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England and Wales High Court (Patents Court) Decisions |
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You are here: BAILII >> Databases >> England and Wales High Court (Patents Court) Decisions >> Safestand Ltd v Weston Homes Plc & Ors [2023] EWHC 1098 (Pat) (10 May 2023) URL: http://www.bailii.org/ew/cases/EWHC/Patents/2023/1098.html Cite as: [2023] EWHC 1098 (Pat) |
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BUSINESS AND PROPERTY COURTS
OF ENGLAND AND WALES
INTELLECTUAL PROPERTY LIST (ChD)
PATENTS COURT
7 Rolls Building Fetter Lane London EC4A 1NL |
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B e f o r e :
Sitting as a Deputy Judge of the High Court
____________________
| SAFESTAND LIMITED |
Claimant |
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| - and - |
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| (1) WESTON HOMES PLC (2) WESTON (LOGISTICS) LIMITED (3) WESTON GROUP PLC |
Defendants |
____________________
MR. JEREMY REED KC (instructed by Birketts LLP) appeared for the Defendants.
Hearing date 20 April 2023
____________________
Crown Copyright ©
MR CAMPBELL FORSYTH:
Introduction
(i) The Defendant's have by an Application Notice dated 14 April 2023 ("the Defendants' Application") requesting permission to reply on various experiments set out within its Re-Amended Notice of Experiments ("ANOE").
(ii) The Claimant by its Application Notice dated 13 March 2023 ("the Claimant's Application") requests specific disclosure of documents and data relating to experiments in the ANOE.
Procedural History
The patents and case on infringement
"333. Integer 1A claims "A modular system comprising a plurality of builder's trestles". In my view the skilled person would consider that this is not present in the Kwik Kage System. That is so because the skilled person would understand that a builder's trestle is a self-standing support for a platform which will (with other trestles) support the platform in normal use without the need for any additional structural support.
334. …..The skilled person would also understand that the feet of a trestle would extend a sufficient distance as a proportion of the height of the platform in order to provide the longitudinal stability necessary for the platform to be used normally and safely for tasks such as bricklaying or blockwork."
"27. The core points are whether D's Main Frame fitted with Starter Plates is a "builders' trestle" (integer 1A), and whether planks/boards on those devices can be "supported in use to make a platform" (integer 1B). The wording of integer 1A and 1B differs very slightly between the 978 and 738 Patents, but raises substantially the same issue in each case.
28. Put simply, D's case is that its Frames (i.e. Main Frame fitted with Starter Plates) are not builders' trestles, and they are not "builders trestles" that can support planks in use to make a platform. Furthermore, again put simply, Ds' case on equivalents is that its Frames are not functioning in the same way as builders' trestles – stability is achieved by an entirely different mechanism, that it to say by the addition of two cross-braces between all adjacent Frames, thereby connecting them, stabilising them, and fixing the distance between them. Ds say that the stability in the trestle / trestle system is provided by the feet of the trestles (which must have sufficient size and rigidity), and that this is not the case with the D's system."
The experiments
"442. The tests aimed to quantify differences or similarities in performance of a "Kwik Kage Frame" and Trestle, and a Kwik Kage System and a Trestle Platform, from the initial application of the forces through to the maximum longitudinal force resisted by each item or arrangement in each test. Experiment 3 also included testing of a changed version of the Kwik Kage System with all the cross-braces removed."
(i) "Experiment 1 – A single modified Trestle ("Trestle") compared with a Kwik Kage Frame with Starter Plates ("Frame"), both unweighted.
(ii) Experiment 2: A single Trestle compared with a Frame, both weighted (252Kg). (Experiment2)
(iii) Experiment 3: A three-bay Trestle Platform, a three-bay unbraced Kwik Kage System and a three-bay Kwik Kage System. Each bay was weighted with 252Kg. These systems were as follows:
(a) Trestle Platform – comprising three-bays and four Trestles fitted with removable uprights, front and end handrails (top and bottom), anti-flip brackets and scaffold boards.
(b) Unbraced Kwik Kage System – comprising three bays and four unbraced Kwik Kage Frames fitted with starter plates, removable uprights, front and end handrails (top and bottom), anti-flip brackets and scaffold boards (no cross-braces).
(c) Kwik Kage System – comprising three bays and four frames, (except for the absence of Kickboards) fitted with starter plates, removable uprights, front and end handrails (top and bottom), anti-flip brackets, scaffold boards and six cross-braces."
The Defendants' Application
The Claimant's Application
Jurisdiction to order specific disclosure
"In the Patents Court, PD63 paragraphs 6.1 to 6.3 will continue to apply under this Practice Direction with the following modification: unless the court expressly orders otherwise, no provision in this practice direction nor any disclosure order made under this Practice Direction will take effect as requiring disclosure wider than is provided for in PD 63 paragraph 6.1. "
"6.1 Standard disclosure does not require the disclosure of documents that relate to-
(1) the infringement of a patent by a product or process where –
(a) not less than 21 days before the date of service of a list of documents the defendant notifies the claimant and any other party of the defendant's intention to serve-
(i) full particulars of the product or process alleged to infringe; and
(ii) any necessary drawings or other illustrations; and
(b) on or before the date of service the defendant serves on the claimant and any other party the documents referred to in paragraph 6.1 (1)(a);"
"6.4 In all cases, an order for Extended Disclosure must be reasonable and proportionate having regard to the overriding objective including the following factors—
(1) the nature and complexity of the issues in the proceedings;
(2) the importance of the case, including any non-monetary relief sought;
(3) the likelihood of documents existing that will have probative value in supporting or undermining a party's claim or defence;
(4) the number of documents involved;
(5) the ease and expense of searching for and retrieval of any particular document (taking into account any limitations on the information available and on the likely accuracy of any costs estimates);
(6) the financial position of each party; and
(7) the need to ensure the case is dealt with expeditiously, fairly and at a proportionate cost."
"by no later than the time(s) set out in paragraphs 9.1 to 9.3, to disclose known adverse documents, unless they are privileged. This duty exists regardless of whether or not any order for disclosure is made;"
The legal principles underlying Mayne Pharma disclosure
"111. The relevant principles are uncontroversial. Although the voluntary disclosure of a privileged document may result in the waiver of privilege in other material, it does not necessarily have the result that privilege is waived in all documents of the same category or all documents relating to all issues which the disclosed document touches. However, voluntary disclosure cannot be made in such a partial or selective manner that unfairness or misunderstanding may result (Paragon Finance plc v Freshfields [1999] 1 WLR 1183 at page 1188D per Lord Bingham CJ).
112. Collateral waiver of privilege allows for documents and other material that would otherwise be non-disclosable on public interest grounds, to be required to be disclosed even though the individual with the right to withhold disclosure objects. The courts have therefore imposed certain constraints on collateral waiver.
113. The starting point is to ascertain "the issue in relation to which the [voluntarily disclosed material] has been deployed", known as the "transaction test" (General Accident Fire and Life Assurance Corporation Limited v Tanter [1984] 1 WLR 100 at 113D per Hobhouse J), waiver being limited to documents relating to that "transaction" subject to the overriding requirement for fairness. The "transaction" is not the same as the subject matter of the disclosed document or communication, and waiver does not apply to all documents which could be described as "relevant" to the issue, in the usual, Peruvian Guano sense of the term as used in disclosure (Compagnie Financière et Commerciale du Pacifique v Peruvian Guano Company (1882) 11 QBD 35).
114. … The purpose of the voluntary disclosure, which has prompted the contention that privilege in other material has been collaterally waived, is therefore an important consideration in the assessment of what constitutes the relevant "transaction" (see also Dore v Leicestershire County Council [2010] EWHC 34 (Ch) at [18]-[19] also per Mann J)."
"Patent cases are no different to any other cases in that documents recording activity undertaken for the purpose of litigation attract privilege. Until they are deployed, they remain privileged. Once deployed, the question as to the extent to which, if at all, the effect of doing so is also to waive privilege in any other documents or material. …. In patent cases, as in any other, the opposite party and the court must have the opportunity of satisfying themselves that "what the party has chosen to release from privilege represents the whole of the material relevant to the issue in question"."
The problem is how to define the boundaries of the material that is relevant to the issue put in question.
"Experimental evidence is intended to prove a degree of objective confirmation or corroboration of the subjective views of the experts. ….. It may provide, and from time to time does provide, a fixed point against which the experts may themselves be assessed. It is the one place in litigation of this class where an appeal to scientific technique is directly made. It is employed because it trumps the experts, however cogent their views may be."
" In my view, in the light of the restrictive approach from the general authorities and in the light of Mayne Pharma itself, the disclosure required to be given does not extend beyond materials recording preliminary investigation leading to the particular experiment which is deployed in evidence and does not extend to other parts of an overall experimental programme even if the design of the experiment in question may have drawn on earlier experiments. That narrow approach is consistent with the authorities above and which treat implied waiver of privilege restrictively in the general law."
"The lesson from the above discussion is clear. There is often no wholly incontestable way of treating one aspect of an experimental programme as completely separable from another. The present case is a good example of such a situation. Some aspects of an overall programme in a complex case may involve deciding what experiments to undertake and what criteria to employ. Some aspects involve undertaking experiments. Some involve interpreting the results. In such a case it can be much harder to identify even what would constitute unfair "cherry picking". Cases before this court may be unusual in which the experimental programme is completely straight forward. In many cases of which this case is, again, an example, it is rarely as easy to say whether there would be real unfairness in preserving privilege in part of a complex multifactorial programme of development of litigation experiments as it is in a simple case where privilege is asserted in test runs 1-9 of a standard test when only test run 10 is deployed. In a complex case, what is "workup" and what is not and what is "directly" related to experiments ultimately deployed may be terminology over which there can be such legitimate disagreement that an order to provide that gives rise to under -or - over disclosure."
"The general rule is that:
Where a person is deploying in court material which would otherwise be privileged, the opposite party and the court must have the opportunity of satisfying themselves that what the party has chosen to release from privilege represents the whole of the material relevant to the issue in question. To allow an individual item to be plucked out of context would be to risk injustice through its real weight or meaning being misunderstood."
"… I do not believe that the court should treat such a situation as one of implied or consequential waiver of privilege in a quantity of precursor or surrounding material, on the basis that later material relating to experiments has been disclosed and can be described as "relevant", "directly" relating to or "underlying" in some sense. That is so even where it may be possible to find the answers to some potential questions about the validity of the material actually deployed by rummaging around in the earlier material. That thinking is reinforced by the modern approach to disclosure and the move towards more bespoke solutions to the provision of information of which disclosure is only one way.".
"Finally, if the matter is approached in that way, greater and more specific attention can be given to the precise scope of implied or consequential waiver in the materials provided and for what purpose they are deployed."
The Claimants Application for Specific Disclosure
1.1 an unredacted copy of Section 1 and Appendix A of the report provided by the National Research Facility for Infrastructure Sensing ("the NRFIS Report") of 18 November 2022;
1.2 a copy of Section 2 of the NRFIS Report and/or any other section that removes redactions relating to non-confidential materials on the kickboard experiments, disclosed to the Claimant in the original Notice of Experiments or otherwise;
1.3 any data provided by the NRFIS in relation to the Experiments described in the NRFIS Report in Section 1 or Appendix A;
1.4 any report or data relating to any experiments or tests carried out to test the longitudinal stability or initial resistance to displacement of the KK 600 Main Frames described in the Re-Amended PPD; and
1.5 any report or data relating to any experiments or tests carried out in respect of the longitudinal stability or initial resistance to displacement of any builders' trestle which is shorter in height that the Trestle described in the Notice of Experiments.
The Parties positions on disclosure of any workup experiments
"The skilled person reading the '978 Patent would understand that builder's trestles have been used for many years in the context of low level working platforms, The skilled person would understand that a typical builder's trestle will have rigid "feet" at the base of each of its two uprights extending outwards from the trestle in the longitudinal direction (i.e. the direction along the platform), and that those feet will be braced with a diagonal base support to ensure that they have sufficient rigidity. The skilled person would also understand that the feet of a trestle would extend a sufficient distance as a proportion of the height of the platform in order to provide the longitudinal stability necessary for the platform to be used normally and safely for tasks such as bricklaying or blockwork."
Assessment of the Claimant's Application
"As I explained above in my analysis of normal infringement in the context of the '978 Patent, in my view, the skilled person would consider that the words "supported in use to make a platform" would require that the platform supported by the trestle has acceptable levels of longitudinal stability in the manner described above in the discussion of integer 1A of the '978 Patent: see paragraphs 333-355 above. The skilled person would further understand that the builder's trestle referred to at integer 1B would provide minimum acceptable levels of such stability.".
Unredacted Section 2 of the NRFIS Report
Reproduced paragraphs [37] – [82] from Magnesium Elektron Limited v Neo Chemicals & Oxides (Europe) Ltd (No.2) [2017] EWHC 2957 (Pat)
LAW
Principles
37.
The principles applicable to this case lie at the intersection of several areas of procedural law: (i) privilege (ii) waiver of privilege (iii) waiver of privilege in material relating to experiments pursuant to Mayne Pharma (iv) disclosure and alternatives. It is therefore necessary to say something about each of these areas in turn since they each have an impact on the approach that should be taken to Birss J's order. In doing so, I have drawn for illustrative examples on some of the additional authorities not specifically mentioned by the parties but cited in the text of which extracts were provided or in other cited cases.
(i) Privilege
38.
As counsel for MEL submits, legal professional privilege is a fundamental right, which has long been regarded as essential for the purposes of the rule of law and access to justice (see Three Rivers District Council v Bank of England (No. 6) [2004] UKHL 48, [2005] 1 AC 610, [23]-[34] (Lord Scott of Foscote) and General Mediterranean Holdings SA v Patel [1999] EWHC 832 (Comm), [2000] WLR 272, 280F-291E (Toulson J) where the principles were summarised.
39.
Lord Taylor of Gosforth CJ said in R v Derby Magistrates' Court ex parte B [1996] AC 487, 507:
"The principle which runs through all these cases, and the many other cases which were cited, is that a man must be able to consult his lawyer in confidence, since otherwise he might hold back half the truth. The client must be sure that what he tells his lawyer in confidence will never be revealed without his consent. Legal professional privilege is thus much more than an ordinary rule or evidence, limited in its application to the facts of a particular case. It is a fundamental condition on which the administration of justice as a whole rests".
40.
Legal professional privilege also extends to communications with a third party for the purposes of litigation because it is a single privilege encompassing both legal advice privilege and litigation privilege (see Three Rivers (No. 6) at [105] (Lord Carswell)). The strength of the principle is reinforced by the fact that, although legal professional privilege can be abrogated by statute, that can only be done by clear words (see General Mediterranean ). It is not possible for the court to create exceptions to it.
In addition to its substantive importance, these principles also inform the interpretation of provisions said to affect privilege. The House of Lords has held that construction of a statute needs to be done against the background of these principles where a proposed interpretation may place them in jeopardy. Thus, in Special Commissioner and Another, Ex P Morgan Grenfell & Co Ltd, R v. [2002] UKHL 21 (16th May, 2002), Lord Hoffmann said:
"7. Two of the principles relevant to construction are not in dispute. First, LPP is a fundamental human right long established in the common law. It is a necessary corollary of the right of any person to obtain skilled advice about the law. Such advice cannot be effectively obtained unless the client is able to put all the facts before the adviser without fear that they may afterwards be disclosed and used to his prejudice. The cases establishing this principle are collected in the speech of Lord Taylor of Gosforth CJ in R v Derby Magistrates Court, Ex p B [1996] AC 487 . It has been held by the European Court of Human Rights to be part of the right of privacy guaranteed by article 8 of the Convention ( Campbell v United Kingdom (1992) 15 EHRR 137; Foxley v United Kingdom (2000) 31 EHRR 637) and held by the European Court of Justice to be a part of Community law: A M & S Europe Ltd v Commission of the European Communities (Case 155/79) [1983] QB 878 .
8. Secondly, the courts will ordinarily construe general words in a statute, although literally capable of having some startling or unreasonable consequence, such as overriding fundamental human rights, as not having been intended to do so. An intention to override such rights must be expressly stated or appear by necessary implication. The speeches of Lord Steyn and myself in R v Secretary of State for the Home Department, Ex p Simms [2000] 2 AC 115 contain some discussion of this principle and its constitutional justification in the context of human rights. But the wider principle itself is hardly new. It can be traced back at least to Stradling v Morgan (1560) 1 Pl 199."
42.
The same must apply to construction of an order of the court and should inform what order a court should make in future. As to the approach to construction generally, that set out by the Privy Council in Sans Souci Ltd v VRL Services Ltd (Jamaica) [2012] UKPC 6 (7 March 2012) namely that a judgment may be used to construe an order is applicable in principle but is not of great assistance because Birss J did not address the specific point in issue here in his judgment.
(ii) Waiver of privilege
43.
While privilege is to the extent described above an absolute right, it may be voluntarily eroded or destroyed by waiver. The circumstances in which privilege is to be treated as waived is one of the age-old questions in civil litigation and often gives rise to difficulties. No less troublesome is the issue of scope of waiver of privilege: the effect of waiver of privilege in one document or part of a document on the privilege attaching to other documents or parts of them. An illustration of this comes from the treatment of the subject in Matthews & Malek on Disclosure, 5 th Edition (2017) ("Matthews & Malek") which says at para. 16.40 that where waiver of privilege before trial is concerned there is a conflict of authority "as to whether waiver is confined to the document or documents concerned…or goes wider [extending to "all material dealing with the transaction the subject of the documents concerned"]. It is well established that deployment of a document at trial may result in a waiver of privilege in other related material (see Nea Karteria Maritime Co v Atlantic & Great Lakes Steamship Corporation [1991] ComLR 138, 139 (Mustill J). The correct approach, derived from Nea Karteria, in such cases was summarised in Matthews & Malek in an oft cited passage:
"The general rule is that:
Where a person is deploying in court material which would otherwise be privileged, the opposite party and the court must have the opportunity of satisfying themselves that what the party has chosen to release from privilege represents the whole of the material relevant to the issue in question. To allow an individual item to be plucked out of context would be to risk injustice through its real weight or meaning being misunderstood.
The key word here is "deploying". A mere reference to a privileged document in an affidavit does not of itself amount to a waiver of privilege, and this is so even if the document referred to is being relied on for some purpose, for reliance in itself is said not to be the test. Instead, the test is whether the contents of the document are being relied on, rather than its effect . The problem is acute in cases where the maker of an affidavit or witness statement has to give details of the source of his information and belief, in order to comply with the rules of admissibility of such affidavit or witness statement. Provided that the maker does not quote the contents, or summarise them, but simply refers to the document's effect, there is apparently no waiver of privilege. This benevolent view has not been extended to the case where the maker refers to the document in order to comply with the party's need to give full and frank disclosure, e.g. on a without notice ( ex parte ) application".
44.
This passage has been regularly approved including by the Court of Appeal. For example, in Dunlop Slazenger International Ltd v Joe Bloggs Sports Ltd [2003] EWCA Civ 901 at [11] (Waller LJ) and it was said to be "a convenient summary of the principle and the effect of former cases" in Lucas v Barking, Havering & Redbridge Hospitals NHS Trust [2003] EWCA Civ 1102, [2004] WLR 220, [19] (Waller LJ).
45.
The passage nonetheless merits additional comment.
46.
First, notwithstanding the strength of the rule protecting legal professional privilege, once there has been deployment of some otherwise privileged material, the courts are reluctant to permit selective deployment. But, the passage gives no specific guidance as to what further material is required or a formula to determine precisely how the scope of the waiver is to be determined.
47.
Second, it has been repeatedly held (or it is implicit) that deployment of a document does not automatically open a floodgate to a wide destruction of privilege more broadly. The approach of Nea Karteria prevents individual documents or parts of documents from being put before the court so as to avoid the document deployed not being seen in its proper context. It is not, however, a rule which provides that, once a privileged document is deployed, all privileged documents related in some general way to that document or which can, in a general sense, be described as "relevant" to the issue must also be disclosed even if they deal directly with the subject matter in hand. That appears from Mustill J's consideration of two categories of documents in the Nea Karteria case itself. On one side were the questions put by a lawyer of which the answers were deployed so as to waive privilege in the answers: held - privilege waived in the questions as well. On the other side were instructions to the lawyer: held - privilege not waived in these documents forming part of the "prior history". Moreover, Mustill J referred to the proposition in the commonly cited passage as the principle "underlying the rule of practice exemplified by Bucknell v. British Transport Commission " [1956] 1 QB 187. In that much earlier case, a witness for the plaintiff was under cross-examination when counsel for the defendant asked him whether he had said X or Y in a statement. The witness agreed that he had. Counsel for the plaintiff then called for the statement but the defendant's counsel declined to provide it saying it retained its privilege. Production was ordered by Sellars J and the whole statement was put in evidence. The Court of Appeal unanimously dismissed an appeal. Denning LJ said at 190:
"…although this statement may well have been privileged from production and discovery in the hands of the [defendant] at one stage, nevertheless when it was used by cross-examining counsel in this way he waived privilege, certainly for that part which was used; and in a case of this kind, if the privilege is waived as to the part, it must, I think be waived also as to the whole. It would be most unfair that cross-examining counsel should use part of the document which was to his advantage and not allow anyone not even the judge or opposing counsel, a sight of the rest of the document, much of which might have been against him."
48.
The "whole" was the whole witness statement in that case. There was no suggestion that deployment of that statement would open up a range of other documents on the basis that privilege had been waived in them as well because they were directly related to the issue.
49.
However, in some cases citing the Nea Karteria passage, waiver of privilege in a document has been held to extend not just to the document as a whole but to other documents forming part of the transaction or communication in question. In Dunlop , where the rule was described as one designed to avoid "cherry picking", privilege was held to be waived in the whole of the communications, not just the whole of a single document. Thorpe LJ referred to "the whole of the privileged document or conversation which the contents have revealed" namely "documents relating to the communications surrounding the key date in February 2003 and redacting any advice to the defendants" at [19], although the court specifically excluded "advice from the solicitor i.e. client solicitor advice" (see e.g. at [17]). In one sense, of course, Nea Karteria was itself such a case of waiver of privilege in additional material but it was perhaps better seen as a situation in which a full set of both questions and answers was ordered to be disclosed in circumstances where a party was seeking to deploy the answers.
50.
It is at this point that difficulties set in with applying the proposition in Nea Karteria . As soon as it is accepted that privilege may have been waived in other documents forming part of a transaction or communication where one of the documents of that transaction or overall communication is deployed, the principle of implied or consequential waiver has broken loose from its narrow origins in Bucknell or Nea Karteria . Once it is free from the bounds of a document (or a question/answer session), working out precisely how it should be limited is not easy. That is made more challenging by reflecting on the fact that what is contemplated is an implied or consequential waiver of an absolute right which is otherwise regarded as particularly strong.
51.
The scope of this implied or consequential waiver is described in the case law in terms of potentially flexible meaning related to avoidance of unfairness. These terms have included: "unfair" to avoid parts of a document which might have been "against" the deployer being seen ( Bucknell ); "relevant to the issue… risk injustice…through real weight or meaning being misunderstood" ( Nea Karteria ); preventing "cherry picking" ( Dunlop ); "avoid unfairness or misunderstanding" ( Fulham - cited below, relying on Paragon also cited below) and various other ways in which the scope of waiver has been defined in the cases. Of course, what may be required to avoid unfairness in any given case is itself open to debate: one person's cherry picking may be another person's reasonable and proportionate putting forward of only that which is relevant.
52.
It is not possible to avoid these difficulties altogether by reference to waiver of privilege taking place in the "transaction" as a whole, since that begs a related question of how the boundaries of the "transaction" are to be determined. There is, as Matthews & Malek acknowledges at para. 16.40, "room for argument in any given case as to what constitutes the "transaction" in question" and whether, even if that can be determined, the boundaries of implied or consequential waiver of privilege are limited to that.
53.
A helpful illustration of these issues comes from the judgment of Mann J in Fulham Leisure Holdings Ltd v. Nicholson Graham & Jones [2006] EWHC 158. Although it was not discussed by the parties before me, the passage in Matthews & Malek which refers to it was not suggested to be wrong in summarising the issues by reference to this authority. It is more useful to reproduce an extract from the case itself, since it contains a review of other cases in which the principle is discussed and applied. Mann J said:
"11. Based on the authorities which I am about to refer to, it seems to me that the relevant process should be as follows:
i) One should first identify the "transaction" in respect of which the disclosure has been made.
ii) That transaction may be identifiable simply from the nature of the disclosure made – for example, advice given by counsel on a single occasion.
iii) However, it may be apparent from that material, or from other available material, that the transaction is wider than that which is immediately apparent. If it does, then the whole of the wider transaction must be disclosed.
iv) When that has been done, further disclosure will be necessary if that is necessary in order to avoid unfairness or misunderstanding of what has been disclosed.
That chain is not articulated in terms in the authorities to which I am about to refer, but it seems to me that it is apparent from it.
12. The starting point to me seems to me to identify what Hobhouse J called the "transaction" in General Accident Fire and Life Assurance Corp Ltd v Tanter [1984] 1 WLR 100. In that case Hobhouse J was dealing with a wide ranging request for disclosure and inspection of otherwise privileged documents (covered by legal professional privilege), on the basis of use of one note at a trial. Hobhouse J refused to order that disclosure, and in the course of his judgment he considered the then existing authorities on the point. At page 111, he cited part of the judgment of Cotton LJ in Lyell v Kennedy 27 Ch D 1, which he described as "the cardinal quotation":
"There was this contention raised, which I have not forgotten, that the defendant had waived his privilege, and therefore could not claim it at all. That, in my opinion, was entirely fallacious. He had done this, he had said 'Whether I am entitled to protect them or not I will produce certain of the documents for which I had previously claimed privilege – I will waive that and I will produce them' but that did not prevent him relying on such protection with regard to others which he did not like to produce. It is not like the case of a man who discloses part of a conversation and then claims protection for the remainder, and we think there is no ground for the contention that there has been here a waiver of privilege."
13. It is apparent from that that it is open to a party to disclose some but not all of the documents falling within a privileged category. If further authority for that proposition is required, it is to be found in Paragon Finance v Freshfields [1990] 1WLR 1183 at p.1188D where Lord Bingham of Cornhill CJ said:
"While there is no rule that a party who waives privilege in relation to one communication is taken to waive privilege in relation to all, a party may not waive privilege in such a partial and selective manner that unfairness or misunderstanding may result."
14. The question therefore arises as to where the boundaries of the waiver are, or are taken to be. The first boundary is defined by reference to the "transaction" in relation to which disclosure is made. In the course of his judgment in Tanter Hobhouse J summarised various principles which applied and they included the following (at pp.114 – 5):
"Sixth, by adducing evidence at a trial one does get involved in potential further waiver. The underlying principle is one of fairness in the conduct of the trial and does not go further than that. The fact that this principle does not arise unless you adduce the evidence at the trial is clearly stated in the judgment of Mustill J [in the Nea Karteria case] and it was clearly raised by the facts in the Doland case and it was likewise raised by the facts in the Great Atlantic and Burnell cases. Further, if the evidence is adduced, then the extent of the waiver relates to the transaction to which that evidence goes. The extent of the transaction has to be examined and where it is what somebody said on a particular occasion, then that is the transaction. It is not the subject matter of those conversations. It does not extend to all matters relating to the subject matter of those conversations." Hobhouse J's principles, including that one, were cited with approval by the Court of Appeal in Tanap Investments (UK) Ltd v Tozer (unreported, 11 th October 1991, Balcombe and Taylor LJJ). It is from his sixth principle that the need to identify the transaction is apparent. It is the first means of ascertaining what limits there are to the waiver that has been made.
15. Earlier passages in Hobhouse J's judgment shed light on what he means by the "transaction". At page 113 he considers the judgment of Mustill J in the Nea Karteria case and says:
"Furthermore, he applies what for convenience can be called a single transaction test. He looks to see what is the issue in relation to which the material has been deployed. He held that the issue was what was said at the meeting between the lawyer and the Greek seaman, and the correct evaluation of that meeting, but he did not accept that it extended to other matters which did not form part of the transaction…. Furthermore, it is central to Mustill J's judgment that you must define what is the subject matter with which you are concerned. He did not treat the subject matter as all the things about which the seaman spoke, but he merely treated as the subject matter what had been said on that occasion."At page 114C, applying his principles to the facts of his case (which involved the disclosure of information about one conversation) he said:"What will have happened is that the putting into evidence of that document will have opened up the confidentiality of that transaction. It has not opened up the confidentiality of later privileged communications….."
That process enables the parties and the court to identify how far the disclosing party has gone (it being that party's right to limit waiver if he wishes to do so).
16. A similar approach can be detected in the judgment of Auld LJ in the Factortame case, though he uses different language. In that case (of which only an unpaginated transcript was made available to me) he started his analysis by referring to the:
"…classic judicial statement of principle…of Mustill J in Nea Karteria at 139: 'Where a party is deploying in court material which would otherwise be privileged, the opposite party and the court must have an opportunity of satisfying themselves that what the party has chosen to release from privilege represents the whole of the material relevant to the issue in question. To allow an individual item to be plucked out of context would be to risk injustice through its real weight or meaning being misunderstood.'"The most obvious application of that principle is in relation to a single document, where a party waives privilege as to part of it but seeks to withhold the rest of it…... It also extends to attempted partial waiver of privilege in respect of certain of a number of documents relevant to the same issue or transaction. Of course, the scope for unfairness depends on the breadth of the matter in issue or their severability if more than one, and on the exact relationship and/or relevance to such issue(s) of the documents respectively disclosed and sought to be withheld. It may or may not be that partial disclosure of documents going to a matter or matters in issue, say in an exchange of correspondence with legal advisers, would be unfair."Much depends on whether the party making partial disclosure seeks to represent by so doing that the disclosed documents go to part or the whole of an 'issue in question', the expression used by Mustill J in the passage from his judgment in Nea Karteria that I have cited. The issue may be confined to what was said or done in a single transaction or it may be more complex than that and extend over a series of connected events or transactions. In each case the question for the court is whether the matters in issue and the document or documents in respect of which partial disclosure has been made are respectively severable so that the partially disclosed material clearly does not bear on matters in issue in respect of which material is withheld. The more confined the issue, for example as to the content of a single document or conversation, the more difficult it is likely to be to withhold, by severance, part of the document or other documents relevant to the document or conversation."
17. In that passage, Auld LJ refers to the "transaction" but he also uses the expression "issue", which was the word used by Mustill J in Nea Karteria. He is apparently using the same concept as that deployed by Hobouse J.
18. What those citations show is that it is necessary to bear in mind two concepts. First of all, there is the actual transaction or act in respect of which disclosure is made. In order to identify the transaction, one has to look first at what it is in essence that the waiving party is seeking to disclose. It may be apparent from that alone that what is to be disclosed is obviously a single and complete "transaction" – for example, the advice given by a lawyer on a given occasion. In respect of disclosure before a trial that may be all that the non-disclosing party has to go on, because a wider context may not yet be apparent (or at least not until the exchange of witness statements). This may explain the contrast that Hobhouse J drew between disclosure before a trial and deployment at trial. However, in order to ascertain whether that is in fact correct one is in my view entitled to look to see the purpose for which the material is disclosed, or the point in the action to which it is said to go. That explains at least some of the references to the "issue" or "issues" in the judgments of Auld LJ and Mustill J. Mr Croxford submitted that the purpose of the disclosure played no part in a determination of how far the waiver went. I do not agree with that; in some cases it may provide a realistic, objectively determinable definition of the "transaction" in question. Once the transaction has been identified, then those cases show that the whole of the material relevant to that transaction must be disclosed. In my view it is not open to a waiving party to say that the transaction is simply what that party has chosen to disclose (again contrary to the substance of a submission made by Mr Croxford). The court will determine objectively what the real transaction is so that the scope of the waiver can be determined. If only part of the material involved in that transaction has been disclosed then further disclosure will be ordered and it can no longer be resisted on the basis of privilege.
19. Once the transaction has been identified and proper disclosure made of that, then the additional principles of fairness may come into play if it is apparent from the disclosure that has been made that it is in fact part of some bigger picture (not necessarily part of some bigger "transaction") and fairness, and the need not to mislead, requires further disclosure. The application of this principle will be very fact sensitive, and will therefore vary very much from case to case, as Auld LJ observed in the first paragraph of his judgment cited above. It is in this sense too that the disclosure may be partial. It is part of some greater whole, not necessarily part of some larger individual transaction. I confess, with all due respect, to having had some difficulty in understanding precisely what he meant in the last sentence of the citation, but I think that my analysis is consistent with his judgment.
20. I think that the point can be illustrated by how the principles worked in the Factortame case itself. One of the issues in that case was whether or not the United Kingdom's infringement of community law was intentional or reckless. The government had received advice from time to time on the legality of the legislation, and that went to the issue I have just referred to. The Secretary of State waived legal professional privilege in respect of legal advice up to a date in October 1987, but did not waive it for advice given after that date. That limitation was challenged, and it was said that in the light of the way that it took place, there should "in fairness" also be disclosure for a later period. The Court of Appeal held that the limitation of disclosure was not inconsistent with principle. The Secretary of State expressly stated that he would not suggest at the trial that his conduct after the October date was governed by the disclosed legal advice received before that date. Auld LJ held that in the light of that:
"It is not a case of partial disclosure in relation to his conduct throughout the period in issue, but one of clear severability over two periods within it and of the disclosed and undisclosed documents relating respectively to each period. If the Secretary of State keeps to Mr Richards' word, I can see no unfairness to the applicants…. If the Secretary of State does not seek to take an unfair advantage of his partial discovery at the trial, whether as a matter of evidence or argument, the applicants would be entitled to invite the trial judge to reopen the matter and determine whether there should be further disclosure."Auld LJ did not at that point identify what the particular transaction was for these purposes, but it is to be inferred that it was one of two things. It was either the giving of advice on each relevant occasion, or, more likely, the giving of advice on the legal issue in question across the period in question, which presumably comprised several events. I say that the latter is more likely, because Auld LJ took the advice across the period as in effect one entity. One can only do that if one looks to some extent at the purpose of the disclosure, that is to say the reliance that would be placed on it in the proceedings. Since advice was only being relied on in order to support the government's case on its mental state for a certain period, that both defined and limited the transaction in question. However, if it were to transpire that use was to be made of the discovery outside that period and purpose, then it might transpire that that use would be unfair and that further matters would be opened up. Whether that is because the waiver would be taken to have been extended by virtue of the unfairness of limiting it, or whether it is because there is a separate principle of unfairness operating alongside or concurrently with the extent of the actual waiver, does not matter for these purposes. That is how the scheme seems to me to operate."
54.
As can be seen from this extract, Mann J did not find it wholly straightforward to reconcile the various authorities relating to this issue but drew from them an approach that involved identifying, first, the transaction and considering, second, whether there was any separate principle of unfairness operating alongside or concurrently.
55.
It is also useful to refer to one more case discussed by Mann J and referred to in Matthews & Malek to illustrate a further aspect of the application of Nea Karteria . In Fulham at [7], Mann J cited R v Secretary of State for Transport Ex parte Factortame [1997] EWHC Admin 445 (7 May 1997). In that case Auld LJ referred to Nea Karteria and said (in the passage following that cited in the judgment of Mann J above):
"28. As Mr Richards observed, all or most of the reported cases deal with narrow issues of that sort. See e.g. the Great Atlantic , per Lord Templeman at 536D-F; Konigsberg , per Peter Gibson J at 1265C-G; and Derby v. Weldon (No 10) , per Vinelott J at 918a-b. In Konigsberg the matter in issue was a transfer of land and the question was whether it was a gift or a sale. Peter Gibson J held that the party asserting that it was a sale and who had waived privilege in respect of a letter from her solicitor apparently supporting her case, could not claim privilege in respect of an affidavit sworn by him doubting it. Where the issue is broad, or there are several of them, or where the history giving rise to the litigation is long and/or complicated, partial disclosure which is clearly confined in its impact to one aspect of the case may well not require the all or nothing approach. In such a case it is not, in my view, apt terminology to ask whether a series of connected events or matters is a single "transaction" or series of separate "transactions" for this purpose. Where a party's conduct over a period of time is in issue the effect of partial disclosure of documents must depend on the particular facts of the case, usually as seen before trial in the pleadings and in other interlocutory battle-lines drawn by the parties.
29. As I have said, on this application Mr Richards has stated that the Secretary of State will not suggest at the trial that his conduct after 29th October 1987 in relation to the enactment and implementation of the 1988 Act was governed by the disclosed legal advice that he received before that date. It is not a case of partial disclosure in relation to his conduct throughout the period in issue, but one of clear severability of two periods within it and of the disclosed and undisclosed documents relating respectively to each period. If the Secretary of State keeps to Mr Richards' word I can see no unfairness to the applicants. The applicants and the Court know his stance, that of a party prepared to reveal the legal advice that he received as to his conduct over one period but not over another, with all the suspicion and adverse inference that that may engender. If the Secretary of State does seek to take an unfair advantage of his partial discovery at the trial, whether as a matter of evidence or argument, the applicants would be entitled to invite the trial judge to re-open the matter and determine whether there should be further disclosure."
56.
Mann J noted that Auld LJ said that this authority justified resolving the situation by reference to the principle of "fairness". Factortame is a further illustration of the issue, discussed in Nea Karteria and canvassed in argument on the present application, that one of the most relevant factors in determining whether privilege should be treated as impliedly or consequentially waived is the purpose for which the document in question was deployed and the consequences which may flow if privilege is asserted. Factortame is also a good example. The Court of Appeal extracted a heavy price from the Crown in its attempt to preserve privilege in later legal advice. The Secretary of State was, in effect, forced to disavow any intention of arguing that the more favourable advice given earlier represented the position at a later, and arguably more relevant, time. Moreover, the Court of Appeal recognised that asserting privilege may engender "suspicion and adverse inference".
Implied or consequential waiver
57.
One other point to emerge from Nea Karteria and illustrated elsewhere is that the court should treat the scope of waiver as determined in part by the scope of deployment. Again, Factortame provides a convenient illustration. Despite having disclosed the earlier privileged opinion, the Secretary of State was able to avoid disclosure of later privileged opinions by disavowing reliance on the earlier opinion as governing the later position. This shows that the approach to implied or consequential waiver is not necessarily a "once and for all" position where the court is required to determine, as a matter of quasi-historical fact, what the scope of waiver was. To the contrary, the law operates an element of consequential procedural control following deployment of a document where the scope of waiver is a function of the contents of the document and the nature of its deployment: "if you are going to rely on privileged document A to contend that it shows X, the scope of waiver is S(A,X); if you are going to rely on A to contend that it shows Y, the scope of waiver is S(A,Y) – which may not be the same". That is one reason why I have preferred to use the term "implied or consequential " waiver in this judgment.
58.
The authorities subsequent to Nea Kerteria are therefore consistent with this somewhat more sophisticated approach to implied waiver which does not depend on mere deployment alone but takes account of (a) the material of which the deployed document forms part and (b) the representations express and implied made by the act of deploying the document. Moreover, they recognize that the potential unfairness of selective disclosure can be mitigated in the possibility that adverse inferences in certain cases may (and I emphasise, may ) be drawn if privileged material is not disclosed. Moreover, some of the authorities are consistent with an approach that says that the scope of waiver will depend on what use is ultimately sought to be made of the material deployed which may not be self-evident before trial (see Factortame and to some extent in a different context Lucas v. Barking – see at [38]). Blanket waiver in classes of documents on the footing that part of the class has been deployed is not appropriate save in cases where, for example, a client is suing a solicitor and thereby putting the whole of the relationship in issue (see for example per Lord Bingham CJ for the Court of Appeal in Paragon Finance plc v Freshfields [1999] 1 WLR 1183 at 1188 and per Auld LJ in Facortame cited in Fulham above).
Relevance to specific contexts of waiver
59.
In my view, the general approach of the law to the issue of waiver of privilege discussed above should inform the approach taken to the key issues on this application: (a) interpretation of Birss J's order and (b) the extent to which further disclosure should be ordered. Just as the approach to protection of privilege informs the interpretation of provisions said to abrogate it, the approach to treating privilege as waived restrictively and, in particular, only in so far as necessary, should inform interpretation of provisions relating to that subject (see Morgan Grenfell above). That is, in my view, all the more so since, in cases of this kind, the court is concerned not with express but with implied or consequential waiver of privilege which takes place by a combination of a party's voluntary act of deployment and the operation of law in treating other matter as also subject to the waiver. This is a situation in which the limitation of a fundamental right of privilege by the voluntary act of a party should in my view only be implied to the extent necessarily consequential upon that act to achieve the Nea Karteria purposes.
60.
It is against that background of approaching the question of waiver of privilege narrowly and specifically in the general law that I turn to Mayne Pharma and the application of the principles to cases concerning experiments conducted for litigation.
(iii) Mayne Pharma disclosure relating to experiments in patent cases
61.
Before dealing with Mayne Pharma disclosure, it is necessary to make some preliminary observations about experiments and how they differ from other kinds of documents which may be deployed in litigation. In the case of experiments, identifying something analogous to a transaction and identifying unfair "cherry picking" can be a quite different exercise from that involved in determining whether additional documents in a commercial transaction should be disclosed. That said, experiments are not so different in kind to any other evidence adduced in litigation that an analogous approach to that taken with other documents should not apply.
The varieties of experiment
62.
Experiments are as diverse as the science that gives rise to them. The stereotype of a litmus test is far removed from the kinds of experiments normally deployed in patent proceedings. Such experiments can involve multiple stages and can be undertaken to test multiple propositions, including, quite frequently, the validity of the experimental protocol itself. Moreover, experiments in patent cases are often bespoke devised specially for the purpose of the case. Of course, in some situations, experiments can involve a standard say HPLC, NMR or mass spectrometer run using conventional equipment, but in many cases that is not so. Even where standard equipment is used, there may be many options available for testing a particular hypothesis including different ways of setting up and calibrating the equipment, different ways of preparing a sample under test, different test conditions, different approaches to interpretation of the results. Often where a suite of experiments is comparative as in this case, it may not be straightforward to devise a suitable test which may additionally involve identifying and sometimes producing for the first time reference standards, involving positive and negative controls, to ensure that a sample under test will be sensitively and specifically be identified as positive if and only if it has the relevant characteristics; in this case, having been produced by a specific process.
63.
All experimental protocols require some degree of validation. Sometimes this comes from material "external" to the experiments or is not in question: proof that HPLC equipment is suitable for separating substances of a given kind may not be provided by the experiments themselves but by the fact that this is a technique known for years. However, sometimes this comes from material "internal" to the experiments where an experimental protocol is validated or calibrated by running a series of samples with a known characteristic through the test to establish a single or multiple controls. Sometimes both. It is frequently the case that test protocols are modified or adjusted to improve their ability to deliver reliable results.
64.
Moreover, tests are usually run multiple times. In some cases, these are pure "dry runs" to check that the equipment is working and that the samples can in principle be analysed in that way. In other cases, they are multiple runs of the same experiment with the same sample, different samples, the same control different controls and so on. Some might be "trial runs". In some cases, it can be quite difficult to decide what is a "trial" run and what is a "real" run and, in cases where statistical validation may be required, what "n" is taken to be relevant may be of real significance. Test results are often analysed for statistical significance or even if that is not done formally, error bars are commonly produced from a set of variable results. It is not uncommon for a suite of test data from different individual sub-experiments to be aggregated in some way for the purpose of demonstrating a proposition. The question of what data should be aggregated can be a matter of legitimate scientific debate with arguments over whether doing so compounds or reduces errors, and so on.
Illustrations from the present case
65.
The present case presents a good example of the diversity of issues experiments can raise and the number of different stages involved in producing results. I describe this in general terms because of the confidentiality issues involved, without identifying any specific characteristics of the Experiments, samples or results but I have taken into account the greater detail from which this higher level summary is derived in the later application of the law to the facts.
Sample preparation
66.
Before getting to the nub of the Experiments themselves, there is a sampling protocol which has to be done and in this case was apparently designed to ensure among other things that the sample is not affected by powder loss, moisture ingress or contamination. There was a compositional analysis by X-ray fluorescence providing composition to a decimal place percentage. There was an analysis of specific surface area indicating some change after further calcination at a specific elevated temperature for a specific period. There was crystallographic analysis, which may or may not be open to different interpretations, as to whether or the extent to which calcination may or may not make a difference that is in any way significant to the characteristics and whether other calcination conditions may result in different characteristics.
67.
For the actual Experiments, there were decisions to be made as to whether Raman spectroscopy, TIIE and H 2 -TIR were appropriate tests at all for distinguishing routes of manufacture by reference (for example) to the different physical and chemical characteristics of the molecular structure including, specifically, that of the oxygen sub-lattice, the kinetics of oxygen exchange, and the redox characteristics, including the kinetics, of the final material. These are more sophisticated tests than those described in the Patent, which refers to X-ray crystallography for determining whether or not there is a single or twin crystalline phase in the material produced. Assuming that the basic premise of the experimental programme is correct namely that these analyses of the micro-structure and physical chemistry of the product can show up real differences in methods of manufacture in sufficient detail and with sufficient reliability, there are then further questions as to whether they are suitable for revealing specifically whether a method claimed in the Patent has been used or not.
68.
Once one gets into the experimental protocols themselves, other issues arise including, at the most basic level, the choice and method of creation of comparative reference samples as well as test sample preparation (such as calcination conditions). For example, in the Experiments, some samples used as comparators for the purpose of evaluating TP1 were made in accordance with the patented process but were additionally made in accordance with a set of other more specific conditions which are not described in the Patent and which are said to be highly confidential (samples S1, S2, S4 and S5 – details of which are themselves confidential). One of these comparative samples is described as "optimized product". Other samples were made using the patented process or processes that differed from the patented process to a greater or lesser degree. Again the extent to which there are or might be differences between these samples other than those specifically claimed in the Patent may be uncontroversial but may be a matter for considerable debate.
69.
That may be particularly the case with respect to one of the main comparative samples relied on, S8, which was made in accordance with an earlier process employed by MEL, used before the patented process was developed. In the Experiments, samples S3, S6, S7 and S8 were samples said not to be within Claim 1 of the patent (see e.g. Confidential Witness Statement of Martinez Arias 1, para. 3.69). So questions arising out of the Experiments may include whether TP1 was more or less similar in which test and by reference to what criteria than products said to be within or without the claims of the Patent respectively and the extent to which differences in methods of preparation other than those claimed could account for the differences/similarities.
70.
If the action proceeds, these may be matters for trial. I would emphasise that I am not saying that these are points which would inevitably arise although counsel for Neo drew attention to these issues in general terms particularly by reference to the criteria of similarity and dissimilarity employed in the expert reports relating to the Raman spectroscropy. I use them merely as illustrative of the kinds of points which could arise on the substantial range of Experiments of this kind, which produced data filling multiple lever arch files.
71.
Examination of the protocols, the expert evidence relating to them and the comments from the peer review experts recorded in the mass of material describing how the protocols were developed indicates that there were real choices to be made and that, for some of the tests, differences could be expected as a result of the type of preparation method employed and from changing parameters within the same method. It is also evident from the statements of the experts who conducted the tests that there was a dynamic exchange between a number of individuals providing technical input involving peer review experts and lawyers in developing and validating the protocols.
72.
One characteristic of the evidence before the court at this stage including the witness statements of the experts and Bould 5 is that there is, if anything, an unusually high degree of transparency as to how the experimental regime was developed, what was done, how it was refined and in some cases, candid discussion about the issues that may arise with respect to it. It therefore provides a useful insight into the issues that often arise in these cases.
73.
The upshot of this brief review is that trying to evaluate, in the terms of the existing case law, what exactly is "workup" or "preliminary" for what and how the boundaries between the various parts of the programme as a whole should be drawn is not straightforward.
Procedural aspects of experiments and the avenues for challenging them
74.
Next, the procedural rules governing experiments deserve mention. Experiments conducted for the purpose of litigation fall into two categories: those done and deployed pursuant to an order for service of a notice of experiments and those which are deployed but not subject to that procedure. Experiments falling into the latter category tend to be those conducted for preliminary purposes (such as preliminary injunctions or applications, as in this case, for permission to serve a defendant out of the jurisdiction). In the case of experiments subject to a notice of experiments, there is a procedure established under the CPR Practice Direction under Rule 63 of which the primary provision is as follows:
7.1 A party seeking to establish any fact by experimental proof conducted for the purpose of litigation must, at least 21 days before service of the application notice for directions under paragraph 7.3, or within such other time as the court may direct, serve on all parties a notice–
(1) stating the facts which the party seeks to establish; and
(2) giving full particulars of the experiments proposed to establish them.
75.
That does not apply to experiments not done under the notice procedure (as is the case here for the Experiments) but commonly parties will state what facts the experiments are sought to establish and there is no reason why the principles relevant to Mayne Pharma disclosure should not be the same.
Requirement to state facts to be established
76.
As to this requirement, the person seeking to adduce experimental evidence has to state in its notice what facts it seeks to establish by the experiments. In some cases, even with experiments subject to the notice procedure, in addition to explicitly stated facts, the party relying on them may seek to use the experiments to prove facts which may not be explicit but which may be important or essential to the evidential value of the experiments. Experiments sought to establish that practising the teaching of the prior art inevitably leads to something falling within the claims and therefore invalidates the claims of an asserted patent by anticipation are paradigm cases. Deployment of such experiments can involve two propositions: (i) that undertaking the prior art inevitably and straightforwardly produces a product falling within the claims and (ii) that the experiment or the precise conditions under which the experiment is run would inevitably be chosen by a person skilled in the art from the prior art. There may be further implicit facts involved. For example, in the case of an experiment which is run multiple times but which gives variable results, it may be implicit in deploying a given set of runs that the variation is not significant (albeit not always in a formal statistical sense) and that the set of data which has been provided for the purpose of the notice of experiments is fairly representative of all results obtained from experimental runs of that kind. Another example may be that the criteria employed to determine whether the experiment has "worked" are appropriate criteria. There are many other possibilities.
Right to repetition and to serve responsive notice
77.
For experiments subject to the notice procedure, an opposing party has a right to have the experiment repeated and to witness repetition (see CPD Practice Direction 63, para. 7.2). An opposing party also has a right to undertake and seek to adduce evidence of its own experiments, including experiments in reply to those done by the other side. That also applies to experiments not subject to a notice done for preliminary purposes.
78.
Undertaking and witnessing the repetition of experiments is often a costly exercise. If it can be shown at the outset that the experiment relied on has not (for example) been sufficiently validated, an opposing party may reasonably decide not to undertake that exercise but may, instead, criticise the experiments as not being probative for that reason. There are therefore good reasons for having complete information about this at as early a stage as possible.
79.
However, conversely, precisely because experiments are subject to challenge and often formal repetition, they are very different from (for example) a single document put forward as evidencing the nature of a transaction as a whole. Even if full data relating to an experiment is not put forward, there is often nothing to stop an opposing party running the same experiment and showing that it produces different results. Experiments are, to this extent, inherently more transparent than a good deal of other evidence.
Court control of experiments
80.
The courts have in the past given experiments in patent cases mixed reviews. On the one hand, in Electrolux , there was extended discussion of the often limited value of experiments ("…experiments frequently prove to be a waste of time and effort" per Laddie J at [1996] FSR 595 at 613). On the other in Mayne Pharma , Pumfrey J referred at [15] to experiments as potentially providing "a fixed point against which the experts may themselves be assessed". Whatever view one takes of experiments in general, in order to have value, experimental evidence should be as solid as possible and criticisms of protocols and their significance should ideally be revealed and ironed out well before trial.
81.
The court will exercise control over the admission of experiments (see CPD Practice Direction 63, para. 7.3): the freedom of a party to rely on any experiments it may have chosen to do is not unlimited. The court can refuse permission to rely on experiments if they are not likely to be of sufficient probative value. Again, if it can be shown that the experiments are unlikely to have significant value because the experimental protocol employed has not been adequately validated in important respects that may affect the court's decision as to whether evidence of them should be admitted at all given their value.
82.
The consequence of all these points about experiments, substantive and procedural, is that what it is fair and unfair to reveal or disclose – and what constitutes "cherry picking" has to be seen against a different background from that which arises in many other cases concerned with waiver of privilege.
