J.C. Bamford Excavators Limited v Manitou UK Limited (1) and Manitou BF SA (2) [2023] EWCA Civ 840

This article first appeared in the Intellectual Property Forum journal, published by Intellectual Property Society of Australia and New Zealand. Lucie Fortune, Current Developments – Europe: United Kingdom: Court of Appeal considers balancing act between confidentiality and open justice’ (2023) 134 Intellectual Property Forum.

In this decision, the UK Court of Appeal considered the balancing act that is necessary between the private interest of confidentiality and the public interest of open justice. Although the confidential information of parties to litigation, particularly in patent infringement cases, should be sufficiently protected to enable full disclosure so that the issues can be addressed wholly by the courts, there may be instances where the principle of open justice is more important than keeping that information confidential. However, in this case the Court of Appeal overturned the High Court’s first instance decision that the defendant’s confidential information should be published in a public judgment, instead ordering that it be redacted. In its judgment, the Court of Appeal runs through the principal authorities regarding confidentiality and trade secrets and provides a useful summary of the various considerations at play for practitioners tackling these issues.

Background

J.C. Bamford (‘JCB’) commenced High Court proceedings against its long-standing competitor Manitou, alleging that Manitou had infringed four of JCB’s patents. These patents related to construction vehicles known as telehandlers, which feature a four-wheel chassis, a cab for the operator and an extendable arm which can be raised or lowered. Manitou denied infringement and counterclaimed for revocation of JCB’s patents.

One of the allegations of infringement related to a control system which was currently in use on the majority of Manitou’s telehandlers, known in the proceedings as ‘Configuration C’. In the course of the first instance proceedings, Manitou served a product and process description (a ‘PPD’), as is common in patent infringement proceedings in the Courts of England and Wales, describing the relevant features of Configuration C (as well as four other configurations – A, B, D and E). Manitou claimed that large parts of the PPD were confidential as were parts of other documents in the case, such as the statements of case, witness statements, expert reports and skeleton arguments. Before trial, the parties agreed to certain limited people on both sides having access to Manitou’s confidential information in the case through a ‘confidentiality club’.

At trial, the Judge made an interim order under Civil Procedure Rules (‘CPR’) rule 31.22(2) to preserve the confidentiality of Manitou’s information until after judgment. Most of the first instance trial hearing was public, but parts of the hearing took place in private.

In its substantive judgment, the High Court held that one of JCB’s patents, EP 2 616 382, was valid and infringed by one of Manitou’s telehandler control systems, Configuration D, but not by Configuration C or the other configurations. The Judge’s reasons regarding infringement were set out in a confidential annex to the judgment (the ‘Confidential Annex’) due to Manitou’s claim to confidentiality. At the form of order hearing after judgment, Manitou sought a permanent order under CPR 31.22 in respect of various documents, including the Confidential Annex, but JCB disputed that much of Manitou’s information was confidential.

The main issue in dispute regarding confidentiality was how to deal with information concerning the way in which Configuration C works, and in particular the key criterion it uses (referred to as ‘Criterion X’). The first instance Judge decided that, although this information was confidential the principle of open justice trumped Manitou’s claim to confidentiality and therefore the relevant information should be published in unredacted form in the public version of the judgment. Manitou appealed and this publication was stayed pending determination of the appeals.

Issues

The issues raised by this case involve a balancing act between Manitou’s private interest in protecting its allegedly confidential information and the public interest in open justice.

Is the information confidential and/or a trade secret?
JCB appealed against the finding at first instance that Manitou’s information was confidential. In considering this question, the Court of Appeal started with the elements necessary for a breach of confidence claim:

First, the information itself… must ‘have the necessary quality of confidence about it’. Secondly, that information must have been communicated in circumstances importing an obligation of confidence. Thirdly there must have been an unauthorised use of the information to the detriment of the party communicating it.¹

The Court then outlined that no claim of confidentiality can be maintained if information contained in a document can be readily obtained by inspecting a publicly accessible article. However, ‘relative’ confidentiality can be claimed if the information can only be obtained from the article by a process of reverse engineering which takes time, effort and skill. The significance of this confidentiality being ‘relative’ is that it affects remedies – in particular, any injunction granted should only last for a period corresponding to the advantage the defendant obtained by taking a short cut (often known as a ‘springboard’ injunction).²

The Court of Appeal commented that, although the parties used the term ‘confidential information’, the more accurate term in these circumstances was ‘trade secrets’ and therefore the Court should have regard to both the Trade Secrets Directive³ and the Trade Secrets Regulations⁴ (which implement the Trade Secrets Directive in the UK), even though neither were strictly applicable in this case as there was not any claim of unlawful acquisition, disclosure or use of a trade secret.⁵

Manitou argued that the design and implementation of Configuration C (particularly Criterion X) was commercially sensitive and that disclosure of it to competitors would risk unjustifiably eroding a competitive advantage that Manitou currently possesses. On the other side, JCB argued that Criterion X was not confidential because it could be deduced by a process described by their expert at trial, Professor Plumber. Professor Plumber stated that a skilled person would know that the Configuration C system has a threshold which varies with the angle of the arm, and that there are a number of parameters which vary arm angle. It would be very clear from a detailed inspection of Manitou’s machine that certain parameters can be ruled out after which, Professor Plumber claimed, it would occur to the skilled engineer what the further parameter would be, i.e. Criterion X. Therefore JCB claimed that Criterion X could not amount to confidential information because either:

1. 1. it could be deduced simply from a detailed inspection of the relevant telehandlers as described by Professor Plumber; or
   2. it could be deduced by the same process which might be more accurately described as ‘reverse engineering’.

The Court of Appeal rejected this argument. The Court agreed with Manitou that the information about Criterion X contained in documents has relative confidentiality even though it could be deduced by someone who undertook the process described, because it was commercially sensitive information and the possession of the documents provides a short cut to that information. Even if any injunction granted to prevent a defendant from using this information might only last a number of days or weeks, the information was still confidential.

This conclusion is also consistent with the Trade Secrets Directive and Trade Secrets Regulations which make clear that although it may be lawful to acquire trade secrets by reverse engineering, it is not lawful to acquire trade secrets through unauthorised access to confidential information recording them (Article 4 of the Trade Secrets Directive).

Therefore the Court of Appeal dismissed JCB’s appeal and affirmed that the information was confidential.

Should the confidential information be published in the public judgment?
The Court of Appeal next turned to whether, notwithstanding the confidentiality of Manitou’s information, it should be published in unredacted form in a public judgment. The Court reiterated that open justice is a fundamental principle of English law. As set out in the Supreme Court case Dring v Cape Intermediate Holdings Ltd [2019] UKSC 38 at [42]–[43], there are two main purposes of the open justice principle:

The first is to enable public scrutiny of the way in which courts decide cases—to hold the judges to account for the decisions they make and to enable the public to have confidence that they are doing their job properly.… the second goes beyond the policing of individual courts and judges. It is to enable the public to understand how the justice system works and why decisions are taken. For this they have to be in a position to understand the issues and the evidence adduced in support of the parties’ cases.

The open justice principle also applies to judgments. In R (on the application of Mohamed) v Secretary of State for Foreign and Commonwealth Affairs (No. 2) [2010] EWCA Civ 65, Judge CJ said at [41]:

…where litigation has taken place and judgment given, any disapplication of the principle of open justice must be rigidly contained, and even within the small number of permissible exceptions, it should be rare indeed for the court to order that any part of the reasoning in the judgment which has led it to its conclusion should be redacted.

However, under CPR 31.22(2) the Court may make an order restricting or prohibiting the use of a document which has been disclosed, even where the document has been read to or by the court, or referred to, at a hearing which has been held in public. CPR 31.22 is particularly relevant in patent infringement proceedings, where one or both parties typically disclose important details about their technology which are often highly commercially sensitive. Usually, the party seeking to establish confidentiality must give specific reasons why it would be damaged by the publication of the information it seeks to protect.

Manitou’s appeal

On appeal, Manitou argued that the first instance Judge erred in principle by wrongly finding that the public’s need to understand the Judge’s reasoning on the issue of infringement was more important than Manitou’s right to protect their confidential information.

The Court of Appeal stated that the starting point should be, as identified by the Judge at first instance, the open justice principle, which applies with particular force to judgments explaining the reasons for a decision. The Court of Appeal rejected arguments made by Manitou that they were in effect more deserving of a confidential information designation – namely because they were found not to have infringed a patent by the machines to which the confidential information relates and because they were the defendants to litigation – the Court holding that both of these considerations were irrelevant.

However, the Court of Appeal said that the crucial point was to correctly characterise Manitou’s claim. Taking all the facts into account, the information which Manitou sought to protect as confidential was technical information devised by a skilled engineer which on the evidence:

1. 1. is not public knowledge,
   2. complies with relevant standards, and
   3. has been devised to avoid infringement of JCB’s patent, and therefore
   4. is reasonably considered by Manitou to give them competitive advantage against third parties.

Although counsel for Manitou had not argued the application involved a claim for trade secrets, the Court of Appeal was satisfied that it did.

The Court of Appeal explained:

…open justice must only give way to the protection of trade secrets when, and to the extent that, this is necessary. Where it is necessary to protect trade secrets, however, open justice must give way to a still greater principle, which is justice itself.

Accordingly, the Court allowed Manitou’s appeal and made a permanent CPR 31.22(2) order in respect of the parts of the relevant documents, including the Confidential Annex to the Court’s judgment, which include Criterion X.

Comment

This decision will come as a great relief to Manitou who will not have their confidential information published in a public judgment after all. More generally, it confirms the need for parties to think carefully about the information which they claim to be confidential during court proceedings. Not only will a party need to satisfy the court that their information has the relevant qualities that render it confidential or a trade secret, in order to avoid the information’s disclosure the court will also need to be satisfied that the private interest in keeping it confidential trumps the public interest in open justice, which is a high bar.

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¹ Coco v A.N. Clark (Engineers) Ltd [1969] RPC 41, 47, approved in many subsequent cases including by the House of Lords (now the Supreme Court) in Douglas v Hello! Ltd (No 3) [2007] UKHL 21.

² Terrapin v Builders Supply Co (Hayes) [1967] RPC 37 as analysed in Vestergaard Frandsen A/S v Bestnet Europe Ltd (No 2) [2009] EWHC 1456 (Ch).

³ European Parliament and Council Directive 2016/943/EU of 8 June 2016 on the protection of undisclosed know-how and business information (trade secrets) against their unlawful acquisition, use and disclosure.

⁴ Trade Secrets (Enforcement, etc.) Regulations 2018 (SI 2018/597).

⁵ A ‘trade secret’ is defined in the Trade Secrets Directive, Article 2 as: ‘information which meets all of the following requirements: (a) it is secret in the sense that it is not, as a body or in the precise configuration and assembly of its components, generally known among or readily accessible to persons within the circles that normally deal with the kind of information in question; (b) it has commercial value because it is secret; (c) it has been subject to reasonable steps under the circumstances, by the person lawfully in control of the information, to keep it secret’.