James Abrahams KC and Michael Conway appeared for the claimant (“SG”) and Henry Edwards appeared for the defendant (“3M”), in cross-applications before Michael Tappin KC (sitting as a Deputy High Court Judge). SG and 3M each sought an order, under CPR 31.22(1)(a) and 31.22(2), respectively, relating to the confidentiality of files (the “CT Scan Files”) which had previously been referred to at a trial.
The CT Scan Files were produced by scanning particles said to have been made according to the teaching of a prior art document (“Rowenhorst”), which was in evidence at trial. They allowed 3D representations of the particles to be viewed using special software. SG was using measurements from the CT Scan Files to oppose 3M’s patent applications at the EPO, which required 3M to file responsive submissions.
The judge granted the claimant’s application. He held there were six instances (out of eight SG had relied on) where the CT Scan Files had been referred to at a hearing in public, which allowed SG to use the files for purposes unconnected with the litigation. To ‘refer to a document’, within the meaning of r.31.22(1)(a), it was not necessary to paraphrase or allude to part of the contents. In any event, the six instances, taken together, conveyed enough information about the CT Scan Files to allude to their contents.
The defendant’s application was dismissed. Whilst there was no reason why a confidentiality order could not be made after the hearing that the document was referred to, 19 months had elapsed since trial. 3M’s interest in avoiding the expense of dealing with submissions based on material derived from the CT Scan Files did not justify imposing a restriction on SG’s use of documents which it had freely held and used in that period.