Summary
The claimant, RIM UK, was a UK subsidiary of a Canadian company. The defendant, Visto, was a Californian company. The claims appeared to be tactical seeking a declaration of non-infringement of the UK designation of the defendant’s European patent.
The English proceedings were initiated by the claimant on 5th December 2006. Also, the claimant commenced Italian proceedings seeking non-infringement declarations of the defendant’s European patent in relation to the following jurisdictions: Italy, Germany, France, Spain, Holland and Belgium. On 2nd February 2007, the defendant served its defence and put forward a counterclaim. The defendant submitted that the claimant abused the Italian process by bringing a claim before the Italian courts, knowing that they had no jurisdiction. The claimant applied under Article 28 for a stay of the counterclaim. Mr Justice Lewison held:
“22 If, as I hold, the Italian court is first seised as between the Italian proceedings and the counterclaim, I consider that the Italian court is plainly the right forum in which the matters raised in the counterclaim ought to be determined. It follows, therefore, in my judgment, that since the conditions set out in Article 28.2 are satisfied the counterclaim so far as it relates to the allegations of abuse of the Italian process ought to be dismissed.”
[…]
28 Mr Dicker also relies on the decision of the European Court of Justice in Turner v Grovit [2005] 1 A.C. 101 as indicating that this court should not purport to tell a court in another member state directly or indirectly how to exercise its own jurisdiction. To award damages against a party for having improperly invoked the process of a foreign court is an indirect interference with that foreign court. I accept his submission […].
29 […] It is no part of the function of an English court to investigate whether the process of a foreign court has been abused. That is all the more so where, as here, the patent in suit has territorial application only and where the European Court of Justice has said that both infringement and validity actions must be brought on a member state by member state basis. Thus even on the assumption that the undertaking had not been given I would still have dismissed the counterclaim.” [22 and 28-29]
An appeal was made. On 6th March 2008, the Court of Appeal dismissed the appeal. The Lord Judges held that they “[did] not consider that the English and the Italian proceedings [we]re “related” within the meaning of the Regulation.” [32] The following observations were made:
“3 […] 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.
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16 Again a party who fires an Italian torpedo may stand to gain much commercially from it. It would be wrong to say that he is “abusing” the system just because he fires the torpedo or tries to. Things may be different if he oversteps the line (e.g. abuses the process of a court) but he cannot and should not be condemned unless he has gone that far.
17 This case is about an Italian torpedo, fired by RIM. […] they must obviously have known (and so intended) that their actions would have that effect, if they worked. As we say, we think it is difficult to criticise this.
[…]
“22 Prior to the hearing, given Visto’s acceptance that the BlackBerry system without Mail Connector did not infringe RIM said “it is not minded to proceed” with its application for a declaration of non-infringement. Understandably Lewison J. thought that would not do, and, under appropriate judicial pressure, in his reply speech Mr Dicker for RIM undertook to discontinue the English non-infringement action. That has now been done. Presumably RIM have been ordered to pay the costs of that first action.” [2008] EWCA Civ 153 [3, 16, 17 and 22].