Research In Motion UK Ltd v Visto Corporation

Actions in different Member States are related under Article 28 of Regulation 44/2001 only where their connection is sufficiently close, and the risk of irreconcilable judgments sufficiently material, to make a joint determination expedient. The court must make an evaluative judgment. A remote or minor possibility of conflict does not suffice.

The assessment may extend beyond the originating claims to matters raised by a defence. A later proceeding relied upon in that defence does not retrospectively make the earlier court first seised of a related action where the necessary degree of connection and expediency is absent.

Visto Corporation appealed from Lewison J’s decision of 4 April 2007, EWHC 900 (Ch), concerning parallel English and Italian patent proceedings. Research in Motion UK Ltd had sought English declarations of non-infringement. It and associated companies later commenced Italian proceedings concerning the Italian patent and declarations of non-infringement for several other national designations.

Visto’s English defence alleged that the Italian proceedings formed part of misconduct disentitling Research in Motion to declaratory relief. Its counterclaim also sought damages under Article 96 of the Italian Civil Procedure Code or for abuse of process under English law.

After the English non-infringement claim was discontinued, the parties accepted that the Italian court should determine any Article 96 claim. The remaining dispute, formally concerning costs, was whether the English and Italian proceedings had previously been related actions under Article 28 of Regulation 44/2001, with the English court first seised.

1. Appeal dismissed. The English and Italian proceedings were not related actions within Article 28 of Regulation 44/2001.

2. Article 28 requires more than the mechanical identification of the court first seised. The court must assess the degree of connection between the actions and decide whether it is expedient to hear and determine them together to avoid irreconcilable judgments. A connection or risk of conflict may exist without being sufficiently close or substantial to satisfy Article 28(3).

3. In making that assessment, the court may examine defences as well as originating claim documents. Article 28 therefore differs from Article 27, under which the comparison of whether proceedings involve the same cause of action is made between the claim documents. The Court rejected any suggested limitation to defences said to be latent in, or pregnant with, the claim.

4. The allegation that the Italian proceedings were abusive was only one element of a wider English defence. It was neither the sole nor the principal basis on which declaratory relief was opposed. The English action concerned an English patent and a particular version of the product. The Italian proceedings concerned other national designations and did not focus on the same product.

5. The alleged abuse of Italian process provided the only link and the only area in which inconsistent judgments might arise. The relationship was not particularly close. A combined trial was neither practicable nor expedient, and the limited potential conflict did not require the conclusion that the actions were related.

6. The commencement of proceedings designed to delay patent enforcement in other jurisdictions was not, without more, an abuse of the jurisdictional system. A party could properly use the existing system for commercial advantage unless it crossed the separate boundary into abuse of a court’s process.

• Court of Appeal (Civil Division): By [2008] EWCA Civ 153, dismissed Visto Corporation’s appeal and held that the English and Italian proceedings were not related actions under Article 28 of Regulation 44/2001.
• High Court, Chancery Division (Patents Court): Lewison J, by EWHC 900 (Ch), declined jurisdiction over and dismissed the claim under Article 96 of the Italian Civil Procedure Code. The substantive order was subsequently accepted because the English non-infringement action had been discontinued.