In a recent case, Positec Power Tools (Europe) Ltd and others v Husqvarna AB [2016] EWHC 1061 (Pat), the UK’s Patents Court has considered the correct approach to disclosure under the Civil Procedure Rules (CPR) in their current form in patent proceedings in which obviousness was in issue. In doing so, it declined to make an order for disclosure on the grounds that it would not be in accordance with the overriding objective.

The dispute between Positec and Husqvarna relates to robotic lawnmowers. Husqvarna owns a patent, EP (UK) 1 512 053, which claims a method of operating a robotic lawnmower device under the guidance of an electronic directing system. Positec wishes to sell its own robotic lawnmowers in the UK. To clear the path, it issued proceedings against Husqvarna for revocation of the patent on the grounds of novelty and obviousness, and/or a declaration of non-infringement in respect of its own robotic lawnmowers.

This judgement, by Mr Justice Birss, is on a preliminary matter considered at the case management conference (CMC). In its Disclosure Report, Husqvarna indicated that it would disclose documents relating to validity in the key four-year window, ie those documents dated between two years before and two years after the earliest priority date (paragraph 6.1(2) of Practice Direction 63 of the CPR). However, by the time of the CMC indicated that it was not willing to give such disclosure. The Court therefore had to decide whether disclosure should be ordered.

At the CMC, arguments were presented on the correct approach to standard disclosure (CPR 31.5) and how the approach applies to the question of whether to order the disclosure of documents arising from the making of an invention in an obviousness case. Mr Justice Birss referred to the development of the current approach to disclosure, in particular Jacob LJ’s comments in Nichia v Argos [2007] EWCA Civ 741. In Nichia, Jacob LJ discussed how obviousness is objective, and the knowledge and behaviour attributed to the skilled person is not the same as a real person. The skilled person only foresees what is obvious because, unlike a real person, they take no inventive steps. Therefore the evidence of what the inventor actually did can be of little value and may be tainted by hindsight. It is secondary evidence, rather than primary evidence, such as that provided by a suitably qualified expert witness. In reality, disclosure from a patentee about what an inventor actually did may be a costly distraction that is only valuable in the minority of cases.

Mr Justice Birss also considered his unique experience in the Intellectual Property Enterprise Court (IPEC). In the IPEC, there is no automatic right to disclosure, but it is dealt with on an issue-by-issue basis using a cost/benefit test. There is no prima facie assumption in the IPEC that disclosure will be ordered (and it generally is not), but the IPEC is still a successful forum.

He also referred to CPR 31.5(7), which details the type of order the Court may make in respect of disclosure, regarding the overriding objective and the need to limit disclosure to that which is necessary to enable the case to be dealt with justly. He held that the fact that CPR 31.5(7) lists six different types of order open to the Court means that standard disclosure is no longer the default option. The nature of patent disputes means that the question is, essentially, whether to order disclosure on an issue-by-issue basis (CPR 31.5(7)(c)). In this case, the only live issue was obviousness, and therefore whether it would be in accordance with the overriding objective to make such an order.

The key factors to consider in this case were the likely probative value of such material and the cost of the disclosure exercise in the context of the overall cost of the proceedings and value of the case to the parties. Taking the second, and perhaps simplest of the considerations first, he held that the value of the case was likely to be in the millions – it was not a case of very low value but nor was it at the high end of cases in the Patents Court, like cases relating to standard essential patents or a blockbuster pharmaceutical. The parties estimated that their costs would be £0.8-£1.1 million on either side, and the Court estimated that the likely cost of disclosure around £90,000 – so neither substantial nor trivial in context. However, in the circumstances of these proceedings, the key consideration was the likely probative value of the material – commercial success was not pleaded, Husqvarna does not intend to call the inventor, nor does it plan to rely on its own internal documents in support of an inventive step. These points argue against disclosure. Positec argued that it would use the inventor’s documents in cross examination, and that on the facts of the case disclosure of these documents would be useful to establish whether the skilled person would think in the same way as the inventor. The Court held that it was, at this stage of the proceedings, unclear if it was in dispute that the skilled person would think in such a way, and if the point is not currently in issue, there is no reason to order disclosure in respect of it. It would be a waste of time and money to do so at this time. If the issue arose later, there would be room in the timetable to allow for disclosure. Mr Justice Birss also commented that the fact that Husqvarna changed its mind about disclosure did not, in his view, mean it is trying to hide something.

In summary, the Court held that it was not satisfied that an order for standard disclosure, or one for issue based disclosure on obviousness, would be in accordance with the overriding objective: “This is an ordinary obviousness case with no special features which might make such disclosure worth the cost.”

This decision demonstrates that a party seeking disclosure must be able to show that it is likely to result in useful material that is of relevance to the issues in the case. Given the move towards Judges becoming more actively involved in case management at an early stage of proceedings, there is a real possibility that the scope of disclosure may become more limited in the future, thereby reducing the costs of UK patent litigation