Nokia Corporation v Interdigital Technology Corporation

A properly constituted patent revocation action should generally proceed to trial where it is not subject to arbitration and is not abusive. The English court should not restrain an application under Title 28 section 1782 merely because the requested material would exceed ordinary English disclosure or might assist related arbitration proceedings. Restraint requires abuse in the context of the English litigation, such as infringement of a legal or equitable right, vexatiousness, oppression or unfair prejudice. The foreign court must decide the scope and merits of the section 1782 request. The English court retains control over admissibility and may consider whether the material could be deployed after amendment of the pleadings.

Nokia sought revocation of three United Kingdom patents owned by InterDigital concerning wireless-loop telecommunications technology. InterDigital applied for a stay pending an ICC arbitration, an injunction restraining Nokia’s applications in the United States under Title 28 section 1782 for evidence from Ericsson and Sony Ericsson, a declaration concerning relevance, and orders concerning Nokia’s pleadings.

The central issues were whether the patent proceedings should be stayed, whether the section 1782 applications were abusive or oppressive in the context of the English action, whether declaratory relief concerning relevance should be granted, and whether Nokia should amend its pleadings concerning patent essentiality and non-infringement.

1. Stay. The application for a stay was refused. Under CPR 3.1(1)(f) and the overriding objective, the court’s primary duty in a properly constituted action seeking appropriate relief, not subject to arbitration and not amounting to an abuse of process, is to bring the action to trial fairly and promptly. The validity and infringement issues had been removed from the arbitrators’ remit. Private dispute resolution could not itself produce revocation of an invalid patent without an agreement to surrender or consent to revocation.

2. Section 1782 applications. The principles in South Carolina Insurance Co v Assurantie Maatschappij “De Zeven Provincien NV” [1987] AC 24 were applied. The English court does not ordinarily control how a litigant obtains evidence. It may restrain a section 1782 application only where its use breaches a legal or equitable right or is abusive, vexatious, oppressive or otherwise unconscionable.

3. The guidance in Intel Corporation v AMD was material. Section 1782 confers a discretion on the United States district court. The foreign proceeding need only be within reasonable contemplation. The evidence need not be discoverable in the foreign jurisdiction, and the district court may consider comity, parity, the status and receptivity of the foreign tribunal, attempts to circumvent foreign proof-gathering limits, and undue burden.

4. The requested documents might contain material capable of deployment in the English proceedings, including on the amendment of the patents. The English court should not impose its own pleaded-issue limits on the United States court’s section 1782 discretion. The possibility that the application might assist the arbitration was principally a matter for the United States court. No abusive behaviour or unfair prejudice was established, so the injunction was refused. A categorical declaration of irrelevance was also refused.

5. Amendment. Once InterDigital asserted that two patents were essential to compliance with the relevant standards, Nokia could argue that the standards informed construction of the claims. A declaration concerning non-essentiality could in principle resolve the commercial issue. For the patent said to be optional, however, non-infringement was theoretical unless InterDigital identified a clear infringement assertion or specimen hardware in respect of which royalties were sought. Further submissions were directed on that issue. Subject to that qualification, InterDigital’s applications failed.