Pan European strategies in mobile phone patent litigation

The courts in Europe have been very busy with patent disputes over mobile telephones, Germany being a particularly popular venue for patent owners. However, such disputes are rarely limited to a single country. Although patents by their nature are territorial – under European case law, German courts will only be concerned with infringements ongoing in Germany – the disputes themselves usually span several jurisdictions. The specialist Patents Court in England is very experienced in dealing with the challenges that these cases provide, complex as they often are, not only in terms of the technologies, but also because of the large numbers of patents that can be deployed.

Although there is similarity in substantive law as between Germany and England, and the judges in one jurisdiction will take account of decisions in the other, it is the procedural differences that are especially marked and which often dictate the competing strategies of the patent owner and defendant. The most important of these is the fact that in Germany the issues of validity and infringement are determined in separate courts, whereas in the UK, the question of infringement of a patent and its validity will be determined at the same time, in a single hearing. Invalidity is often a significant defence to infringement. In Germany, the defendant can only raise invalidity in nullity proceedings separate from the main infringement proceedings. The problem for the defendant in Germany is that the nullity proceedings will very often take substantially longer to reach trial than the infringement proceedings. This means that the defendant in Germany faces the prospect of an injunction before the validity of the patent is assessed by the Federal Patents Court in the nullity proceedings. It is rare for the infringement court to stay its proceedings and wait for the determination of the nullity proceedings.

It is because of this that a tactic that is used by defendants to German infringement proceedings is to start UK revocation proceedings, challenging the UK patent counterpart to the German one. That party then seeks expedition of the UK proceedings, so that it might obtain an early finding of invalidity of the UK patent, with a view to presenting this to the Germany infringement court, so as to persuade the German infringement court that there is a sufficient question over the validity of the German patent that a stay of infringement proceedings pending the outcome of the German nullity proceedings should be ordered; or at least the grant of an injunction should be stayed. This strategy of course presupposes that the defendant in Germany has a strong validity case.

A recent example of this strategy took place in the Apple v HTC litigation. In July last year, Apple brought infringement proceedings in Munich in respect of the "slide to unlock" patent and one other European (DE) patent. At the same time, it brought infringement proceedings in Mannheim in respect of a further patent, the ‘859 patent. By way of response, in July and August, HTC brought UK revocation proceedings in respect of the equivalent EP (UK) patents and sought expedition of the UK proceedings. Apple did not seriously dispute that there should be a trial in March/April 2012, but vigorously disputed HTC’s attempt to have the validity of the EP(UK) ‘859 patent determined earlier than that, in January 2012.

At the hearing of application for expedition, the English judge, Arnold J, expressed the view that, whilst assistance to HTC in Germany as regards a possible stay of the Mannheim proceedings could be relied upon, this had not been treated in the previous cases as “a particularly strong or important factor” in justifying expedition. He did consider, however, that there were commercial grounds to support an application for expedition, namely that HTC and its customers needed to know as soon as possible whether or not HTC had infringed. However, he also accepted Apple’s contention that it was not practical for the ‘859 patent to be ready for trial as early as January 2012. In the light of this and other factors, he directed the same degree of expedition for the ‘859 patent as the other cases i.e. the trial would take place in March/April 2012.

Ultimately, whether or not – and indeed the degree to which - the English court will expedite it revocation proceedings depends on weighing a number of factors. The greater the expedition sought, the greater the justification is required. Although assistance for the purposes of the German proceedings is relevant, usually there need to be additional factors present to justify any expedition. Also, as is evident from the cases, the English Court will be mindful of its own resources and the position of other litigants.

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