Several members of chambers have been involved in cases developing the jurisprudence relating to confidentiality regimes in FRAND disputes.
So-called “FRAND” cases concern alleged infringement of patents relating to technology said to be essential to an industry standard (“SEP”). SEPs are declared to a Standards Setting Organisation (e.g. ETSI for telecommunications), and often the proprietor will undertake to licence the alleged SEPs to implementers of the standard claimed on FRAND terms.
Analysis of what terms are FRAND often requires the Court to look at comparable licence agreements. However, those licence agreements which may be relied on by one or other party can contain material in which confidentiality is claimed by the parties and third parties. Redactions, confidentiality undertakings and confidentiality clubs serve to control the dissemination of sensitive information and levels of access to some or all of these disclosed documents and adjust that to meet the needs of the case, as proceedings progress.
The last 18 months has major developments in FRAND litigation procedure in the English courts including the landmark case of Unwired Planet v. Huawei in the Supreme Court. Some of the subsequent case law has involved important decisions (including from the Court of Appeal) addressing claims of confidentiality in such cases some of which have implications for other disputes.
Background – open justice, natural justice and disclosure
The CPR restricts the use of disclosed documents to the purposes of the proceedings unless the document has been read to or by the court, or referred to, at a hearing which has been held in public (CPR 31.22(1)). Even then, a party may request an order restricting its use (CPR 31.22(1)).
However, subject to limited exceptions, open justice requires that common law trials are conducted in public. Natural justice also requires a party to know the case against them and the evidence on which that case is based, including an opportunity to challenge that evidence: Al-Rawi and others v Security Service  UKSC 34. In that case, the Supreme Court recognised that in intellectual property proceedings, it is common to deal with disclosure by establishing “confidentiality rings” of persons who may see certain confidential material which is withheld from other parties to the litigation at least in its initial stages.
The Courts have long recognised that, in intellectual property disputes, disclosure requires a factual consideration of the particular circumstances of the case: Warner-Lambert v Glaxo Laboratories  RPC 354. That case concerned the process for the manufacture of a pharmaceutical, which was a valuable trade secret. The principles in Warner-Lambert were revisited by the Court of Appeal in Roussel Uclaf v ICI  RPC 45, where disclosure was limited to one person within the claimant’s organisation who was prevented from being involved in parallel proceedings. These principles are regularly referred to in other contexts (such as for example, public procurement law): SRCL Ltd v The National Health Service Commissioning Board (NHS)  EWHC 1985.
Confidentiality regimes in FRAND proceedings
The principles have been relied on in developing regimes in FRAND proceedings over the years with a number of important decisions during the last year.
In IPCom GmbH v HTC Europe  EWHC 52 (Pat), Floyd J emphasised that the court should not facilitate the granting of a competitive advantage to one party and inflict a competitive disadvantage on the other unless justice requires it to take such a course. He permitted the inspection of comparable licences by: (i) legal advisers and counsel; and (ii) named experts subject to confidentiality undertakings. Henry Carr J took a less restrictive approach in TQ Delta v Zyxel Communications  EWHC 1515 (Ch). He rejected the claimant’s application for an “external eyes only” club and ordered that the comparable licence agreements be disclosed to members of the general confidentiality club, which included two named individuals within the defendant’s parent company.
Recent case law
The Court of Appeal summarised the legal principles and authorities in OnePlus Technology v Mitsubishi  EWCA Civ 1562. That case involved a 3-tiered confidentiality club: (i) attorney’s eyes only, comprising lawyers and experts; (ii) highly confidential material, comprising attorneys, experts and 2 representatives of each party; and (iii) ordinary disclosure.
Of particular concern to some SEP proprietors is the use of the information contained in comparable licence agreements in future negotiations. In Godo IP Bridge 1 v Huawei Technologies  EWHC 2826 (Pat), Mellor J addressed this concern by requiring the 2 representatives of Huawei inspecting the agreements to give undertakings not to partake in certain licensing negotiations for a period of 5 years.
Most recently, in InterDigital Technology v Lenovo Group  EWHC 3192 (Pat), Mellor J revisited the issue of confidential disclosure in FRAND proceedings. He ordered among other things that 2 specified persons within Lenovo should have access to redacted information in the licence agreements on terms that those persons from negotiating future licences for 5 years in light of the commercially valuable information being made available. He also engaged in active management, re-designating certain general confidential information as non-confidential, including extracts from an expert report.
Application of the principles developed in FRAND cases
The principles developed in a FRAND context have increasingly wide impact in other areas of law. For example, OnePlus was applied in JSC Commercial Bank Privatbank v Kolomoisky & Ors  EWHC 1910 (Ch) and InterDigital was applied by Mellor J a few days later to a different area of intellectual property practice in Anan Kasei Co. Ltd & Anor v Neo Chemicals & Oxides (Europe) Ltd & Ors (Confidentiality No. 2)  EWHC 3295. Mellor J allowed confidential information relating to certain terms on which the claimants’ products were supplied, including pricing, to be made available to the defendants’ Chief Operating Officer provided there was a 5 year ban on that individual negotiating certain supply contracts. Other peripheral documents were to remain “external eyes only”. The case concerned disclosure for the purposes of a damages inquiry for patent infringement, with the judge emphasising that the facts of the case required an exceptional solution.
Members of 8 New Square have been active in all aspects of FRAND determinations (technical patent cases, jurisdictional disputes, valuation and economics aspects) for over 15 years. Several members of chambers appeared in the ground-breaking Unwired Planet v. Huawei case in the Supreme Court and several have been involved in a range of disputes following from that. Some FRAND cases are among the largest and most complex disputes in the Patents Court. Examples of confidentiality regime cases mentioned here in which members of chambers have been instructed are IPCom GmbH v HTC Europe involving Adrian Speck QC, James Abrahams QC and Mark Chacksfield QC; OnePlus Technology v Mitsubishi involving Daniel Alexander QC and Michael Conway among others; InterDigital Technology v Lenovo Group involving Mark Chacksfield QC, Tom Jones and Edmund Eustace and Daniel Alexander QC and William Duncan among others for the defendants.