Vetco Gray UK Ltd & Anor v FMC Technologies Inc

A stay on forum non conveniens grounds requires an available alternative forum with competent jurisdiction that is clearly or distinctly more appropriate for the dispute. The court must then consider whether circumstances nevertheless require the English proceedings to continue. In patent litigation, the location of the alleged infringement and the relief sought may be especially significant. The claimant’s choice of a competent forum is relevant but not decisive. Parallel proceedings, duplication of costs and the risk of inconsistent decisions are matters to be considered, although parallel litigation alone does not establish forum non conveniens. A stay may be refused where the proceedings raise materially different issues.

FMC Technologies Inc brought infringement proceedings in Scotland concerning the 935 Patent and the HT-2 horizontal Christmas tree. Vetco Gray UK Ltd and Vetco Gray Inc commenced two English actions seeking revocation and declarations of non-infringement concerning related European patents and a divisional application.

FMC applied to stay both English actions in favour of Scotland. The court considered whether the English and Scottish proceedings raised substantially the same issues, whether Scotland was the more appropriate forum, and whether the remaining issues in the second English action justified a stay.

1. Forum non conveniens principles. The court applied the principles derived from Spiliada Maritime Corporation and Cansulex [1987] AC 460, as summarised in Ivax Pharmaceuticals UK Limited v Axa Nobel BV [2006] FSR 888 and Lennon (Neil) v. Scottish Daily Record & Sunday Mail Ltd. [2004] EWHC 359. The defendant had to show an available forum with competent jurisdiction that was clearly or distinctly more appropriate. The claimant could then show circumstances making a stay inconsistent with the interests of justice.
2. Substantial identity of issues. Although the Scottish infringement proceedings did not formally seek revocation of the whole patent, the validity issues raised there substantially overlapped with those in the English revocation action. The common prior art reinforced that conclusion. The Scottish proceedings could also have been made identical by amendment, but Vetco declined to bring a revocation counterclaim.
3. Appropriate forum. Scotland was the more appropriate forum for the 4490 action. The alleged infringement occurred there, and the infringement remedy was appropriately sought there. FMC’s Scottish manufacturing facilities, considered as a general connection, carried little weight. Costs, timing, evidence arrangements and the parties’ preference for the English Patents Court were broadly neutral or insufficient to outweigh the Scottish connection.
4. Parallel litigation. The prospect of duplicated costs, a race to judgment and inconsistent decisions was not alone sufficient to invoke the doctrine, but it was an unattractive consequence which supported a stay when considered with the other factors.
5. Disposition. The 4490 proceedings were stayed in favour of Scotland, pending further judgment or order. The stay could be revisited if later events materially altered the balance, including substantial delay in the Scottish proceedings. The stay application concerning the 051 action was refused because its remaining issues were materially different from those in Scotland. The parties were awarded the costs of the application on which each succeeded, subject to assessment and netting. Leave to appeal was refused.