JC Bamford Excavators Limited v Manitou UK Limited & Anor

Information recorded in a document may retain relative confidentiality where a publicly available product reveals it only through inspection or reverse engineering involving time, effort or skill. The document provides an impermissible short cut, although lawful reverse engineering remains available.

The open justice principle yields where, and only to the extent that, protecting genuine trade secrets is necessary to secure justice. The court may therefore restrict use of disclosed documents and redact trade secrets from a public judgment, even where the redaction prevents full public understanding of its reasoning. The party’s status, success on the substantive claim and the doctrinal basis of the decision do not determine whether protection is available.

JCB alleged that Manitou’s telehandlers infringed its patents. The High Court held that one patent was valid but that Manitou’s configuration C control system did not infringe it. Detailed reasons appeared in a confidential annex.

Following trial, Manitou sought a final order under rule 31.22(2) of the Civil Procedure Rules 1998 restricting use of documents which disclosed the system’s operation. The judge held that the identity of a key operating criterion was confidential but refused protection because publication was needed to explain his infringement reasoning and the evidence suggested minimal competitive harm: [2023] EWHC 408 (Pat).

JCB appealed against the finding of confidentiality. Manitou appealed against the refusal of a final restriction. The central questions were whether information ascertainable through inspection or reverse engineering could remain relatively confidential when recorded in documents, and how the protection of technical trade secrets interacted with open justice.

1. JCB’s appeal was dismissed. Information recorded in a document can possess relative confidentiality even though it could be deduced by inspecting or reverse engineering a publicly available product. The document supplies a short cut which avoids the necessary investigation. The time needed to obtain the information independently affects the degree and duration of protection, but a short period of advantage does not eliminate confidentiality. On the evidence, disclosure of the documents would save a competitor days or weeks of investigation: paras [67]–[70].

2. The result accorded with Articles 3 and 4 of the Trade Secrets Directive. Lawful reverse engineering does not make unauthorised access to, or use of, documents recording the same trade secret lawful. Heads 2 and 4 of the disputed information were consequently also confidential: paras [69]–[70].

3. Manitou’s appeal was allowed. Open justice is the starting point and applies with particular force to a court’s reasons. Its application does not depend on which party won the underlying claim, whether the protected party is claimant or defendant, or whether the decision concerned literal infringement or equivalents: paras [105]–[107].

4. The disputed package was properly characterised as technical trade secrets. It comprised non-public technical information devised by a skilled engineer, compliant with relevant standards, designed to avoid patent infringement and reasonably regarded as conferring a competitive advantage. Although the confidentiality of the key criterion alone was limited, the information should not be artificially dissected where disclosure could encourage competitors to discover the remaining details: paras [108]–[109].

5. Under the trade-secrets exception recognised in Scott v Scott [1913] AC 417, open justice gives way where, and only so far as, protection is necessary to secure justice. This is not an ordinary balance between incommensurable interests. Necessary redaction may prevent the public from understanding part of the reasoning. That consequence is supported by Article 9 of the Trade Secrets Directive and regulation 10 of the Trade Secrets (Enforcement, etc.) Regulations 2018: para [110].

6. A final rule 31.22(2) order was made for the relevant documents, including the confidential annex, insofar as they disclosed the key criterion: paras [111]–[112].

1. Court of Appeal (Civil Division): JCB’s appeal against the confidentiality finding was dismissed. Manitou’s appeal against refusal of protection was allowed, and a final order under rule 31.22(2) of the Civil Procedure Rules 1998 was directed: [2023] EWCA Civ 840.
2. High Court, Patents Court: The judge held that the key technical criterion was confidential but refused a final rule 31.22(2) order because publication was necessary to explain the infringement reasoning and the evidence indicated minimal harm: [2023] EWHC 408 (Pat).
3. High Court, Patents Court: In the substantive patent judgment, the judge held three patents invalid, upheld EP 382, and found configuration D but not configuration C to infringe: [2022] EWHC 1724 (Pat).