Disclosure without disruption? Finding the least bad option

Vringo Infrastructure Inc v ZTE (UK) Ltd is a Patents Court, England and Wales, ruling of Mr Justice Birss which is unlikely to reach BAILII since it's a fairly small procedural matter -- but it's still interesting enough to note here, this blogger having spotted it on the Lawtel subscription-only service.

In short, Vringo sued ZTE for patent infringement [on which see Annsley Merelle Ward's earlier Katposts here, and here on whether the trial of patent infringement issues should take place ahead of the trial of FRAND issues, or vice versa]. In the proceedings noted here, Vringo applied for disclosure in its infringement claim. Vringo produced a mobile handset, the standard for which stated that it supported a certain multimedia handover technology. If this were so, argued Vringo, that meant that ZTE's product had to infringed its patent, which covered that technology. ZTE had provided a product description which stated that the relevant infrastructure and handsets did not in fact have that function.

According to Vringo, although that function was initially switched off, it would be open to ZTE to switch it on later and make the multimedia handover function available. ZTE however denied that its product could be reconfigured so as to support the function. Vringo then sought clarity as to how that was the case when it had been stated as a feature in ZTE's standard, seeking an order for disclosure on that point in order to support its claim that ZTE was committing a "secondary infringement" by supplying means of infringement under the Patents Act 1977 section 60(2) which states:

" ... a person (other than the proprietor of the patent) also infringes a patent for an invention if, while the patent is in force and without the consent of the proprietor, he supplies or offers to supply in the United Kingdom a person other than a licensee or other person entitled to work the invention with any of the means, relating to an essential element of the invention, for putting the invention into effect when he knows, or it is obvious to a reasonable person in the circumstances, that those means are suitable for putting, and are intended to put, the invention into effect in the United Kingdom".

The disclosure application was made approximately six weeks before the date of the trial of the matter. This trial looked like being a big one, since it also involved three other infringement claims, not to mention the predictable challenge by ZTE to the validity of the patent.

On Tuesday Birss J agreed to let Vringo obtain disclosure. In his view:

* It was plain that, if the court acceded to Vringo's application, it would not be possible to try the multimedia handover technology point at the listed trial date. While the court could determine that Vringo had not properly pleaded its case and simply dismiss the point, that gave rise to a possible grave injustice if Vringo was correct and if there had been a properly pleaded case.

* Another option was to adjourn the trial altogether, including the other matters.

* On balance, the least bad option was to permit Vringo to amend its pleadings and to ensure that there was proper disclosure by ZTE so as to deal with this issue. That meant that the multimedia handover point could not be dealt with at the listed trial -- but all the other matters could still be determined.

* There was no need to hear ZTE's section 60(2) defence at the same time as the validity challenge.

Birss J added that an advantage of his chosen course of action was that the multimedia handover point would be left to one side until the trial was resolved: three different patent infringement claims in one trial was already quite enough.