ZTE (UK) Ltd v Telefonaktiebolaget LM Ericsson (Publ)

Applications for expedition of patent proceedings require consideration of four factors: whether there is good reason for expedition, whether expedition would interfere with the good administration of justice, whether it would prejudice the other party, and whether special factors exist.

Commercial urgency must be assessed by reference to the particular proceedings. Parallel foreign proceedings may support expedition, but ordinarily carry limited weight and will not alone justify it. Delay by the applicant, the complexity and burden of the proposed trial, the existing court timetable, pressure on the opposing party and inconvenience to other court users are relevant. Expedition should not be ordered where the application would give one action inappropriate priority over earlier or more substantial proceedings.

ZTE sought expedition of its claim to revoke Ericsson’s European patent referred to as patent 494. Ericsson intended to counterclaim for infringement. The parties were also engaged in related patent proceedings in England and infringement proceedings in Mannheim concerning corresponding German patents.

ZTE sought a trial as soon as possible in or after January 2012, alternatively a joint trial with an earlier action in June 2012, or with another action in November 2012. The application raised the question whether commercial urgency, the Mannheim proceedings and alleged technical overlap justified altering the existing trial timetable.

1. Applicable principles. The court applied the four-factor approach summarised by Lord Neuberger in WL Gore & Associates GMBH v Geox SPA [2008] EWCA Civ 622 at [25]: good reason for expedition; interference with the good administration of justice; prejudice to the other party; and special factors.
2. Urgency and foreign proceedings. The court would not differ from Mann J’s earlier assessment that general commercial urgency was insufficiently strong, particularly since that decision had not been appealed and the evidence was essentially the same. In any event, patent 494 was only one of seven patents in issue in England and Mannheim, and there was no evidence that it was commercially critical in isolation. Following the approach stated in HTC Europe Co Ltd v Apple Inc [2011] EWHC 2396 (Pat) at [19], the potential assistance of an English validity decision in the German proceedings was a factor, but not a particularly strong one. It could not justify expedition here, especially as the German hearing would occur before an English judgment and ZTE had delayed in bringing its claim and application.
3. Administration and prejudice. A January-to-March 2012 trial would bring this later-started action forward while earlier actions remained unexpedited, inconvenience other court users and place undue pressure on Ericsson. The action was not shown to be simple: its technical complexity was uncertain, it involved three items of prior art, common general knowledge and a proposed infringement counterclaim.
4. Alternative listing. Adding the action to the June 2012 trial would overburden that trial, materially increase its length and add undesirable complexity. A November 2012 joint trial was not supported by ZTE and was resisted by Ericsson. The application for expedition was therefore refused. The action was to be listed at the earliest available date convenient to the parties, without expedition.

The judgment describes an earlier refusal by Mann J to expedite related English patent actions: [2011] EWHC 1907 (Pat). The present application was determined at first instance by the High Court (Patents Court).