Alcatel Lucent SAS v Amazon Digital UK Limited & Ors

Confidentiality restrictions in intellectual property proceedings must balance the receiving party’s need for access against the disclosing party’s interest in protecting confidential commercial information. The restriction should be no wider than the identified risk requires. A negotiation bar may prevent inadvertent misuse of confidential licence information, but it is a blunt instrument and must reflect the stage of proceedings, the information disclosed, the role of the documents, and the receiving party’s structure and organisation.

Where a disclosed licence concerns a particular counterparty, that counterparty’s consent may justify participation in negotiations with it; additional consent from the disclosing party is unnecessary without a material risk of harm. Restrictions may continue after an employee leaves where insufficient evidence exists to assess the risk, subject to later variation.

Following an earlier judgment in the proceedings, the parties agreed most terms of a confidentiality order governing licences and related documents to be disclosed by Nokia to Amazon. The dispute concerned the undertaking required from in-house lawyers permitted to access the most restricted tier, described as Negotiation Bar confidential materials.

Nokia sought to prevent those individuals from participating in future SEP licensing negotiations with Nokia, with specified counterparties unless both the counterparty and Nokia consented, and regardless of whether the individual later left Amazon. Amazon accepted restrictions against misuse but opposed those extensions. The court therefore had to determine the appropriate scope of the negotiation bar at this stage of the proceedings.

The application followed the earlier judgment reported at [2024] EWHC 1921 (Pat).

1. Applicable principles. The court adopted the principles summarised in InterDigital v OnePlus [2023] EWCA Civ 166: confidentiality arrangements must balance access to relevant material against protection of confidential information; external-eyes-only or employee-exclusion arrangements are exceptional; there is no universal form of order; different information may require different protection; policing difficulties, the likely contribution of the documents, their role in the action, and the receiving party’s organisation are relevant. The stage of the proceedings and the evidence available about the receiving party are particularly important.
2. Future negotiations with Nokia. The restriction preventing recipients from negotiating with Nokia was removed. The risk was too uncertain at this early stage. The duration of any resulting licence and the content and timing of disclosed licences were unknown. If a material risk later emerged, a further restriction could be imposed.
3. Negotiations with counterparties. Nokia’s additional consent was unnecessary where the counterparty to a disclosed licence consented to the Amazon employee’s participation. Deliberate use of confidential material was already prohibited by the confidentiality order, and no material risk of harm to Nokia from inadvertent use in negotiations with that third party was demonstrated.
4. Employees leaving Amazon. The restriction was retained for the proposed two-year period after access ended, even if the recipient left Amazon. Unlike the evidence available in Nokia Technologies OY v OnePlus Technology (Shenzen) Co Ltd [2023] EWHC 818 (Pat), Amazon provided no evidence about its organisation, structures, or the relevant employees. In that evidential context Nokia was entitled to protection against inadvertent misuse. Amazon retained liberty under the order to seek variation if later evidence showed insufficient risk or particular hardship.
5. The draft undertaking was amended accordingly. The proposed words extending the bar to negotiations with Nokia and requiring Nokia’s additional consent were removed. The proposed exception for individuals who left Amazon was not included.

The judgment followed an earlier judgment in the same proceedings, reported at [2024] EWHC 1921 (Pat). This was a subsequent first-instance determination concerning the terms of the confidentiality order.