Saint-Gobain Adfors SAS v 3M Innovative Properties Company

For the purposes of Civil Procedure Rules 1998, r 31.22(1)(a), a document is referred to at a public hearing without any additional requirement that its contents be paraphrased or expressly read aloud. The nature and extent of the reference are relevant instead to the discretion under r 31.22(2).

An order restricting use after public reference requires very good reasons sufficient to override open justice. The court should consider the document’s role and centrality in the proceedings, specific evidence of harm, the importance of confidentiality, promptness, delay and resulting prejudice. Mere assertions of confidentiality or the cost of responding to collateral use will ordinarily be insufficient.

The claimant and defendant had litigated the validity of a patent. The patent had previously been held invalid for insufficiency, and permission to appeal had been refused: [2022] EWHC 1018 (Pat) and [2022] EWHC 1666 (Pat).

The present cross-applications concerned electronic computed-tomography scan files relating to particles disclosed for the patent proceedings. The claimant had used derived images and measurements in opposition proceedings before the European Patent Office. It sought declarations that the files had been referred to at the public trial and could be used elsewhere. The defendant sought an order under CPR 31.22(2) restricting or prohibiting further use. The issues were whether CPR 31.22(1)(a) applied and, if so, whether an order should be made.

1. Reference under CPR 31.22(1)(a). The court held that the CT Scan Files had been referred to at the public trial. Several exchanges, witness statements, expert reports and closing submissions identified the files as the source of images, measurements and three-dimensional views of the particles. That was sufficient. The rule contains no requirement that a reference paraphrase or expressly disclose the document’s contents. The approach in Lilly Icos Ltd v Pfizer Ltd (No. 2) supported that conclusion.
2. The court rejected the submission that the files had merely been mentioned in the opening skeleton. That reference concerned documents covered by an earlier confidentiality order, not the CT Scan Files. The remaining identified instances were genuine references. It was unnecessary to decide whether the files had also been read by the court.
3. Discretion under CPR 31.22(2). The power may be exercised after the public hearing and is not confined to an application made at the hearing itself. The court distinguished the pre-CPR reasoning in Derby & Co Ltd v Weldon (No. 2). An application made later is nevertheless subject to considerations of promptness, delay and prejudice. The restrictive approach to revisiting orders under CPR 3.1(7), identified in Tibbles v SIG plc, did not apply because no earlier decision concerning these files was being reconsidered.
4. The governing approach required very good reasons for departing from publicity. Relevant considerations included the files’ role and centrality at trial, specific evidence of damage, the strength of the confidentiality claim, and the practical consequences of the proposed restriction. The files were underlying raw data but were not central to the trial. The defendant’s evidence of commercial value was treated with considerable scepticism, and the defendant’s delay weakened its position.
5. The defendant had allowed the files to remain unrestricted for 19 months, had not acted promptly after learning of their use in EPO proceedings, and principally identified the expense of responding to submissions as the harm. That did not justify restricting continued use in legal proceedings. The application under CPR 31.22(2) was refused. The claimant’s declarations were granted and its undertaking to give 21 days’ notice of any future non-legal use was accepted, with liberty to apply.

The judgment records earlier stages in the same patent litigation:

• High Court (Patents Court)—the patent was held invalid for insufficiency: [2022] EWHC 1018 (Pat).
• High Court (Patents Court)—permission to amend the patent and permission to appeal were refused: [2022] EWHC 1666 (Pat).
• High Court (Patents Court)—the present claimant’s declarations were granted, the defendant’s restrictive application was refused, and liberty to apply was given.