InterDigital Technology Corporation & Ors v OnePlus Technology (Shenzen) Co & Ors
[2023] EWCA Civ 166
Interdigital Technology Corporation & Ors v Lenovo Group Limited & Ors
27 March 2024
[2024] EWHC 742 (Pat)
High Court
Lenovo accidentally used secret documents from a previous court case in a new case. Even though they broke the rules, the judge let them use the documents because it wouldn't hurt anyone else and the new case was very similar to the old one. However, Lenovo has to pay for the mistake.
Key Facts
- •Lenovo used confidential documents disclosed in FRAND proceedings (proceedings 1) in subsequent proceedings (proceedings 2) against InterDigital.
- •Both proceedings involved the same parties (Lenovo and InterDigital) and concerned licensing of InterDigital's patent portfolio.
- •Proceedings 1 concerned licenses up to 31 December 2023, while proceedings 2 concerned licenses from 1 January 2024 onwards, including non-essential patents (NEPs).
- •Lenovo breached CPR 31.22 and a confidentiality protocol by using confidential license agreements (PLAs) in proceedings 2.
- •Lenovo amended its particulars of claim but InterDigital disputed that all confidential information was removed.
- •Lenovo sought retrospective permission to use the limited information from the PLAs in proceedings 2.
Legal Principles
The burden is on the applicant (Lenovo) to show special circumstances justifying collateral use of disclosed documents.
Tchenguiz v SFO [2014] EWCA Civ 1409
The rationale for restricting the use of disclosed documents is to protect privacy and encourage compliance with disclosure obligations.
Tchenguiz v SFO at paragraph 56
Retrospective permission is granted rarely and requires a higher bar than a timely application.
Schlaimoun v Mining Technologies International LLC [2012] 1 WLR 1276
Factors to consider for retrospective permission include prejudice to litigants, inadvertence of the breach, whether timely application would have been granted, and proportionality.
Schlaimoun v Mining Technologies International LLC [2012] 1 WLR 1276
Even if use was granted at the request of a judge in separate proceedings, it does not necessarily negate a breach.
Judge's comment in section 5
Outcomes
Lenovo's application for retrospective permission was granted, subject to conditions.
The court found that no substantive prejudice was caused to InterDigital or third parties, and that a timely application would likely have been granted. The court considered the close relationship between the two sets of proceedings and the inevitability of disclosure in proceedings 2. The court balanced this against the seriousness of the breaches.
Lenovo was ordered to pay InterDigital's costs on an indemnity basis and an interim payment of £80,000.
This was to reflect the seriousness of the breaches and to emphasize the importance of complying with CPR 31.22.
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