OPES CORPORATION OY v REPUBLIC TECHNOLOGIES (UK) LIMITED

Where a court has ordered model D disclosure, a party cannot reopen the underlying decision merely by arguing that its role makes disclosure inappropriate. Disclosure must remain reasonable and proportionate, but that requirement is addressed through appropriate scope and review arrangements. Search terms should capture misspellings and alternative expressions of the relevant claim integers, rather than being limited to exact wording. Broad terms may be controlled by agreed exclusionary terms and an efficient review process. The parties must cooperate to implement those measures.

The claimant sought disclosure from the defendant in patent proceedings. At a case management conference, Zacaroli J ordered model D disclosure and approved a budget that included £45,000 for that element. The defendant argued that it was merely an importer rather than a manufacturer and that the proposed searches were disproportionate. The court considered how the existing order should be implemented, including the scope of search terms, exclusionary terms, staffing of the review exercise and the parties’ obligation to cooperate.

1. The defendant was required to give disclosure in accordance with paragraph 7 of the CMC order made by Zacaroli J on 12 May 2022. The argument that the defendant should not give disclosure because it was simply an importer amounted to an impermissible attempt to revisit the case management decision.
2. The requirement that disclosure be reasonable and proportionate remained applicable. However, the court would not allow a general re-think of the earlier decision, particularly where the earlier judge had approved a substantial budget for the disclosure exercise.
3. The reference in the earlier order to the non-admitted integers of the claim did not restrict searches to words precisely corresponding to the wording of those integers. Proper searches had to include misspellings and alternative ways of expressing the same concept, such as “dissolved in” rather than “solvent”.
4. Some proposed search terms were broad and could identify substantial material outside the relevant issues. The appropriate response was to use suitable exclusionary terms, agreed by the parties using their best endeavours. The list should be effective but proportionate.
5. The first-pass review should be undertaken by a considerably more junior person than previously contemplated. Promotional material and artwork could be removed at that stage, reducing the cost of the exercise. The parties were required to cooperate so that the disclosure process reflected the earlier decision and remained reasonable and proportionate.

The judgment records an earlier case management order made by Zacaroli J on 12 May 2022. It does not state an appellate history.