Research in Motion UK Ltd v Visto Corporation
| Jurisdiction | England & Wales |
| Judge | MR JUSTICE LEWISON,Mr Justice Floyd,MR. JUSTICE ARNOLD |
| Judgment Date | 05 December 2008 |
| Neutral Citation | [2007] EWHC 900 (Pat),[2008] EWHC 335 (Pat),[2007] EWHC 1921 (Pat),[2008] EWHC 819 (Pat),[2008] EWHC 3026 (Pat) |
| Docket Number | Case No: HC 08 C02901,Case No: HC-06-C03912,HC06CO4227 |
| Court | Chancery Division (Patents Court) |
| Date | 05 December 2008 |
[2007] EWHC 900 (Ch)
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
The Royal Courts of Justice
The Strand
London
Mr Justice Lewison
HC06CO4227
Mr Robin Dicker QC and Mr Tom Hinchcliffe (instructed by Allen & Overy LLP) appeared on behalf of the Claimant Mr Adrian Speck (instructed by Taylor Wessing) appeared on behalf of the Defendant
Visto counterclaims against RIM for having started proceedings in Italy seeking declarations of non-infringement of certain designations of one of Visto's European patents.
Visto alleges that the Italian court has no jurisdiction to entertain RIM's claim and that RIM knows that perfectly well. Accordingly, in this action Visto counterclaims damages under Article 96 of the Italian Civil Procedure Code; alternatively under the English law of tort, the relevant tort being abuse of process.
Which is the appropriate court to determine whether the Italian court has jurisdiction to entertain the claim and whether the processes of the Italian court have been abused? Put in that way, the answer is obvious: the Italian court. Hence RIM apply under Article 28 of Council Regulation 44/2001 (the judgments regulation) for dismissal or stay of the counterclaim.
Article 28 provides as follows:
“1. Where related actions are pending in the courts of different member states any court other than the court first seised may stay its proceedings.
“2. Where these actions are pending at first instance any court other than the court first seised may also, on the application of one of the parties, decline jurisdiction if the court first seised has jurisdiction over the actions in question and its law permits the consolidation thereof.
“3. For the purposes of this Article actions are deemed to be related where they are so closely connected that it is expedient to hear and determine them together to avoid the risk of irreconcilable judgments resulting from separate proceedings.”
Thus the power can be exercised only where there are related actions and only by a court other than the court first seised.
The first step, as it seems to me, is to identify which actions are the related actions. The relevant procedural chronology is as follows:
(a) On 5th December 2006 RIM began an action in this court seeking a declaration of non-infringement of the UK designation of Visto's European patent. The claim was made under section 71 of the Patents Act 1977;
(b) On 21st December 2006 RIM amended its particulars of claim, claiming in the alternative, a declaration of non-infringement under the inherent jurisdiction of the court;
(c) On 27th December 2006 RIM began proceedings in Italy in the District Court in Milan. These proceedings claim revocation of the Italian designation of Visto's European patent and declarations of non-infringement in relation to Italy, Germany, France, Spain, and the Dutch and Belgian designations;
(d) On 2nd February 2007 Visto served the defence and counterclaim in the English action.
The relevant parts of the defence read as follows:
“2. This action was started without giving the defendant or its advisers any opportunity of considering the product and process description, nor any other description of the products and software in relation to which the claimant seeks declaratory relief.
“3. Further, this action has been started by the claimant relying upon statements made by representatives of the defendant which were made before or shortly after litigation was started in the United States and which clearly relate to the issues and patents in that action and which were made at a time before the patent ensued in this action was even granted. There is no reason to believe that the statements made were intended to relate to this particular patent of the defendant, and the claimant has used them solely as an excuse to start this action as part of the concerted effort referred to below.
“4. Yet further, the action has been started and is being pursued in relation to only some of the claimant's offering in the United Kingdom. The claimant has deliberately left out of the claim for a declaration of non-infringement software, namely BlackBerry Mail Connector, which when used with the claimant's hardware and other software does infringe the patent in suit.
“5. Moreover this action has been started and is being pursued as part of a concerted effort to seek any kind of relief from a court with a view to counteracting the commercial uncertainty and its publicity that arises by virtue of the litigation between the defendant and the claimant's parent company in the United States in respect of different patents owned by the defendant.
“6. On 27th December 2006 and shortly after this action was started and pursuant to the said concerted effort the claimants, together with related companies, started an action in the court of Milan, Italy. In that action, the claimants, including the claimant in this action, seek revocation of the Italian designation of the European patent, the subject of these proceedings. They also seek a declaration of non-infringement in respect of the Italian designation of the said European patent and designations of the said European patent in Belgium, France, Germany, Holland and Spain (that is every significant country designated other than the United Kingdom) and in particular all such jurisdictions where rapid relief is available to a patentee, whether by way of final relief in an infringement-only trial, or preliminary measures or remedies including procedures such as court gaining and saisie contraire faisant and similar relief now available in the courts of Spain.
“7. The claimant knows full well that the action in Italy, insofar as it seeks to claim a declaration of non-infringement in relation to the non-Italian designations, is spurious and contrary to European law on jurisdiction.
“8. However, the claimant has started the action in Italy purporting to seek relief in respect of designations other than the Italian designation deliberately with a view to preventing any infringement action being taken in respect of the same in those other jurisdictions by virtue of the existence of the Italian proceedings. The claimant knows and intends that the Italian proceedings will be slow moving and that it will take a considerable amount of time for the Italian court to even determine the question of jurisdiction over a non-infringement claim in respect of non-Italian designations.
“9. In support of the allegation that the Italian proceedings are a stifling device, the defendant relies upon the fact that if the claimant had believed that European law allowed non-infringement claims such as the one brought in Italy and if it had genuinely wanted such claims determined expeditiously it would have brought them in this action which was commenced first in time and which sought a declaration in respect of the UK designation. It did not do so because it was aware that this honourable court would rapidly decline jurisdiction and thereby not give any significant hindrance to the ability of the defendant to bring an infringement action in those other jurisdictions if so advised.”
Paragraph 10 then summarises these contentions. Paragraph 11 alleges that:
“Accordingly the court ought not to exercise its inherent jurisdiction to make declarations.”
Paragraph 12 makes the same plea in relation to the discretion to make a declaration under section 71 of the Patents Act 1977.
I should say for the record that RIM denies the truth of the allegations about its motivation and its state of knowledge about the alleged invalidity of the Italian proceedings, but for the purposes of this application I must proceed on the basis that the allegations at least may be true.
The counterclaim filed along with the defence sets out an allegation of infringement. It then continues as follows:
“31. Paragraphs 2 to 10 above are repeated.
“32. The commencement of the aforesaid proceedings in Italy are unlawful.
“33. If the proper law of the tort is Italian the defendant relies upon Article 96 of the Italian Civil Procedure Code which provides for damages to be payable for litigation commenced or resisted in bad faith or with gross negligence.
“34. Alternatively, if the proper law of the tort is English law the said proceedings will commence for a purpose, alternatively a predominant purpose, other than the proper purpose for obtaining the relief formerly sought. Accordingly, the commencing and pursuing of said proceedings amounts to the tort of abuse of process.
“35. By reason of the aforesaid, the defendant has suffered loss and damage.”
Article 96 of the Italian Civil Procedure Code provides, so far as material and in translation, as follows:
“If it transpires that the losing party has acted or resisted in the proceedings with bad faith or gross negligence the judge orders upon request of the other party apart from the payment of the legal expenses the compensation of damages which he liquidates also on his own motion in the judgment.”
There are two other matters I should mention at this stage. The first is that Visto have admitted that the matters described in the PPD do not amount to an infringement of the UK designation of the European patent. RIM have intimated in correspondence that in the light of that admission made by Visto it is not currently minded to pursue its claim.
In the course of his opening, Mr Dicker QC, appearing on behalf of RIM, said that the claim would not be pursued to trial. That position hardened in the course of his reply when, in response to a question from me, Mr Dicker, on the...
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