25 November 2020

'Attorney’s eyes only' principle

The disclosure process in litigation involves sharing documents with the opposing party (if those documents assist or harm either parties’ case), whether or not the information contained in those documents is confidential. Whilst disclosed documents cannot be used for any collateral purpose without agreement or a court order, it is not uncommon for parties to redact documents if parts are irrelevant and commercially sensitive, or seek to restrict access to specified individuals.

Under an ‘attorney’s eyes only’ (“AEO”) classification, access can be further restricted to just the receiving party’s external legal team and experts. This imposes a highly restrictive burden of sensitivity and modifies the usual professional obligations owed by lawyers to their clients. It is a balancing exercise between procedural fairness (a party is entitled to know and be able to respond to and to test the case being made against it) and maintaining the confidentiality of highly valuable commercial information.

Mitsubishi, Sisvel v Archos & Others (judgment here)

This ongoing case concerns the alleged infringement of three of the claimants’ standard essential patents (SEPs) in the mobile telecommunications industry. Confidentiality designations were established under a Confidentiality Order with 36 documents of ”utmost commercial sensitivity” (relating to ongoing licensing negotiations) classified as AEO. Solicitors of the defendants sought permission to reclassify the AEO documents to permit discussion and disclosure to their clients.

The Judge (Norris J) highlighted that, while parties are able to agree to AEOs, such designations are “serious departures from the ordinary procedures of the Court. They must be recognised as such, limited (where possible) and scrutinized for fairness (to the parties and to third parties swept into the litigation)”. Ultimately, the Court can decide whether to uphold AEO classifications.

In this case, the Judge permitted the request for the reclassification of 6 AEO documents and emphasised that:

  • Any defendant who sought to view the materials (excluding the legal team and experts) must either not be involved in the ongoing licensing negotiations or provide an undertaking to the claimants that they would cease their involvement in the negotiations;
  • Categorisation and subsequently objection to classification should be made on a document-by-document basis (i.e. not wholesale); and
  • It was irrelevant if the documents have already been disclosed under proceedings in other jurisdictions.

In November 2020, the Defendants appealed the Patent Court’s decision on a number of grounds, including the judge’s approach to AEO designations. Although the general principle is that an arrangement preventing the receiving party from accessing all documents of importance for Trial will be exceptionally rare, the disclosing party in this case demonstrated that anything less than AEO would not be sufficient to protect the information. Accordingly, the Defendants’ appeals were dismissed.

Had a split Trial been pursued (which is often favourable in intellectual property cases), this issue would not have required determining at this relatively early stage of the proceedings and before a finding of infringement. However, the Claimants were required to disclose highly confidential licencing documents at the outset in order to support their pleaded case for what would be considered FRAND terms.

What does this mean?

The Court has the ultimate say over whether materials should remain AEO classified. When negotiating and agreeing the classification of documents, it is important to consider each document on its own merit and to consider applying appropriate safeguards for the protection of the highly valuable information contained within those documents.

If you would like any further information, please contact Emily Roberts or Jeremy Dickerson, or your usual intellectual property team contact.

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