Claims 2 to 15 involve various permutations or variations on claim 1 which were not separately identified as significant in submissions, so I do not record them.
Despite the respondent's criticism that the claimed need is for "proper engineering evaluation", in my view that is sufficient to warrant the documents being discoverable. I do not think that expression was used as other than a shorthand way of saying that the full information of all inputs, applicable process variables on any one occasion, and outputs at each stage of the SREP will, or may, enable detailed mass balance analysis to be carried out so as to determine the phases of the SREP. The purpose is comparison with the phases of the process encompassed by the standard patent and the petty patent. I acknowledge that the bow may be a longish one, as demonstrated by the applicant's asserted need not only to know what those process variables were but also to know in detail the engineering design of the respondent's plant and to know, and to have access to, its calibration records to determine the degree of accuracy of the reported or recorded process variables, and so as to identify any errors in what is reported as measured or analysed.
I have also had regard to what has already been discovered by the respondent. Those documents include documents relating to the reagent and kiln on-off times, composition of feed ilmenite and reduced ilmenite, metallisation percentage, reduced ilmenite percentage, the temperature at number ten bed, product compositions, and certain other data. That is because the respondent has identified for itself the point at which the alleged infringement critically occurs, or from its viewpoint does not occur, and discovered documents directly touching on that stage of the SREP. It has not discovered records relating to the process variables generally which together (according to the applicant) contribute or may contribute to, or which may be affected by, the particular product compositions and line outputs concerning which it has given discovery. I share the view, put on behalf of the respondent, that it is not overly clear why all those process variables are relevant, in the sense that term is used, to determining whether the claims in the standard patent and the petty patent are infringed. However, having regard to the nature and extent of the claims in each, including to the examples given as part of the complete specification, and having regard to the material explaining its relevance presented to me, I am satisfied that the broader scope of documents touching on the process variables set out in pars 1(iii), (iv) and (v) of the proposed draft order are discoverable.
There were other claims as to the relevance of those process variables, although clearly there is some overlap in the scope of the claims. They were that the documents were discoverable to enable the applicant
(i) to properly understand reported measurements or analyses;
(ii) to identify errors or to validate other records of measurements or analysis;
(iii) to enable the determination of unmeasured or unmeasurable process parameters;
(iv) to enable interpolation between measurement or sampling times for measured parameters;
(v) to enable experiments to be conducted to reproduce and investigate relevant aspects of the process.
Each aspect is explained by the applicant in some detail in the material before me. I have considered the explanations in each instance.
In view of the conclusion I have reached on the principal issue, it is not necessary to assess in detail each of those separate reasons for relevance. Suffice it to say that, in my view, provided material may lead directly, or through a chain of inquiry, to proof of infringement or may assist in proof of infringement, then it is discoverable. I am not prepared to so discount the views deposed to by Dr Covey, or the contentions based upon them, to conclude that such materials are simply not relevant. In that conclusion, I stress that I am not choosing to prefer Dr Covey's views to those of Dr Grey. Without the benefit of having seen and heard them give evidence, I could not do so.
I will deal separately with the documents referred to in par 1(i), (ii), (vi) and (vii) of the draft order after I consider the discretionary considerations urged upon me by the respondent, and O 15 r 15.
The sampling process which the respondent has accommodated is or should provide the primary foundation for the proof of infringement. The respondent has indicated that it will facilitate further sampling of the SREP by the applicant. It is not necessarily the case that the SREP result or output, at one or more of its various stages, even if identical with the applicant's result or output at material stages of its process necessarily means that the applicant's process is being exploited by the respondent. Proof of that matter may be a significant part of the proof of infringement of the standard patent or the petty patent.
However, as I have endeavoured to express above, even if the sampling process may provide the best evidence of infringement, it is not necessarily the only evidence. I am satisfied for the reasons given that the documents referred to are discoverable as going to the issue of infringement in a relevant way. The decision as to the discoverability of those documents has also been reached having regard to the voluntary admissions filed by the respondent. Again, I have discussed above the significance of those voluntary admissions in the context of this action.
The question under O 15 r 15, once I have reached that view, is whether I am satisfied that such discovery is necessary to ensure a fair trial and a fair disposition of the case. Although I have not been informed as to the outcome of tests upon the samples from the SREP made available to the applicant, it is a reasonable inference that the applicant is no longer satisfied that they will fundamentally determine the issue of infringement as it first asserted. I am mindful also of the no doubt genuine attempts of the parties to make an arrangement which limits discovery, but attempts which ultimately have proved unsuccessful. Again, it may be inferred that the applicant is not satisfied that a combination of the tests conducted on samples from the SREP made available to it, and the detailed voluntary admissions filed by the respondent, or the admissions of themselves, provide evidence sufficient for it to be confident of establishing infringement. One answer may be that there is no infringement. However, in those circumstances, I do not think I should preclude the applicant from access to documents, which I have concluded are otherwise discoverable, by reason of O 15 r 15. Its claim is a significant one. The commercial implications are self-evident, and confirmed by the submissions of both parties. There is available relevant documents which may lead the applicant to the means of proof of the infringement alleged. Other available procedures have not apparently achieved that end, or on the other hand have not apparently persuaded the applicant that the SREP does not infringe the standard patent or the petty patent.
Subject to any particular discretionary considerations, and having regard to the terms of O 15 r 15 in particular, I am satisfied that those documents should be discovered.
The respondent's reluctance to discover more than is necessary is entirely understandable. As was pointed out, it has been producing synthetic rutile for many years, and the SREP is in its view "the state of the art". Although confidentiality orders of the Court will no doubt be complied with, the persons including independent experts who may have access to its documents will be unable to wipe the information from their minds at the completion of this matter. The respondent wishes to be protected from the accidental and innocent use of certain of the information later in time, perhaps when one of those experts is consulting with the applicant. That concern is heightened by the breadth of the discovery sought. However, those matters were addressed when Heerey J on 15 March 1995 made an order to protect the confidentiality of commercially sensitive documents produced after discovery. There is no evidence to indicate that order has not, to date, proved efficacious. If the documents the subject of the motion are also to be discovered and inspected, that order will operate on them. If their commercial sensitivity is such that that order is inadequate, then the respondent may apply to vary that order in respect of some or all of the documents the subject of the motion.
It was also contended that the voluminous material for which discovery is now sought by the applicant contrasts dramatically with the brevity of the process description set out in the petty patent and the standard patent, and with the material discovered by the applicant for its part relating to it. It is said to be so disproportionate that, bearing in mind the relatively limited nature of the ultimate issues as to infringement, the Court should not be satisfied that its discovery should be ordered. It was put, rather attractively, that there will not at the trial be a dispute about what the SREP is or what output it produces, but firstly whether the process - because of the so called "glassy phase" - means that there is no infringement, or alternatively whether it falls nevertheless within claim 1 integer 1 of the standard patent and of the petty patent as the minor impurity bearing titaniferous phase, and secondly whether the minor impurity bearing titaniferous phase then produced is treated differently and to different degrees at the leaching stage of the process. I have referred to those matters in greater detail above. I do not think that, even if correct, they are sufficient to warrant the exercise of a discretion against ordering discovery when I otherwise regard it as necessary under O 15 r 15. I note that the applicant did not accept that its own discovery was relatively small in the amount of documentation discovered.
The respondent does not contend that it would be oppressive to order discovery of all the documents requested. It is accepted that neither the unmasking of presently masked documents, nor the provision of current computer stored data relating to the current process variables, would be oppressive to the respondent. However, it is urged that in respect of data previously stored on computer and which is no longer current, it would involve very considerable expense and time to restore the information in a form where it could now be reproduced.
The difficulty with that submission is that I am not aware of the relative significance to the applicant of information relating to the operation of the SREP by the respondent on the several past short periods referred to in the pleadings, as distinct from its current operations. I am not prepared to assume that it is of slight significance. I note that the respondent, in its further voluntary admissions of 11 November 1996, addressed the detailed phase assemblages and compositions separately with respect to each of those separate occasions of operation of the SREP. It has clearly expended very considerable sums in doing so. It did not then seek to make out that it should not do so on the basis that the earlier periods of its production of synthetic rutile by the SREP were not of much overall significance. Although the effect involved in procuring the recall of computer stored records relating to those earlier periods will be both long and costly, involving a number of weeks work, I do not think that it would be so oppressive to expect that in the circumstances that I should not order the discovery sought.
There were no other matters put to me by the respondent which, in my view, should lead to the exercise of any discretion not to order the discovery sought.
I am satisfied, in the light of those considerations, that the applicant should be given the benefit of discovery of the further documents identified in par 1(iii), (iv) and (v) of the draft order. It is, in my view, necessary in the interests of justice that I should so order.
I do not think that all of the remaining categories of documents in par 1(i), (ii), (vi) and (vii) of the draft order are necessarily discoverable. If there is anything further by way of relevant inputs or outputs of the SREP beyond those described in pars 1(iii), (iv) and (v) of the draft order, they were not identified in submissions. I have no reason to conclude that the respondent has concealed from the applicant the existence of any such materials. Indeed, I think the contrary is apparent from the applicant's ability to enumerate in the detail it has done the recordings of apparently material information in pars 1(iii), (iv) and (v) of the draft order. Consequently, I do not propose to make an order in terms of par 1(i) of the draft order. For similar reasons, I do not propose to make an order at this point in terms of par 1(ii) of the draft order. In my view, the relevant records to be discovered are those which record process variables for the SREP at relevant times and its inputs and outputs. It is my intention, of course, that the documents discovered and then produced for inspection be comprehensible to the experts of the applicant. If some software program is necessary to enable that to occur, then in my view the respondent should enable that to be done. At this point, I am reluctant to make any order of the type sought unless and until it becomes apparent that it is necessary for the inspection of the documents to be discovered is meaningful. I assume that the respondent will enable that to be achieved. The draft order par 1(ii) may direct more extensive disclosure of material than that which I have determined to be appropriate, and in its present terms I decline to make it.
I also am not persuaded that all the documents referred to in par 1(vi) and (vii) of the draft order should be discovered. I have recorded above the applicant's reasons for seeking discovery of what amounts to the documents recording the calibration checks of the respondent's measuring devices, and the document recording its more general plant design and layout. I reject the contention that calibration records are discoverable. They do not relate to, or record, any part of the SREP. At best, they would enable the applicant to discount or adjust any particular record relating to the SREP. There is no material before me to suggest that there was any persistent misrecording of information by the respondent. It is suggested that there may be some inconsistencies in data recorded, perhaps simply due to recordings at different times or on different occasions. If the point comes at which the respondent wishes to disavow one or more of its own records, the question may resurface. At this point, it is my view that the claimed relevance is speculative only. I am not satisfied that discovery of such records is necessary. For similar reasons, I think the request for "sampling procedures" and "analytical procedures" is not one to which I should accede. I also decline to order the respondent to discover its sample identification records for much the same reasons. The applicant has its samples. It can procure more. It has, or will have, access to the respondent's primary records relating to the SREP. It may, as it has foreshadowed, conduct material balance calculations in the light of them. It may conduct its own experiments, based upon them. But it is a different thing to seek access to the documents of the respondent of its sampling procedures at this point. Unless and until it is clear that the applicant wishes to challenge a particular sample analysis of the respondent, and that the validity of that sample analysis is itself a proper matter to challenge, in my view the documents so sought are at least one dimension removed from the relevant topic, the nature of the SREP and whether it infringes the standard patent or the petty patent. That includes the request for documents relating to the XRD, XRF and microprobe analyses. I am also not persuaded that records relating to the transport and storage of reduced ilmenite are relevant at this point in the proceeding. The parties have not given discovery of documents going to any issue of damages, as they intend the issues as to the validity of the patents and their alleged infringement to be first litigated. On the basis that the "kiln conditions" referred to do not extend beyond matters referred to in par 1(iii), (iv) and (v) of the draft order, and I have not been persuaded that they do, then that aspect of the proposed order is also declined. On the same basis, and for the same reason, I do not make any further specific order as to the composition of the ilmenite feed material referred to.
I am unclear whether the request for discovery of records as to the composition of the reagent added to the Capel kiln by the respondent prior to 5 June 1994 should be allowed. The respondent indicated during submissions that it may well plead that it introduced material to generate its glassy phase during the reduction step of the SREP. It acknowledged that that topic was directly relevant to the issue of infringement. If that reagent relates to that topic, in my view the records relating to its composition are discoverable. If it relates to some other topic, I suspect as an input during the SREP on that occasion, then it is discoverable in any event, consistent with my general ruling. As I am uncertain, and propose to give the parties the opportunity to consider these reasons before making formal orders, I will simply defer that question.
I also decline to make an order for discovery of the documents referred to in par 1(vii) of the draft order. That really follows from the preceding part of my reasons. I am not satisfied that such information has a sufficient relationship to the SREP as to be relevant to proof of the SREP infringing either the standard patent or the petty patent. Again, if it subsequently emerges that a feature or features of the respondent's plant or equipment design is relevant to infringement, and there is an issue as to its nature, then such documents or some of them may become discoverable. At present I am not satisfied that that is the case. Nor, in terms of O 15 r 15 of the Rules am I satisfied that, at this point, discovery of such documents is necessary.
THE MASKED DOCUMENTS
The respondent has discovered extensive documentation with significant sections deleted or marked. Its reason is simply that the concealed sections of those documents do not touch upon, or relate to, any matter in issue in the proceedings. In certain circumstances, that is or may be an appropriate course of action: Science Research Council v Nassé [1980] AC 1028 at 1066, 1085. The applicant does not contest that proposition, so long as the irrelevant part of the document can be covered without destroying the sense of the rest of the document or making it misleading: GE Capital Corporate Finance Group Ltd v Bankers Trust Co [1995] 1 WLR 172 at 175.
Thus the applicant sensibly and appropriately accepts that the masking of truly irrelevant material is not improper in the circumstances. To that extent, it has accepted that, despite its claimed prima facie entitlement to inspect all discovered documents without restriction: cp. O 15 r 6(7), some masking may be appropriate.
What is really in issue is whether the masking process has excluded only irrelevant material. The applicant contends to the contrary. It also contends that, in significant respects, the masking carried out has presented, or is capable of presenting, a distorted or misleading or incomplete picture. The respondent joins issue with the applicant on those matters. It contends that the Court should permit the masking to remain.
The applicant has identified a significant number of discovered documents which have been discovered in duplicate, and each masked to some degree in different ways. It is able to point to sections of a document produced in one form which contains data which, it contends, is relevant and which has been masked in the document produced in another form. The respondent accepts that. It is hardly a surprising outcome given the scope of the documents discovered. In those cases, the respondent generally contends that the unmasked section of the document has been exposed in error, inconsistently with its claimed limit on the material which is discoverable in these proceedings. I accept that is so in most cases.
The masking has been undertaken by the respondent to protect its claim to commercial confidentiality of the material. As noted above, the power to order discovery or production of documents is a discretionary one, albeit one which the Court should not order unless satisfied that it is necessary in the interests of justice. If I am satisfied that it is necessary to achieve justice between the parties that further production should be made of the masked documents in an unmasked form, at least to some degree, then balancing the respective interests may require such an order notwithstanding the confidential nature of the material. The order may be upon terms. The Court has the power, for example, to restrict the persons to whom production of that material should be given and to ensure that such persons do not otherwise publish the material inspected by them either absolutely, or only to a limited extent: Warner-Lambert Co v Glaxo Laboratories Ltd [1975] RPC 354. As noted above, the order of Heerey J made on 15 March 1995 in this matter explicitly addresses such issues. At present, there is nothing before me that indicates that that form of order would not be appropriate, were I to direct the discovery and inspection of the masked documents, or some of them, in an unmasked or less masked form.
The applicant has indicated firstly that, depending upon my ruling on the principle issue dealt with above, it may need to revisit its masking processes. Much of the information apparently masked relates to "process variables" in respect of which the applicant seeks further and better discovery. The respondent has indicated that, if I rule adversely to it on that issue, it will review the masked documents produced for inspection and reconsider any masked data to ensure that material is made available if the ruling requires it. As is apparent from the above, I have ruled that documents relating to the "process variables" should be discovered by the respondent. In accordance with that information from the respondent, through its counsel I note that the masking of the documents will be the reviewed. Indeed, the respondent through its counsel indicated that, were I to rule against it on the principle issue, it may adopt the expedient of simply producing all the masked materials in an unmasked form, but of course subject to the confidentiality order concerning inspection of those documents.
The applicant, in addition, points to certain discovered documents produced in a partially masked form and which leads the applicant into asserted uncertainty as to whether certain further work was carried out and if so when, or as to the potential relevance of the document because the masked data may be useful to determine the significance (if any) of the data disclosed. The respondent's submission is partly to acknowledge that complaint. It has agreed to provide further production of discovered documents numbered 567 and 568 to enlighten the applicant as to its query on those documents, but otherwise it says that no masked material has been shown to be relevant. It is also acknowledged that any errors in masking will be corrected.
In the light of those acknowledgements, I do not propose to make any further order with respect to the masked documents. Primarily that is because - apart from the masking of "process variables" which will now require to be unmasked in accordance with my ruling above - I am not satisfied that otherwise the masking has excluded from production relevant material. Inconsistency in masking does not convince me that that is the case. Nor am I satisfied, beyond that material, that further unmasking of the documents is necessary. Beyond disclosure of "process variables" I am not persuaded that any masked data is otherwise relevant. Nor, even if it were of marginal relevance, do I think that it is necessary to further unmask documents in the interests of justice. I make that ruling specifically on the basis of the intimations made by counsel for the respondent during submissions that any error in masking will in any event be corrected.
I note in the course of submissions on this topic that six bundles of documents were produced to the Court by the respondent pursuant to a notice to produce, and then made available to solicitors for the applicant for inspection. It may be necessary, as part of the formal order of the Court, to deal specifically with the further access (if any) to those documents in the light of the outcome of the motion generally for further and better discovery. I mention that matter simply so that it is not overlooked.
MISCELLANEOUS DOCUMENTS
Ultimately, there was not much issue about the remaining documents of which discovery was sought. They are the documents listed in par 1(viii)-(xvi).
The respondent, during submissions, indicated that it would discover the documents referred to in pars 1(viii), (xi), (xii), (xiv), (xv) and (xvi). On the basis of that acknowledgement, I will make an order for discovery of those documents if the discovery has not yet occurred.
The respondent also asserted that it had no documents of the nature described in par 1(x). I am not persuaded to the contrary, and indeed the applicant sensibly did not urge me to do so.
Within the documents referred to in par 1(xiii), the respondent asserts that it is unable to locate and doubts the existence of the documents numbered 96, 100, 102, 157 160, 164, 260, 348 and 386 although references elsewhere suggest their existence. I do not propose to order their discovery in those circumstances. They will be discovered if identified. The respondent disputes that the document numbered 426 is relevant. I can see no apparent relevance from its description. I do not order its discovery. The respondent also disputes the relevance of documents numbered 54, 81, 465, 466, 857, 881 and 882, but accepts that such documents as exist within those categories or descriptions will be discoverable if I generally ruled in favour of the applicant on the principal matter argued. It will in the circumstances be appropriate to order discovery of those documents, or at least to the extent that they exist; the respondent accepted that they probably existed but had not positively identified them at the time of submissions.
There remains the documents referred to in par 1(ix). I do not order discovery of those photographs. I am not persuaded that they are relevant. In addition, I do not think that it is necessary to discover them, even if they are arguably discoverable. Having said that, the parties appreciate whether it would be of general assistance to the trial judge to have access to photographs or drawings of the relevant equipment or plant, or whether a view would be desirable, to enable the trial judge better understand the evidence proposed. No doubt it is in the interests of each party for the trial judge to comprehend the physical layout and size of the relevant equipment or plant. I am confident the parties will co-operate in that regard.
GENERAL
The respondent requested me to publish reasons and allow the parties to then make any further appropriate submissions in the light of them. I have adopted that course. It may be appropriate to introduce some temporal or other limitation on the scope of the orders for discovery which I propose to make. There are a few minor matters which, in my reasons, I have left for the parties to further address. The time for compliance with the proposed orders will also need to be addressed. There may be matters of commercial sensitivity which I have inadvertently exposed.
Accordingly, I have published these reasons privately to the parties in the first place. I will call the matter on for further hearing when the parties have had an opportunity to consider my reasons, for the making of orders in accordance with them and to address any matters which properly arise from them.
I certify that this and the preceding thirty-four (34) pages are a true copy of the Reasons for Decision herein of the Honourable Justice Mansfield.
Associate:
Dated:
Counsel for the Applicant: Mr A Archibald QC
with him
Mr J Beach
Solicitors for the Applicant: Arthur Robinson & Hedderwicks
Counsel for the Respondent: Mr D Catterns QC
Solicitors for the Respondent: Allen Allen & Hemsley
Dates of Hearing: 7 and 8 April 1997
Date of Decision: 30 March 1998