Texas Instruments Incorporated v Network System Technologies LLC

An expedited patent trial requires real, objectively viewed urgency. Commercial certainty may justify expedition where a genuine and material risk remains unresolved, particularly if undertakings do not adequately protect the applicant’s commercial interests. The possibility that an English judgment may influence related continental or UPC proceedings is ordinarily a weak factor and will not, by itself, justify expedition. The court may make expedition conditional, allowing the respondent an opportunity to cure a defect in its undertaking before the order is sealed.

Texas Instruments applied for an expedited trial of its claim to revoke three patents held by Network System Technologies. One patent remained in force until April 2026; the other two had expired. Parallel proceedings were pending in the Munich Local Division of the Unified Patent Court concerning corresponding patent designations and products incorporating Texas Instruments’ chips.

The application sought a September or October trial so that validity could be determined before the anticipated UPC decision. Network System Technologies offered undertakings concerning assertion of the UK designations and withdrawal of a long-arm damages claim. The principal issue was whether the proposed undertakings left a material gap affecting products containing Texas Instruments’ chips.

1. Applicable standard. Expedition is ordered only where there is real, objectively viewed urgency, applying the principles identified in [2008] EWCA Civ 622 and [2015] EWCA Civ 480. A September trial was practically feasible, although it would burden court administration and increase costs.
2. Reasons advanced for expedition. Texas Instruments relied on early commercial certainty, the possible influence of a UK judgment on the UPC proceedings, and the possible effect of a UK judgment on the long-arm damages claim. The third ground fell away because Network System Technologies offered to withdraw that claim. The possible influence of a UK judgment on the UPC was a weak factor, since bifurcation was unlikely and the UPC would probably determine infringement and validity together on different evidence.
3. Defective undertakings. The proposed undertaking was limited to integrated circuits manufactured, offered or distributed by Texas Instruments in the UK, and products in the UK containing those circuits. On its wording, it did not cover circuits manufactured elsewhere, incorporated into products abroad, and later brought into the UK. That gap materially undermined the commercial certainty relied upon by Texas Instruments.
4. Conditional order. If Network System Technologies adequately amended the undertakings so that products containing Texas Instruments’ circuits were protected regardless of their origin or journey, the principal urgency would disappear and expedition would not be ordered. If it declined to do so, the case for expedition was made out. The trial was therefore ordered to be expedited for September unless the defect was adequately addressed. The order was not to be sealed for two days, allowing the parties to resolve the wording or write to the court if the principle was accepted but wording remained disputed.