Research in Motion UK Ltd v (1) Inpro Licensing SARL and T-Mobile (UK) Ltd
| Jurisdiction | England & Wales |
| Judge | MR. JUSTICE PUMFREY |
| Judgment Date | 02 February 2006 |
| Neutral Citation | [2005] EWHC 2411 (Pat),[2006] EWHC 70 (Pat) |
| Docket Number | Case No: HC 05 C01175,Case No: HC05 C01175 |
| Court | Chancery Division (Patents Court) |
| Date | 02 February 2006 |
[2005] EWHC 2411 (Pat)
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
PATENTS COURT
Royal Courts of Justice
Strand, London, WC2A 2LL
Mr. Justice Pumfrey
Case No: HC 05 C01175
MR. ANTONY WATSON QC and MR. THOMAS HINCHLIFFE (instructed by Messrs. Lovells and Messrs Bird & Bird) for the Claimant/Part 20 Defendants
MR. JAMES MELLOR (instructed by Messrs. Decherts) for the Defendant/Part 20 Claimant
This is an application on behalf of Inpro Licensing SARL to postpone the trial of this action. The action is an action for infringement of patent and started life as a claim form issued on 9 th May 2005 for a declaration of invalidity and an order for revocation in relation to European Patent UK 092947. This patent whose title is “A Proxy-Server system for enhancing functionality of computers, accessing servers on the internet” is of direct relevance to what I shall for shorthand refer to as “the BlackBerry System”.
The grounds of invalidity served relied on five distinct items of prior art. They have been amended to shorten the list somewhat. The first hearing for directions took place before Laddie J on 16 th June. At that hearing the judge decided that this was an appropriate case for a trial according to the Patents Court streamline procedure. He therefore directed that “the trial should take place according to the streamline procedures as provided in paragraph 10 of the Patents Court Guide save that (a) cross-examination will be permitted” and subject also to various matters set out in the order which he made.
At that hearing it was contemplated that the defendant patentee (Inpro Limited, whose application this is) should serve its defence by 7 th July 2005 and, moreover, should make a Part 20 claim. It seems clear from his judgment and also from the transcript of the hearing that it was contemplated that an allegation of infringement should be made in relation to the BlackBerry System which is, let us say, provided (to use a neutral term) by Research In Motion Limited, the claimants, and which is made available to the public (to use a neutral term) by T-Mobile, the well-known service provider.
It was also clear by the hearing before Laddie J that the patent was going to be amended and so pre-emptive directions for amendment were made. The judgment which the judge delivered finally provided for, and the order provides for, a hearing to begin on 21 st November 2005.
At the hearing before Laddie J the claimant was represented by its then counsel, Mr. Kitchin QC and Mr. Hinchliffe and Inpro was represented by Mr. Burkill QC and Mr. Mellor. Passing events have ensured that the claimant has changed its leading counsel to Mr. Watson QC but nothing turns on that. Of particular importance is the fact that this trial was fixed for 21 st November. Mr. Burkill QC is also engaged in another action (which will be heard before me) which is starting on 31 st October. At the time when Laddie J made his directions it was estimated for 15 days, I believe, therefore coming to an end some time – but not a very long time – before the date fixed for the trial of these proceedings.
In late August this year the matter was mentioned to me as Vacation Judge on the question of timetabling. Both sides were conscious of the fact that I would almost inevitably be the judge taking the action and that, therefore, the two-day estimate for the trial was something which I should have an opportunity to consider. On that occasion I believe I am right in saying that Inpro were again represented by Mr. Burkill QC. The question of what the interplay would be between the earlier action involving Nokia and this action was gone into.
I considered, first of all, that the two-day estimate was, from my perspective at least in a case which involved cross-examination, unrealistic and I fixed the new estimate at five days. Mr. Burkill made it clear to me that there was an obvious problem with the Nokia case, a problem which I entirely agreed existed. In order to accommodate what could otherwise have been a very severe burden on Mr. Burkill, I put the case back for a week with a view to it starting on 28 th November. So it is presently in the lists for 28 th November. At that hearing it was not suggested to me that on that timetable —which allows not an enormous period of time between the estimated end of Nokia and the beginning of this action – there was any problem.
The position now is as follows. The duration of Nokia has been estimated as slightly in excess of 15 days, I believe 17, although with an action of that length one would have to say plus or minus one or plus or minus two days. This runs right up against the programme for the beginning of these proceedings. There is a gap but it is now urged upon me – for reasons to which I shall come – that the gap is entirely insufficient and the matter must be stood out.
The application to stand out is not made only upon the basis of counsel's convenience but upon a number of other bases as well which I should summarise. First, it is said that the claimant, RIM, has introduced new prior art into the proceedings. It is suggested that the new prior art, which necessitates close analysis by Prof. Eisenstein, the expert employed by Inpro, requires the detailed examination of very substantial documents which cannot be carried out by Prof. Eisenstein in the time available. I have examined both the manner in which this supposedly new prior art is introduced by Prof. Handley, RIM's expert, the purpose for which it has been introduced and the manner in which it has been introduced in the witness statement.
It seems to me that for whatever reason Prof. Eisenstein is labouring under a misapprehension as to the purpose of these citations and the manner in which they are to be dealt with. It is quite true that one of them, at least, is a very substantial book. The fact is, however, that that book is referred to merely by way of an exemplary reference to a matter which is said to be common general knowledge – as are the others – and the proposed close examination of that book together with a couple of other standards documents cannot and should not take Prof. Eisenstein (who will either regard them as matters of common general knowledge or not) too much time. It is certainly wholly unnecessary to subject them to a page by page analysis. I do not therefore regard the introduction of exemplary references in respect of the common general knowledge to provide any basis, certainly on their own, for an adjournment of this trial.
The next matter is one that I confess I had not entirely understood, which is a question of change of expert by the claimants. As I understand the position, the claimants have changed their expert in circumstances described as briefly as possible by Ms. Dagg in her witness statement in respect of which I have already made an order under CPR 31.22. The explanation is given without waiver of any privilege, but the fact is the claimants have changed their expert. Since the only prejudice which is said to arise is having to do a further search on the new expert's publications, this does not seem to me to be a matter which could ever justify the postponement of a trial either on its own or in combination with any other factor.
Of more substance perhaps is a complaint about the adequacy of the product and process descriptions provided by the respective defendants. In fact the inadequacies, insofar as they are material, arise in respect of matters which are not to do with the BlackBerry System at all. They are to do with other systems available on the various handsets with which this action will ultimately be concerned but which are not in any way the responsibility of RIM although they may no doubt be the responsibility of T-Mobile. The simple way of dealing with this is to take them out of the action and that I propose to do. The only proceedings in respect of which Laddie J's order was made were proceedings in which the urgency was an urgency communicated by RIM by in relation to RIM's product and it seems to me to be sensible simply to remove non-RIM products from the ambit of the hearing which I shall be conducting. The action will not be dismissed in respect of these matters. It will simply be adjourned in relation to them and I shall make an order for the trial of the issues arising in relation to the non-RIM issues for some other date. That then leaves a case in which the PPDs are substantially adequate.
The final matter to which I must turn is the one which in fact explains this application; that is the availability of leading counsel. The position is as follows. Mr. Burkill QC has appeared in front of the court twice on occasions when the trial was fixed, first, for 21 st November and, secondly, for 28 th November. There has not been thus far an indication —at least so far as the fixture of 28 th was concerned although certainly there was in relation to 21 st —that this would place him in personal difficulties so far as working the case up was concerned. This has now changed. As Mr. Duncan Lamont Black says in paragraph 23 of his witness statement:
“Mr. Burkill has concluded that (a) he will not be able to consider any of the new or outstanding matters raised by RIM or T-Mobile and (b) he will not be able to appear for Inpro at a late November/early December trial.”
This is a new development. The other aspect of this is that it is not possible to accommodate Mr. Burkill by putting the trial back for a week, which was the expedient I adopted last time because Prof....
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