Top Optimized Technologies SL (a company incorporated under the laws of Spain) v Vodafone Group Services Ltd
| Jurisdiction | England & Wales |
| Judge | Mr Justice Marcus Smith |
| Judgment Date | 14 January 2021 |
| Neutral Citation | [2021] EWHC 46 (Pat) |
| Court | Chancery Division (Patents Court) |
| Docket Number | Claim No: HP-2019-000036 |
| Date | 14 January 2021 |
[2021] EWHC 46 (Pat)
THE HONOURABLE Mr Justice Marcus Smith
Claim No: HP-2019-000036
IN THE HIGH COURT OF JUSTICE
BUSINESS AND PROPERTY COURTS OF ENGLAND AND WALES
INTELLECTUAL PROPERTY LIST (Pat)
PATENTS COURT
Royal Courts of Justice
Rolls Building
7 Rolls Buildings
Fetter Lane
London EC4A 1NL
Mr Thomas Raphael, QC and Mr Jaani Riordan (instructed by Hogan Lovells International LLP) for the Applicants
Mr Michael Bloch, QC, Mr Richard Davis and Mr Edward Cronan (instructed by Mishcon de Reya) for the Respondents
Hearing dates: 17 and 19 November 2020
Approved Judgment
I direct that no official note or transcription shall be taken of this Judgment and that copies of this version as handed down may be treated as authentic.
A. INTRODUCTION
. This is the application of Vodafone Group Services Limited, Vodafone Group plc and Vodafone Limited to stay, either on jurisdictional grounds, or for case management reasons, proceedings commenced by Top Optimized Technologies SL and TOT Power Control SL under claim number HP-2019-000036.
. Vodafone Group Services Limited, Vodafone Group plc and Vodafone Limited are all part of the Vodafone group of companies and – unless it is necessary to differentiate between different companies – I shall refer to them collectively as Vodafone. 1 Similarly, I shall refer to Top Optimized Technologies SL and TOT Power Control SL as TOT, unless it is necessary to draw any more specific distinction. I shall refer to the proceedings brought by TOT against Vodafone as the Second UK Proceedings. As will become clear in the course of this Judgment, there are (including the Second UK Proceedings) three sets of proceedings that are relevant to Vodafone's present application. The other two proceedings are:
(1) What I shall term the Madrid Proceedings, being proceedings commenced by TOT against Vodafone and Huawei Technologies Co ( Huawei) in the Commercial Court in Madrid. These proceedings were commenced on 29 July 2016. Prior to the trial of the Madrid Proceedings, Vodafone successfully mounted a jurisdictional challenge to various claims TOT made against it. The basis for that challenge was that some of TOT's claims against Vodafone were the subject of exclusive jurisdiction clauses in favour of the courts of England and Wales. To the extent that the claims were the subject of exclusive jurisdiction clauses, the contention succeeded, and the Spanish courts declined jurisdiction. However, TOT's claims against Huawei continued, as did some claims against Vodafone for patent infringement.
(2) What I shall term the First UK Proceedings, being proceedings commenced by Vodafone against TOT under claim number HC-2017-000399. By the First UK Proceedings, Vodafone sought declarations that:
(a) Various claims (similar to those brought by TOT against Vodafone in the Madrid Proceedings) were time-barred. To be clear, Vodafone was seeking declarations that claims similar to those being advanced in Spain in the Madrid Proceedings would, if advanced in England and Wales, be subject to a limitation defence.
(b) The Madrid Proceedings were brought in breach of various exclusive jurisdiction clauses in agreements between Vodafone and TOT.
TOT has filed a Defence and Counterclaim in the First UK Proceedings. The First UK Proceedings are presently stayed, by order of Mr Justice Arnold dated 19 April
2018. Any party to these proceedings may apply to lift the stay, 2 and I understand that TOT has done so. (Nothing, I should say, turns on this.)
. By its application dated 5 March 2020, Vodafone sought “[a]n order under CPR Part 11 that the Court does not have/shall not exercise its jurisdiction, and that the proceedings shall be stayed; alternatively, a case management stay, on the terms of the draft order attached”. The reason for the application is stated as being:
“Because, for the reasons explained more fully in the attached witness statement of Dominic Nelson Hoar, these proceedings are related to proceedings already pending before the Courts of Spain (the “Madrid Proceedings”) for the purpose of Article 30 of Regulation (EU) No 1215/2012 and/or it is appropriate to grant a stay.”
. It is clear – reading the application notice as a whole – that Vodafone is not (and never has been) mounting a full-fledged argument that this court has no jurisdiction to hear the Second UK Proceedings. Rather, what is sought is a stay under Article 30(1) of Regulation (EU) 1215/2012 of 12 December 2012 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters (recast) ( Brussels I Recast). Article 30 of Brussels I Recast provides:
“(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 the action in the court first seised is pending at first instance, any other court 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.”
In the alternative to an Article 30(1) stay, as I have noted, Vodafone seeks a case management stay.
. Whatever the basis for the stay, Vodafone really only seeks a stay pending the outcome of a substantive appeal by TOT in the Madrid Proceedings, TOT having substantially lost in relation to its claims against Huawei in those proceedings. The essence of Vodafone's contention is that a stay is appropriate in that the claims against it – Vodafone – in the Second UK Proceedings are substantially a re-run of the Madrid Proceedings, but against Vodafone, not Huawei, which is in itself abusive.
. Vodafone made clear in its submissions to me that it fully reserved the right to contend that the Second UK Proceedings were an abuse of process of this court. Vodafone did not invite me to determine this question and, indeed, contended that I could not do so, given the uncertainties in the outcome of the Madrid Proceedings and the fact-specific nature of the abuse jurisdiction. However, Vodafone did say that the potential for abuse – and an application to strike out for this reason – was a matter that was relevant to the
question of a stay on jurisdictional or case management grounds, and should be taken into account by me. In fact, as the hearing before me proceeded, it became clear that there were so many procedural points that Vodafone was minded to bring in the future in the Second UK Proceedings (including, but not limited to, applications to and for: strike-out for abuse of process; strike-out for want of particularity of pleadings; strike-out on grounds of limitation; security for costs) that even if no formal stay were ordered the parties might well be mired in major procedural skirmishing, having little to do with the substance of the dispute, for many months to come. The only point I make – at this stage – is that the difference between the parties in Vodafone seeking a stay and in TOT opposing it was not, in practice, as extreme as it first appeared. TOT made clear that a number of heavy procedural applications needed to be dealt with – and should not be precluded by Vodafone's application. Whilst Vodafone did not accept this, it was accepted by Vodafone that limited steps might be taken in the Second UK Proceedings without causing Vodafone the sort of prejudice it said it would incur if no stay were ordered.
. There is, thus, in this case, something of an elision between a stay on jurisdictional grounds under Brussels I Recast; a stay for case management reasons related to the fact that there are foreign proceedings on foot; and the ordinary case management of a complex dispute between two – and maybe three, if one includes Huawei – parties.
. I approach these questions, and this judgment is structured, in the following way. First, in Section B, I describe the (voluminous) material that was before the court. Section C describes, in a little greater detail, the three sets of proceedings that I have already referred to. Section D seeks to describe the reasons advanced by Vodafone in support of a stay. Section D is, essentially, a factual assessment of these factors, done independently of the criteria relevant to a stay. Section E then considers the question of a stay by reference to Article 30 of Brussels I Recast and the inherent jurisdiction to grant a stay independently of Article 30.
B. MATERIAL BEFORE THE COURT
. This application was heard over two days – 17 and 19 November 2020 – with one day's pre-reading. The written material before the court was substantial and as follows:
| SUBMISSIONS | |
| Vodafone Skel | Vodafone's written submissions in support of the application, running to some 108 pages, plus annexes. |
| TOT Skel | TOT's written submissions in opposition, running to 36 pages. |
| Vodafone Supp Skel | Vodafone's supplementary note. |
| VODAFONE'S EVIDENCE | |
| Hoar 1 | The first witness statement of Mr Dominic Hoar, a solicitor in the firm retained by Vodafone (27 pages plus exhibits). |
| Hoar 2 | The second witness statement of Mr Hoar (33 pages plus exhibits and annexes). |
| Hoar 3 | The third witness statement of Mr Hoar (4 pages). |
| Paz 1 | The first witness statement of Ms Maria Lorenzo Paz, a Spanish lawyer in the... |
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...at 41F, Lord Saville referred to the Court adopting a “ broad common-sense approach”; b) In Top Optimized Technologies SL v Vodafone [2021] EWHC 46 (PAT) at [42] Marcus Smith J said that: “ It seems to me that the purpose of Article 30 is best served by having a wide ambit”; and c) In The ......