More patent money wasted on fighting over where to sue

In "a judgment of the Court to which all members [Lords Justices Mummery and Jacob and Mr Justice Mann] have contributed", the Court of Appeal handed down its decision yesterday in Research In Motion UK Ltd v Visto Corporation [2008] EWCA Civ 153, which you can read in full on BAILII.

Right: this neat little device has been specially programmed to guide judges as to whether to hear an action or stay proceedings

RIM started revocation proceedings against the UK part of Visto's European patent in an English court, together with an action for a declaration of non-infringement, excluding a particular aspect of some embodiments of its product. RIM later commenced proceedings in Italy, seeking revocation of the corresponding Italian patent and a declaration of non-infringement of not only the Italian bit of patent but also the corresponding German, French, Spanish, Dutch and Belgian patents. Visto served a defence and counterclaim in the English non-infringement action. The counterclaim covered more than the issue of (non)infringement alone, claiming that RIM was committing an abuse of the process of either the Italian or English court, in that RIM had started the Italian action seeking relief in respect of countries other than Italy with the specific objective of heading off any infringement action that might be taken in those countries. If RIM genuinely wanted such claims determined expeditiously, said Visto, it could have brought them in the English proceedings.

After RIM said it would give an undertaking to discontinue the English non-infringement action, the English court declined jurisdiction and stayed Visto's counterclaim on the ground that the counterclaim and the Italian proceedings were related proceedings, in respect of which the Italian court was the court first seised under Regulation 44/2001 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters, Article 28. Visto appealed and argued that, before discontinuance, the English action (including the defence and counterclaim) and the Italian proceedings were related proceedings within Article 28. Since the English action was the first in time, if there had been no discontinuance there should be no stay.

The Court of Appeal dismissed Visto's appeal. In its view

* the English and Italian proceedings were not related within the meaning of the Regulation.

* in ascertaining whether proceedings were related, the court could look beyond the claim documents and into the defences. In this case the defence relied on post-claim matters -- the commencement of the Italian proceedings. However, although the test of first seisin was largely mechanical, the application of Article 28 required an assessment of the degree of connection, and then a value judgment as to the expediency of hearing the two actions together in order to avoid the risk of inconsistent judgments.

* the mere fact that different courts might deliver inconsistent judgments did not of itself mean that proceedings were inevitably related. Article 28 left it open to acknowledge a connection, or a risk of inconsistent judgments, while still concluding that the connection was insufficiently close, or that the risk was not sufficiently great, to make the actions related for the purposes of the Article.

* the English proceedings, in substance, were for a declaration concerning an English patent and a particular product. The substance of the Italian proceedings was other designations, but not focusing on the same product. The abuse of Italian process was the only link between them and it was only in relation to that point that there was a risk of inconsistent judgments.

* Article 28(3) did not require the court to find that any possibility, no matter how small the point, required the conclusion that the actions were related.

The IPKat notes the observation of the court at paragraph 3 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 same problem exists for trade marks and designs, but the frequency with which jurisdictional tussles and applications for stays occur seems to the IPKat to be very much lower. Does anyone know why? Merpel is disappointed that the English courts won't have a chance, at least this time, to rule on whether there had been an abuse of process in bringing the action in Italy. That would have been fun.

For other litigation between the same parties, see the IPKat's notes here and here