International Patent Litigation - Facebook Ireland v Voxer IP

Sarah Stierch / CC BY (https://creativecommons.org/licenses/by/4.0)

Jane Lambert

Patents Court (Mr Justice Birss)  Facebook Ireland Ltd v Voxer IP LLC [2020] EWHC 1806 (Pat) (7 July 2020)

Yesterday, I explained in International Patent Litigation - Nicoventures Trading Ltd v Philip Morris 16 July 2020 that defendants to German patent infringement claims often bring actions to revoke the UK designation of the same European patent because it is not possible to challenge the validity of a patent in infringement proceedings in Germany.  The thinking behind that strategy is the courts in countries that are party to the European Patent Convention take account of each other's decisions on the same patent.  That strategy works, however, only if the UK revocation action is decided before the German infringement one.   To ensure that it does, the court may have to order the expedition of the UK trial as it did in   Nicoventures Trading Ltd v Philip Morris Products, SA [2020] EWHC 1594 (Pat) (16 June 2020) which I discussed yesterday.

There is, however, an alternative way of achieving an earlier trial date and that is under The Shorter Trials Scheme under Section 2 of Practice Direction 57AB.   In Facebook Ireland Ltd v Voxer IP LLC [2020] EWHC 1806 (Pat) (7 July 2020), Facebook Ireland Ltd ("Facebook") applied to Mr Justice Birss to fix a trial date of an action that it ha issued on 27 May 2020 and served at the beginning of June.  Mr Justice Birss made it very clear at paragraphs [10] and [11] of his judgment that the application for an early trial date in The Shorter Trials Scheme was not the same as an application for expedition:

"[10] The second matter is whether this is an application for expedition. Dr. Nicholson QC for Voxer submitted that it was common ground that this is an application for expedition. I do not agree. The window for the trial sought by Facebook is within the contemplation of the STS itself. When the original pilots for the STS and the Flexible Trial Scheme were commenced, guidelines were given as follows:

'The aim of both pilot schemes is to achieve shorter and earlier trials for business related litigation, at a reasonable and proportionate cost. The procedures should also help to foster a change in litigation culture, which involves recognition that comprehensive disclosure and a full, oral trial on all issues is often not necessary for justice to be achieved.
That recognition will in turn lead to significant savings in the time and costs of litigation. The Shorter Trial procedure offers dispute resolution on a commercial timescale. Cases will be managed by docketed Judges with the aim of reaching trial within approximately 10 months of the issue of proceedings and judgment within six weeks thereafter.'

[11]  This Guidelines remains just as relevant to the Shorter Trials Scheme today now that the pilot is finished and the scheme is incorporated into the rules applicable to the Business and Property Courts as it did when the pilots started."

Mr Justice Birsss granted Facebook's application without going through any of the steps discussed in Nicoventures yesterday.   He took two matters into account.   The first was whether the Part 57AB Practice Direction permitted him to fix a trial date and he found that paragraph 2.38 (e) did.   The second was whether he should exercise the power to fix a trial date and he decided at paragraph [13] that he should for the following reasons:

"First of all, from examining the patent -- as I did in my pre-reading and also the quick look at it that Mr. Mitcheson took during the hearing -- it is clear that as presently constituted, this case is eminently suitable for a three to four-day trial under the Shorter Trials Scheme. It relates to the validity of a telecommunications patent. The technical category rating is 4, which means that it will be heard by one of the category 4 judges. There are two items of prior art. From what I can see of the arguments on validity as they are now, they are the sort of things that could readily be done in the Shorter Trials Scheme."

The one countervailing factor, in this case, is that Facebook issued its claim form without sending Voxxer a letter before claim. Normally the failure to send a letter before claim would have adverse consequences for a claimant but, in this case, it was excusable because the parties were already in litigation in Germany and the United States and the English revocation action was a direct response to the German infringement claim.

Anyone wishing to discuss this article or patent litigation strategy generally should call my clerk on 07986 948267 or send me a message through my contact page.