The first rule of fight club is you do not talk about fight club. In legalese, I guess you could call that a confidentiality clause. Among other clubs which have been relatively confidential, there is also, well… confidentiality clubs precisely.
A confidentiality club is an agreement between litigants, per which only specified persons (such as specified outside or in-house attorneys) are granted access to some documents. This can be a useful tool for protecting confidential information from being fully released to the other party, while at the same time making sure that the relevant evidence can be debated.
Although I understand that confidentiality clubs are common at least in the UK, the same cannot be said of France.
Courtesy of Denis Monégier du Sorbier, here is an interesting decision issued almost two years ago, which opens the door to such clubs in this country.
In this case, the Dutch company DSM IP Assets BV obtained ex parte orders for carrying out infringement seizures against three defendants (Univar, Novozymes Biologicals France and Novozymes France), in order to demonstrate infringement of one of their European patents. After the seizures were performed, the seized parties filed a motion in court in which they requested that the seized documents should be placed under seal, and that the orders authorizing the infringement seizures be modified.
Such a motion is handled in urgency proceedings by a single judge from the Paris Tribunal de grande instance (TGI), and it results in an order being issued.
It is well established that seized documents which are confidential in particular as they relate to technological or business secrets, and which are not relevant for the demonstration of infringement, should not be transmitted to the claimant. On the other hand, documents which are relevant for the demonstration of infringement are usually to be released to the claimant, even if they relate to technological or business secrets.
After a seizure, it is a common reaction by defendants to request that all documents be placed under seal. It is then usual for an expert to be appointed by the court to sort out the documents and issue an official recommendation as to which ones may be given to the claimant and may thus be part of the ensuing litigation.
This can be a long and cumbersome process, especially if the amount of documents to be handled is large (which can be the case if documents were seized in a digital form); and especially if the parties fight hard on every piece of information in front of the expert, or in front of the case management judge (whenever they claim that there are issues in the way the expertise is handled).
In the DSM v. Univar case, the judge started by rejecting Univar’s and Novozymes’ request to place all seized documents under seal. He noted the following:
[…] As rightly stated by DSM, it is clear that Univar simply made a list of seized documents and stated that they are all confidential, without explaining, document by document, what the nature or the reason of such confidentiality is.
Besides, it can be seen on the seizure report written in Fontenay Sous Bois that Ms. Theron, CEO, stepped in so as to redact mentions relating to the enzymes on the list of ingredients / food additives, to the amounts on the sales log and the purchases log, to the names of customers and to the turnover on the statement of sales per client, as well as invoices and delivery slips.
Similarly, it can be seen on the seizure report written in the secondary office in Lieusaint that Mr. Corby, head of the warehouse, stepped in so as to redact […] the names and addresses of recipients on delivery slips, and the products other than Lactozym Pure cited on the reception orders.
Thus, it should be emphasized that important information such as customers’ names, amounts of sales and products at stake is actually not accessible. If Univar’s representatives relied on confidentiality so as to redact some information, it can be assumed that the information that they allowed to be seized is not of a confidential nature preventing any disclosure.
Besides, a number of seized documents are public, as either they can be found on the internet, or they are enclosed with the marketed product, and nothing suggests that they may contain any secret information.
In summary, it is not sufficient for the defendants to simply ask for a blanket seal on everything, without specifying exactly which information is confidential and why – which makes a lot of sense.
There may be another lesson here for seized parties. Sometimes, some sorting out of confidential information and some redacting already takes place during the seizure itself. On the one hand, this may be the best way to prevent really sensitive information from leaking to the plaintiff. But on the other hand, this needs to be carefully done, as it may then be slightly more difficult to prove that non-redacted information should later be redacted as well.
Then comes the second and most interesting part of the decision, dealing with the defendants’ request for a modification of the seizure orders.
Among the various actions and measures authorized by the orders, one paragraph was about setting up a confidentiality club to handle evidence post-seizure. This is the paragraph that Univar et al. wanted to remove from the orders.
The judge held as follows:
[The defendants] claim that DSM, by inserting this mention “in the middle of the other requests in a unilateral and totally incongruous manner”, attempted to order a club which has no legal existence and no legal basis, and to which they firmly object.
They add that the notion of confidentiality club is unknown in our procedure, wherein an expert is appointed to select which documents should remain secret, that the practical terms of how it operates are inconsistent, and that such a club was recently refused in another similar case.
However, they underestimate the judge’s vigilance by thinking that an entire paragraph could elude his wisdom […]. Actually, if setting up such a club is indeed not provided in the statute, on the other hand it does not contravene the basic principles of our law, since it makes it possible for both parties, in an adversarial manner, to agree on the evidence which can be used in the litigation.
Moreover, it is of course not mandatory. It is clear that if the parties […] do not agree on setting up such a club, to which no attorney at law or patent attorney could possibly be forced, one of them can file a motion in front of the case management judge to request that an expert be appointed to sort out the exhibits and select those which should remain secret, and this is a solution which would then put the parties back on the usual track.
So, confidentiality clubs are possible in French patent litigation – although mention is made of another decision in which this option may have been rejected.
This is good news as it is an opportunity for parties to cooperate to a limited extent in order to streamline the proceedings and eliminate the additional cost and pains of formal discussions in front of an expert.
On the other hand, according to the order it is always possible for an uncooperative party to balk at joining the club and to have its case heard in front of an expert and/or of the judge at every step of the way.
Case management may be one of the weak points of patent litigation in France. It works well when the parties do cooperate. But it can be relatively easy for a party wanting to delay the lawsuit (often the defendant, but sometimes also the plaintiff) to disrupt the schedule by filing a number of motions, not complying with the deadlines set by the judge, etc. Such a rogue strategy may work to some extent as (i) the right to be heard is regarded by judges as a paramount principle and (ii) the court’s docket is usually more than full anyway, so that there is little incentive for them to force the parties to move on quickly.
Hopefully, confidentiality clubs may contribute to an overall increase in the efficiency of the system, by arousing a form of cooperation on side issues so as to focus on the real disagreement between the parties.
The real question though is whether they will catch on. Eric Halphen, the judge who issued the order in the case at hand, has left the IP chamber of the Paris TGI since then. We are thus looking forward to his colleagues’ position on such clubs for a streamlined fight.
CASE REFERENCE: TGI Paris, 3ème chambre 2ème section, ordonnance de référé, February 13, 2015, Univar et al. v. DSM IP Assets BV, RG No. 15/00822.