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	England and Wales High Court (Patents Court) Decisions
You are here: BAILII >> Databases >> England and Wales High Court (Patents Court) Decisions >> Research In Motion UK Ltd v Visto Corporation [2008] EWHC 3025 (Pat) (05 December 2008) URL: http://www.bailii.org/ew/cases/EWHC/Patents/2008/3025.html Cite as: [2008] EWHC 3025 (Pat), (2009) 32(2) IPD 32012

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IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
PATENTS COURT

		Royal Courts of Justice Strand. London. WC2A 2LL
		5/12/2008

MR. JUSTICE ARNOLD:

1. This is the case management conference in a patent action involving Research in Motion UK Limited, which I will refer to as "RIM", and Visto Corporation, which I will refer to as "Visto". The essential dispute which I have to decide at this stage is whether the action should be tried in one go or split into two.
2. RIM started the proceedings by applying to revoke three European Patents (UK) that are divisionals of the Visto '905 patent which earlier this year Floyd J. revoked for obviousness and also for not being patentable under section 1(2) of the Patents Act 1977. Visto has counterclaimed for infringement. The counterclaim is, commercially, extremely significant because the allegation is that, essentially, the entire Blackberry system operated by RIM infringes. Accordingly, if Visto is successful in those infringement claims, it will be in a position to shut down the Blackberry network in the United Kingdom. That is, plainly, a matter of great commercial significance, particularly given that the United Kingdom is, on the evidence, RIM's biggest European market. It has of the order of 1.4 million subscribers in the United Kingdom out of a total of around 4 million users in Europe.
3. In addition to its counterclaim for infringement, Visto has counterclaimed to revoke four RIM patents. RIM seeks an order that the trial of the counterclaim for revocation of the RIM patents should be tried separately from the claim and counterclaim relating to the three Visto patents. That application was tied up with an application also made by RIM for an expedited hearing of the claim and counterclaim with regard to the Visto patents. The nexus between the two applications has, however, been reduced because, whereas RIM was originally hoping for a trial date of the claim and counterclaim in respect of the Visto patents in July 2009, this morning it has accepted that that is not really feasible. Both parties have agreed that a trial date in September 2009, particularly if it is 14^th September, is more feasible. Moreover, I do not detect any dispute that, if it was thought appropriate, both the claim and counterclaim in respect of the Visto patents and the counterclaim in respect of the RIM patents could be tried at that date. I will come back to the question of expedition of the trial date later.
4. The key question to be decided, therefore, is whether to have one trial or two. RIM submits that it is in any event desirable to have two trials rather than one. In support of that contention, counsel for RIM points to the fact that the RIM patents have three different and later priority dates to the Visto patents. The priority date of the Visto patents is in July 1997, whereas the RIM patents have priority dates of September 1999, August 2002 and October 2003. Accordingly, a single trial would require common general knowledge in this field to be considered at four different dates. In addition to that, it is submitted that having a trial of seven different patents involving seven different inventions is difficult in and of itself. Still further, RIM points to the fact that the claim for revocation of the four RIM patents involves consideration of three additional pieces of prior art, which are not relied upon as part of the attack on the three Visto patents. One of those pieces of prior art is a prior use of a piece of software called Cadenza m Notes. Accordingly, so counsel for RIM submits, a single trial of all seven patents would be unwieldy and burdensome.
5. Counsel for RIM goes on to submit that there is no justification for imposing such a burden on the court and the parties for the following reason: whereas the claim and counterclaim in respect of the Visto patents is commercially extremely significant, there is no commercial significance to the claim for revocation of the four RIM patents. On the contrary, RIM has offered an undertaking not to assert those four UK patents against Visto or (as RIM has clarified this morning) its customers or its licensees. Indeed, counsel for RIM goes further than that and points out that, not only has that undertaking been proffered, but also Visto had not even identified any product that might conceivably be alleged to infringe the RIM patents, whether in this country or in any other country. Accordingly, he submits that there is simply no commercial advantage to Visto in having the four patents revoked, even assuming the claim that they are invalid is well founded.
6. Counsel for Visto frankly accepts that it is not so much the commercial advantage of revocation that is important to his clients, but what they seek to achieve forensically. His submission is that there is a valid juridical advantage to be obtained by Visto in having the claim in respect of the RIM patents heard at the same time as the claim in respect of the Visto patents, namely, to place RIM in a squeeze. He submits, and I am prepared to accept for present purposes, that the inventions claimed in the RIM patents are extremely similar to the inventions disclosed in the Visto patents. His argument, therefore, is that any contention put forward by RIM to the effect that the Visto inventions are obvious will inevitably involve the consequence that the RIM patents are also invalid.
7. To that, counsel for RIM replies that the prospect of a squeeze is, in commercial terms, unreal. While it may be a theoretical forensic advantage, the commercial reality is that RIM's overriding consideration is to ensure that the Visto patents are revoked so that there is no threat of infringement by the Blackberry system. RIM will not in any way be deterred from achieving that goal by the possibility that there might be adverse consequences for its own patents in circumstances where it cannot gain any advantage, vis-a-vis Visto at any rate, through maintaining those patents.
8. Counsel for Visto also submits that, given the similarity between the Visto patents and the RIM patents, the burden of trying the two sets of patents together is not great. Furthermore, the PCT application which led to the Visto patents is prior art against the RIM patents. His estimate is that a trial of validity and infringement of just the Visto patents would take eight days, whereas a combined trial of all patents would take ten days. Counsel for RIM does not agree with that assessment, however, and suggests that the increase would be rather greater, from something of the order of five or six days to possibly as much as 12 days.
9. I prefer the arguments of counsel for RIM. It seems to me that a trial of all seven patents together would be unwieldy and burdensome. It would require seven different sets of claims to be considered. At this stage, so far as I am aware, neither side has identified independently valid claims in any of its patents, but one certainly has to contemplate the possibility that there will be more than one claim sought to be asserted as being independently valid for each patent. Then one has to consider the impact of the differing priority dates and, therefore, the differing states of common general knowledge. I agree that that may be significant. Then one has to consider the additional prior art.
10. All in all, it seems to me that this is a case that, even if the attack on the RIM patents was of commercial significance, I would be seriously contemplating splitting the trial in any event. Given, however, that the attack on the RIM patents is of no commercial significance whatsoever to Visto, it seems to me that the case for a split is overwhelming. The only real argument against it is the argument of forensic advantage from the squeeze, but I agree with counsel for RIM that that is not a significant forensic advantage having regard to the commercial realities of the situation. It is plain that RIM's overriding consideration must be to avoid infringement of the Visto patents, preferably by revoking all three of them, and that it will not allow the possibility of an adverse impact on its own patents to deter it from doing so. Moreover, if and in so far as evidence is adduced by RIM in support of its attack on the Visto patents which would lead to consequences for the validity of the RIM patents, that is evidence that Visto will be able to rely upon in any subsequent attack on the RIM patents in any event.
11. Visto has made no bones about the fact that, if I order a split trial, it may well not actually proceed with its attack on the RIM patents because it may come to the conclusion that the cost of having a second trial is not justified, given the absence of any commercial advantage as opposed to a forensic advantage. In my view, that is not a matter which detracts from the conclusion to which I have already come. On the contrary, it emphasises that there is no real commercial purpose to the attack on the RIM patents. It is purely forensic manoeuvring, and I do not regard that as a sufficient justification for imposing upon the court and the parties the burden of a trial of all seven patents together.
12. Accordingly, my decision is that I will order a split trial.
13. That brings me, then, to the question of expedition of the trial date. So far as the claim and counterclaim in respect of the Visto patents is concerned, I am satisfied that a modest degree of expedition is justified. The primary reason for that is the considerable commercial importance of those claims, as I have already described. As Jacob LJ has repeatedly pointed out, business needs to know where it stands. That does not mean that every patent case is entitled to expedition, but it certainly means that commercially significant disputes should be tried promptly where and to the extent possible.
14. This is a case which is not only of commercial significance to the immediate parties, but it is also of commercial significance to third parties such as mobile phone operators and so on. Accordingly, it seems to me that it is an appropriate case to apply a modicum of expedition to.
15. A further reason that was put forward in support of the request for expedition is that a decision of this court on validity may be of assistance to foreign courts, particularly those in Germany and Italy, confronted with infringement issues. That is a factor to which I attach less weight, but nevertheless I consider that that does provide some further support to the request for expedition.
16. Accordingly, I will direct that the claim and counterclaim in respect of the three Visto patents be fixed for trial on 14^th September 2009. As I mentioned earlier, the parties are somewhat divergent as to their estimate for that hearing. At present, I will take a middle course and set it down for an estimate of seven days with two days pre-reading. There is an agreed complexity rating of 4-5. The basis upon which I am directing the case to be tried on 14^th September is that I will make myself available to hear it. That being so, I understand that the parties are agreed that there will be no need for a scientific adviser.
17. So far as the trial of the claim for revocation of the four RIM patents is concerned, I will simply order that to be listed in the ordinary way. I direct the parties to attend the Listing Officer to fix a date in the ordinary course.

(For discussion after judgment, see main transcript)