In an ongoing infringement suit in Syngenta Limited and Anr. vs GSP Crop Science Pvt. Ltd. [CS(COMM) 87/2020], concerning two process patents related to the manufacture of Azoxystrobin, the Delhi High Court directed the defendant, GSP Crop Science Pvt. Ltd., to disclose documents related to the technical features of its manufacturing process to the co-inventor of the suit patents. This directive was issued in compliance with the mutually agreed Terms of Reference (ToR).

Syngenta filed an infringement suit against GSP, alleging unauthorized use of its patented manufacturing processes. During the proceedings, both parties consented to appoint a scientific advisor and framed a detailed ToR to facilitate analysis for an interim injunction application.

The ToR had the following key clauses:

1. Sample Collection Process (Serial No. 11)
2. Testing (Serial No. 12): Access to testing information was limited to tier-1 confidentiality club members.
3. Records Collection (Serial No. 13): All records verified by the scientific advisor were open to the members of the confidentiality club.
4. Cost Allocation (Serial No. 14)
5. Constitution of the Confidentiality Club (Serial No. 15): A two-tier confidentiality club was established:
6. Tier-I: Comprising the scientific advisor and two external counsel from each party.
7. Tier-II: Including all members of tier-I along with two party representatives from each party.

The clause further stated that “confidential information” of the defendant could only be shared with tier-II confidentiality club members under the following conditions:

• Written mutual consent of tier-I confidentiality club members.
• If mutual consent was not provided or was refused, the requesting party was required to move an appropriate application before the Court seeking permission for disclosure.

The plaintiffs nominated Dr. Alan Whitton as their tier-II representative, who was a co-inventor of the suit patents and was previously employed as a process chemist for Syngenta’s group company in United Kingdoms. At the time of the proceedings, he was no longer an in-house employee of Syngenta but operated as an independent consultant. To address confidentiality concerns, he submitted an affidavit affirming that he would use the accessed information solely for analysis and not disclose it to anyone outside the Confidentiality Club.

During an inspection visit (by scientific advisor along with the tier-I members and Dr. Whitton), Dr. Whitton was denied access to the documents collected by the scientific advisor, prompting the plaintiffs to seek Court intervention under Section 151 CPC for enforcement of the ToR.

The defendant raised several objections including:

• Maintainability of the Plaintiff’s Application: The defendant contented that the plaintiffs were seeking production of documents, which should have been filed under a different provision.
• Fishing Expedition: The defendant contended that the plaintiffs were attempting a fishing expedition, seeking irrelevant and unnecessary information beyond what was required to establish infringement.
• Proprietary Information Concerns: The defendant argued that the requested records contained highly confidential and proprietary information, including supplier records and the technical features adopted by it.
• Risk of Information Leakage: The defendant raised concerns regarding confidentiality breaches and information misuse. The defendant argued that Dr. Whitton was a foreign resident, not directly controlled by Syngenta, and allowing him access could lead to a high risk of leakage or misuse of sensitive business data.
• Lack of Justification for Access: The defendant argued that the plaintiffs failed to justify why Dr. Whitton required access to the requested information.
• Interpretation of the ToR: The defendant contended that access to the requested documents was limited to tier-I members, relying on serial no. 15, which restricted confidential information from being shared with tier-II members without mutual consent or Court approval. Upon Court’s specific inquiry as to what constituted “confidential information”, the defendant vaguely submitted that all documents shared with the scientific advisor, including supplier records, should be treated as “confidential”.
• Violation of Section 104A of the Patents Act: The defendant asserted that compelling the disclosure of confidential records violated Section 104A of the Patents Act, which shifts the burden of proof in process patent infringement cases onto the defendant.

The Delhi High Court held that the plaintiffs’ application was maintainable as it sought enforcement of a court-recorded ToR, not fresh production of documents.

Further, the Court carefully examined the ToR and determined that serial no. 13 of the ToR, unlike serial no. 12, did not restrict access to Tier-I members. Additionally, the Court noted that serial no. 15 of the ToR imposed limitations only in respect of the defendant’s “confidential information”. The Court clarified that serial no. 13 categorically allowed access to records for members of the confidentiality club, therefore, denying tier-II members access to these documents would be inconsistent with the agreed terms. The Court emphasized that if GSP intended to restrict access further, it should have done so explicitly in serial no. 13, as it had in serial no. 12. Since no such limitation was included, the Court held that tier-II members were entitled to access the records.

The Court also addressed concerns regarding Dr. Alan Whitton’s credentials, stating that his nomination complied with Rule 11 of the High Court of Delhi Rules Governing Patent Suits, 2022. According to the said rule, a person who is not in charge of, or active in, the day-to-day business operations and management of the respective parties can be nominated as a representative. Since Dr. Whitton was not engaged in Syngenta’s daily business affairs and was now an independent consultant, his appointment met the necessary criteria.

To further safeguard confidentiality, the Court noted that adequate protective measures were already in place. It highlighted that Dr. Whitton had submitted a confidentiality affidavit under Chapter VII Rule 17 of the Delhi High Court (Original Side) Rules, 2018, which bound him to strict confidentiality obligations. The Court found this sufficient to mitigate concerns regarding potential misuse or leakage of confidential information.

The Court also dismissed the defendant’s argument that sharing the requested information with Dr. Whitton would violate Section 104A, as the burden of proof had already been shifted to the defendant via prior Court orders.

Furthermore, the Court addressed the defendant’s objection that the plaintiffs had not provided sufficient justification for Dr. Whitton’s access. The Court referred to Dr. Whitton’s affidavit wherein he had confirmed that the information would be used solely for the purpose of his analysis within the present litigation. The Court concluded that his analysis was essential for the plaintiffs to effectively present their submissions in support of their interim injunction application.

In view of the foregoing, the Delhi High Court directed the defendants to supply the requested information while allowing them the option to redact supplier records.