Suitable undertakings and alternative representatives may be required.

The claim concerned standard essential patents in the mobile telecommunications field and the terms of proposed FRAND licences. During case management, the claimants disclosed licence and assignment documents subject to Attorney’s Eyes Only (AEO) or Highly Confidential Material (HCM) designations.

The Oppo defendants sought redesignation of six documents and admission of additional representatives to the HCM confidentiality club. The Xiaomi defendants sought wholesale redesignation of all AEO documents as HCM. The court determined the scope of the confidentiality designations, the appropriate membership of the confidentiality clubs and consequential extensions of time for service of revised statements of case.

1. Confidentiality principles. The court adopted the principles summarised in The Infederation Case [2020] EWHC 657 (Ch) at [42]. Confidentiality arrangements are exceptional, must be limited to the narrowest extent possible and require careful scrutiny to avoid unfairness. The objective, drawn from Roussel Uclaf [1990] RPC 45 at p.49, is to provide as full a degree of disclosure as is consistent with adequate protection of the secret.
2. The same principles apply, with appropriate adjustment, where confidential material is disclosed to enable one party to advance a case against another. The court must consider the interests of the parties and third parties, the commercial sensitivity of the information and the risk that disclosure will create an informational asymmetry.
3. Oppo application. The targeted request for redesignation of six potentially relevant licences was justified. Redesignation was ordered subject to each non-professional member of the confidentiality club undertaking not to participate in or advise upon licensing negotiations or licensing litigation involving the relevant counterparty or its affiliates. Redaction was generally inappropriate because the counterparty identity and financial structure were material to the proposed case.
4. Xiaomi application. Wholesale redesignation was refused. The AEO classification had to be assessed document by document. The court could preserve AEO treatment where the material was peripheral, subject to third-party confidentiality obligations or exceptionally commercially sensitive. The fact that documents had been disclosed in Dutch proceedings did not determine their treatment in English proceedings.
5. Confidentiality-club membership. Applying the considerations identified in IPCom GmbH v HTC Europe [2013] EWHC 52 (Pat) at [31]-[33], the court upheld objections to representatives directly involved in SEP licensing negotiations or related litigation. The defendants were required to nominate representatives outside that excluded class, with further undertakings if their circumstances changed.
6. The time for service of the revised FRAND statements of case was extended by seven days. No direction was made concerning the claimants’ responsive reply, leaving the parties to agree appropriate modest adjustments.