Research in Motion UK Ltd v Visto Corporation
| Jurisdiction | England & Wales |
| Judgment Date | 06 March 2008 |
| Neutral Citation | [2008] EWCA Civ 153 |
| Docket Number | Case No: A3/2007/0854 |
| Court | Court of Appeal (Civil Division) |
| Date | 06 March 2008 |
[2008] EWCA Civ 153
IN THE SUPREME COURT OF JUDICATURE
COURT OF APPEAL (CIVIL DIVISION)
ON APPEAL FROM THE HIGH COURT OF JUSTICE
CHANCERY DIVISION (PATENTS COURT)
THE HON MR JUSTICE LEWISON
Royal Courts of Justice
Strand, London, WC2A 2LL
Lord Justice Mummery
Lord Justice Jacob and
Mr Justice Mann
Case No: A3/2007/0854
HC 06 C04227
Henry Carr QC and Adrian Speck (instructed by Taylor Wessing) for the Appellant/Defendant
Robin Dicker QC and Tom Hinchliffe (instructed by Allen & Overy LLP) for the Respondent/Claimant
This is the judgment of the Court to which all members have contributed.
This is Visto Corporation's (“Visto”) appeal from a decision of Lewison J of 4 th April 2007, EWHC 900 (Ch). Visto is a Californian company. The Respondent is Research in Motion UK Ltd, a subsidiary of a Canadian company, Research in Motion Ltd. We will call the UK company RIM. RIM itself has subsidiary companies in various European countries. We call these companies RIM Germany, RIM France, and so on. Mr Henry Carr QC argued the case for Visto; Mr Robin Dicker QC that for RIM.
Formally the appeal is now only about costs, but it involves much more than that. The case is yet another illustrating the unsatisfactory state of the current arrangements for deciding European wide patent disputes. Too often one finds parties litigating as much about where and when disputes should be heard and decided as about the real underlying dispute.
The case turns the application of a number of provisions of Regulation 44/2001 “on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters.” We set the relevant provisions out in an Annex.
The Regulation is substantially the same as that which it replaced, the Brussels Convention of 1968. Unfortunately neither document fully considered the problems posed by intellectual property rights. This is because at present such rights are national rather than EU rights. They are not only limited territorially, but exist in parallel. Neither the Convention nor the Regulation specifically considered how parallel claims are to be dealt with. They were constructed for the simpler and more ordinary case of a single claim (e.g. of a breach of contract or a single tort or delict) and provide a system for allocating where that single claim is to be litigated. Parallel rights cannot give rise to single claims: only a cluster of parallel, although similar, claims.
Intellectual property also adds three further complications. Firstly there is a range of potential defendants extending from the source of the allegedly infringing goods (manufacturer or importer) right down to the ultimate users. Each will generally infringe and the right holder can elect whom to sue. One crude way to achieve forum selection is to sue a consumer or dealer domiciled in the country of the IP holder's choice (jurisdiction conferred by Art. 2.1) and then to join in his supplier – the ultimate EU manufacturer or importer into the EU if the product comes from outside. Jurisdiction for this is conferred by Art. Thus there is considerable scope for forum shopping – the very thing the scheme of the Regulation is basically intended to avoid.
The second complication is that caused by a claim for a declaration of non-infringement. This remedy is necessary —a practical and sensible way for a potential defendant who wishes to ensure (normally before significant investment) that he is in the clear, is to seek a declaration that his proposed (or actual) activity does not fall within the scope of someone's rights. It is a way of making a potential patentee “put up or shut up”.
The third complication is that the ultimate court for deciding the validity of a registered national right (most importantly a patent), is only the national court of the country of registration. Those responsible for the Convention/Regulation did consider registered intellectual property rights, providing, in what is now Art. 22:
The following courts shall have exclusive jurisdiction, regardless of domicile:
4. in proceedings concerned with the registration or validity of patents, trade marks, designs, or other similar rights required to be deposited or registered, the courts of the Member State in which the deposit or registration has been applied for, has taken place or is under the terms of a Community instrument or an international convention deemed to have taken place.
Without prejudice to the jurisdiction of the European Patent Office under the Convention on the Grant of European Patents, signed at Munich on 5 October 1973, the courts of each Member State shall have exclusive jurisdiction, regardless of domicile, in proceedings concerned with the registration or validity of any European patent granted for that State
This provision is an incomplete way of dealing with IP: it does not cater for most of the common situations. Liability for patent infringement (we will confine our example to patents) depends on two things: the scope of the protection claimed and the validity of the patent: you can't infringe an invalid patent. The nature of a defence involves a spectrum of possibilities. At one end the defendant may simply say “What I do is outside the scope of the patent”. If that is all, then the dispute is simply about the scope of the patent and what the defendant does. At the other he may say: “yes, I accept that what I do is within the scope of the patent. But the patent is invalid.” Then the dispute is only about validity. Or the position may be a mixture of both. The defendant may run two defences, denying that what he does is within the scope of the patent and also contending that the patent is invalid. A particular (and often important) version of this intermediate position is where the defendant says “if the scope is wide enough to cover what I do, then the patent is invalid.” (This is sometimes called in England the “Gillette defence”– though in fact the court will have to rule on invalidity and scope).
Where a potential defendant takes this last kind of position he may well go on the offensive in two, combined ways. He will seek both revocation of the patent and a declaration of non-infringement.
Art.22 confers exclusive jurisdiction on a national court where validity is challenged. Difficult questions arose about this and were referred to the ECJ; see the ruling in Roche v Primus case, C-539/03 [2007] FSR 5. They still do, despite that decision, see the ruling of the Hoge Raad (Dutch Supreme Court) on 30 th November 2007 in Roche v Primus following the ruling of the ECJ.
There is also a potential fourth complication for IP rights, particularly patents, arising or possibly arising from the Convention, now Regulation. It is known as the “Italian torpedo”– a graphic name invented (we think) by the well-known distinguished scholar Prof. Mario Franzosi ( “Worldwide Patent Litigation and the Italian Torpedo” [1997] 7 EIPR 382).
It works in this way: suppose a potential defendant is worried about being sued for infringement. To prevent any immediate effective action against him he starts an action against the patent holder for a declaration of non-infringement in a country whose legal system runs very slowly. (When Prof. Franzosi wrote his article, Italy was notoriously slow, though it is our understanding that things have improved since then and are continuing to improve.) The putative defendant claims such a declaration not only in relation to the Italian patent, but also in relation to all the corresponding patents in other European countries. If sued in any of these countries he raises Art 27 of the Regulation saying: the issue of infringement and that of non-infringement are the same cause of action expressed differently. The courts of the slow member state are first seised of the action. So the courts of all other member states must, pursuant to Reg. 27, stay its proceedings.
The effectiveness of the Italian torpedo (and Belgian, for the courts of that country were once also slow) has been blunted by a number of decisions, particularly the Roche Primus case at European level, the decision of the Italian Supreme Court in Macchine Automasche v Windmoller & Holscher, 6th November 2003 and some decisions of the Belgian courts, particularly Roche v Wellcome 20 February 2001. But the torpedo is not completely spent. It still has some possibilities (or is thought to have some) in it, as this case shows. Mr Dicker explained why his clients will contend in Italy that Windmoller can be distinguished. We do not consider whether he is right or even whether he has any prospect of being right – it is not the business of this court to opine on what is obviously a matter for the Italian court.
Much ingenuity is expended on all this elaborate game playing. Despite the temptation to do otherwise, it is not easy to criticise the parties or their lawyers for this. They have to take the current system as it is and are entitled (and can only be expected) to jockey for what they conceive to be the best position from their or their client's point of view. Of course parties could, if they agreed, decide to abide by the result in a single jurisdiction (or perhaps take best out of three). Or they could arbitrate instead of plunging their dispute into the chaotic system which Europe offers them for patent disputes. But why should a party do any of these things if it thinks it has a better prospect commercially from the chaos? In some industries for instance, a patentee with a weak patent would actually prefer to be...
To continue reading
Request your trial
-
Vodafone GMBH v IV International Leasing
...court notes in passing that it has been referred by Vodafone GmbH to the decision of the English Court of Appeal in Research in Motion Ltd v. Visto Corporation [2008] EWCA Civ. 153, and in particular to the following observations of Mummery L.J., at para. 37: '[T]he application of art 28 [......
-
Loudmila Bourlakova v Oleg Bourlakov
...of the overlap and the expediency of a joint hearing. As the Court of Appeal explained in Research in Motion UK Ltd v Visto Corpn [2008] EWCA Civ 153; [2008] 2 All ER (Comm) 560, para 37, article 34(1) requires:“an assessment of the degree of connection, and then a value judgment as to the ......
-
The Public Institution for Social Security v Banque Pictet & Cie SA & Others
...to be heard together.” 124 In addition, there are two further authorities to which the Judge's attention was not drawn: Research in Motion UK Ltd v Visto Corporation [2008] EWCA Civ 153; [2008] 2 All ER (Comm) 560 (“ Research in Motion”) and Alfa Laval. Both support his analysis, in parti......
-
Mr Flavio De Carvalho Pinto Viegas and 1, 516 others v Mr José Luis Cutrale
...court must assess the degree of connection and make a value judgement ( Research in Motion UK v Visto [2008] 2 All E.R. (Comm) 560, [2008] EWCA Civ 153 § 37). The court can assess the degree of risk of there being findings or observations that could lead to irreconcilable judgments ( Rahm......
-
The Recast Brussels Regulation: Enhancing The Effectiveness Of Jurisdiction Agreements
...obstruction, and at taking advantage of the strictly applied lis pendens rule in Article 27. In Research in Motion v. Visto Corporation [2008] EWCA Civ153, the Court of Appeal noted "much ingenuity is expended on all this elaborate game playing...A party who fires an Italian torpedo may sta......