In a second instalment to Anan Kasei Co Ltd and another v Neo Chemicals & Oxides (Europe) Ltd and others [2021] EWHC 3295 (Pat) Mr Justice Mellor addressed the list of ‘important points’ identified by Lord Justice Floyd when looking to the protection of confidential information during IP litigation:-
i) In managing the disclosure of highly confidential information in intellectual property litigation, the court must balance the interests of the receiving party in having the fullest possible access to relevant documents against the interests of the disclosing party, or third parties, in the preservation of their confidential commercial and technical information.
ii) An arrangement under which an officer or employee of the receiving party gains no access at all to documents of importance at trial will be exceptionally rare, if indeed it can happen at all.
iii) There is no universal form of order suitable for use in every case, or even at every stage of the same case.
iv) The court must be alert to the fact that restricting disclosure to external eyes only [EEO club] at any stage is exceptional.
v) If an external eyes only tier is created for initial disclosure, the court should remember that the onus remains on the disclosing party throughout to justify that designation for the documents so designated.
vi) Different types of information may require different degrees of protection, according to their value and potential for misuse. The protection to be afforded to a secret process may be greater than the protection to be afforded to commercial licences where the potential for misuse is less obvious.
vii) Difficulties of policing misuse are also relevant.
viii) The extent to which a party may be expected to contribute to the case based on a document is relevant.
ix) The role which the documents will play in the action is also a material consideration.
x) The structure and organisation of the receiving party is a factor which feeds into the way the confidential information has to be handled. [Oneplus v Mitsubishi [2020] EWCA Civ 1562 at 39-40]
In so doing Mr Justice Mellor reached the conclusion that this summary primarily, “points to the need for the Court to strike an appropriate balance” [at 25]. In his judgement of 6th December 2021 Mr Justice Mellor also addressed Regulation 10 of The Trade Secrets (Enforcement, etc.) Regulations 2018, in particular subsections 4, 5, 6 and 7, concluding “[I]n my view, these regulations reflect the existing position on the authorities and do not support a hardline view” [at 29]. Given the particulars of the present case Mr Justice Mellor nevertheless reached the decision that the, “EEO materials required more protection than Mr Morris (Neo) was prepared to offer… [and] that the circumstances in this case require an exceptional solution” [at 76] be reached.