The English Patents Court had yet another opportunity to decide whether to stay patent revocation proceedings in England pending a decision by the European Patent Office on an opposition brought against the patent. No stay was granted and the English proceedings (already quite advanced) will now continue full steam ahead.
This was a recent hearing in yet another piece of patent litigation for BlackBerry® maker Research in Motion UK Limited (“RIM”), this time, against Visto Corporation, a relatively little known US technology company.
The case began with RIM’s application to revoke Visto’s patent over a system and method for synchronising e-mail across a network.
RIM had also applied for a declaration that its dealings in BlackBerry® systems would not infringe Visto’s patent. In order to do this, RIM had to provide Visto with a full description of its system. RIM did this and Visto agreed to give the requested declaration of non-infringement to RIM. Not stopping there though, Visto noted that although all the main parts of the BlackBerry® system were set out in its description, an add-on feature known as the “Mail Connector” (for allowing the handheld’s user to retrieve e-mails from behind a firewall) was not included in it. Visto then countersued RIM for infringement in respect of the “Mail Connector”.
This hearing was of a request by Visto to have the English proceedings on the UK designated patent stayed until the European Patent Office (“EPO”) had ruled on the central opposition to the originating European patent filing.
The English High Court (in the form of Patten J) considered the discretion that it has in relation to staying proceedings, and refused to give Visto the stay that it requested.
Various factors were considered in order to reach this decision. Submissions from one of the barristers indicated that over half of the estimated costs to take the case up to trial had already been spent; trial is set for January 2008, and the parties are due to exchange the evidence of their respective expert witnesses next month. The question was raised as to why Visto did not take an earlier opportunity to ask for the English proceedings to be stayed and there is no indication in the judgment about the reason, and the EPO opposition was at a comparatively early stage.
The judge reiterated that the legal starting point is that there is a presumption in favour of a stay of invalidity litigation before the English patent courts pending a decision on the subject from the EPO.
In practice however, the English courts have rarely granted stays – the presumption is said to only operate if two other conditions are met: (1) granting the stay will not cause injustice to either of the parties, and (2) the EPO is likely to reach a reasonably speedy conclusion on the issue. The problem of course lies with (2).
Other factors generally considered under condition (1) by the English courts in deciding whether to grant a stay were aired in this case:
A previous case on stays such as these, had questioned whether the slowness of opposition procedure in the EPO was actually compliant with the European Convention on Human Rights (art. 6) right to a fair trial. This states that the hearing should happen “within a reasonable time”. Patten J in the Visto case also voiced concern that the EPO had no “forensic” procedures comparable to cross examination in the UK.
Patten J was presented with undertakings from Visto during the stay hearing. He decided it was improper for him to consider these until he had reached a decision on his discretion initially, and he would then consider whether these undertakings made any difference to that decision. Patten J placed great importance on the need for commercial certainty. The undertakings that Visto offered in order to persuade him to give the stay included refraining from trying get an injunction against the BlackBerry® maker. The judge was not satisfied with the undertakings; they removed the threat of RIM’s systems being taken off the market, but there would still be future uncertainty for RIM’s research and development programme, particularly in light of what he saw as the breadth of possible modifications to and permutations of the product. If there were a stay for several years, RIM could not know what damages liability it could be storing up for the future. This was not acceptable to the judge in what he saw as a particularly highly competitive high-tech market and certainty was needed here.
Costs were also addressed: the usual argument is that there will be duplication of costs if the EPO and English proceedings both continue. In this case, an argument was raised that waiting for an EPO decision and then needing to reassemble the UK litigation teams, perhaps 5 years later, could also mean duplication of costs. In any event, the need for commercial certainty outweighed any costs saving there might be in staying the action. In the light of the above the judge refused the stay. Trial will now take place in January 2008.
The current case had a number of peculiar features. The stay application came very late on, and there was little take up by the market of the “Mail Connector” service in contention. Even in the more usual course of patent litigation events, there is no escaping the slowness of progress in the EPO. It seems unlikely that the English court is often going to decide to stay its proceedings pending an EPO decision, for the foreseeable future.