TNS Group Holdings Ltd. v Nielsen Media Research Inc [2009] EWHC 1160 (Pat)

[2009] EWHC 1160 (Pat)Case No HC 09 C No. 00811
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
PATENTS COURT
Venue Royal Courts of JusticeDate 20 th May 2009
Strand. London. WC2A 2LL
Before
MR. JUSTICE ARNOLD
Between
TNS GROUP HOLDINGS LIMITEDClaimantNIELSEN MEDIA RESEARCH, INCDefendant
(Transcript of the Shorthand/Stenographic Notes of Marten Walsh Cherer Ltd.6 th Floor, 12-14 New Fetter Lane, London EC4A 1 AG.Tel: 0207 936 6000. Fax: 0207 427 0093.e-mail: info@martenwalshcherer.com)
MR. GUY BURKILL QC (instructed by Bristows) for Claimant. MR. DOUGLAS CAMPBELL (instructed by Jones Day) for the Defendant.
Judgment

Introduction

[1]In this action the claimant seeks revocation of the defendant's European Patent (UK) No. 1 213 860. The patent in suit relates to television audience management measurement systems. There is a significant market in the UK and elsewhere in Europe for such systems due to the fact that rates for television advertising are dependent on the number of viewers of a programme. The claimant has also entered an opposition against the same European patent at the European Patent Office.[2]The patent in suit is a divisional of the defendant's European Patent (UK) No. 0 669 070. That European patent was the subject of an earlier EPO opposition, in which the patent was maintained at first instance on 14 December 2005, but revoked on appeal on 6 March 2008. The claimant had issued UK revocation proceedings in respect of that parent patent on 5 December 2007, but those proceedings became redundant in the light of the decision of the EPO's Technical Board of Appeal.[3]The present proceedings were commenced on 16 March 2009. By an application notice dated 1 April 2009 the defendant has applied to strike out the claim, alternatively for an order that it be stayed pending the resolution of the EPO opposition proceedings in respect of the divisional patent.

The application to strike out

[4]The application to strike out is made pursuant to CPR r. 3.4(2)(b) on the basis that the claim is an abuse of the process of the court. The contention that the claim is an abuse of the process of the court is put on two distinct, if related, bases. The first basis is that the claim constitutes, to use the words of the heading to note 3.4.3.4 in Civil Procedure, "Pointless and wasteful litigation".[5]The defendant contends that the claim is pointless and wasteful because it serves no commercial purpose. The reason why it is said to serve no commercial purpose is that prior to the commencement of the claim the defendant had offered the claimant a licence. The terms of the proposed licence are confidential and, accordingly, I will not refer to them in this judgment, nor is it necessary to do so. Suffice it to say, the defendant contends that the licence terms offered remove any commercial need for the claimant to revoke the patent. In addition, the defendant points to evidence served on the present application on behalf of the claimant in which it is explained that in the United Kingdom a contract was placed by the Broadcasters' Audience Research Board Limited, commonly referred to as "BARB", whose members include the BBC, ITV, Sky, Channel 4, Channel 5 and the Institute of Practitioners in Advertising, in December 2007. That contract runs from 2010 to 2016. Because the patent in suit is a divisional, the patent will expire in 2014, if not revoked earlier. Accordingly, by the time a new contract comes up to be negotiated the patent will, in any event, have expired.[6]In support of the contention that the court has jurisdiction to strike out a claim as an abuse of the process on the grounds that it constitutes pointless and wasteful litigation, counsel for the defendant relies upon the principles that have been developed in a series of three Court of Appeal decisions in the field of defamation. The first in time was Broxton v. McClelland [1995] EMLR 485, in which the judge at first instance struck out the claim but the Court of Appeal allowed an appeal and restored it.[7]The second case was Wallis v. Valentine [2002] EWCA Civ 1034, [2003] EMLR 8. In that case, the alleged libel was only published to one person who already knew all or most of the libellous contents. Accordingly, any damages recovered would be very small or nominal. Furthermore, what was at stake was a 14 day jury trial being conducted by a claimant who had gleefully told the defendant that he had no money. The defendant was, therefore, faced with defending a trivial claim with no prospect of recovering costs from the claimant, but the court also appears to have accepted that the motive for the litigation was vindictiveness rather than a genuine desire to vindicate the claimant's rights. Accordingly, the Court of Appeal upheld the judge's decision that the claim should be struck out.[8]The third case is Jameel v. Dow Jones & Co. [2005] EWCA Civ 75, [2005] QB 946. This was another libel claim, this time involving foreign parties and very limited publication of the alleged libel within the jurisdiction. The Court of Appeal stayed the proceedings.[9]Counsel for the defendant relied on three passages from the judgment of the Court of Appeal given by Lord Phillips of Worth Maltravers M.R., as he then was, which are quoted in Civil Procedure note 3.4.3.4: "54. ... An abuse of process is of concern not merely to the parties but to the court. It is no longer the role of the court simply to provide a level playing field and to referee whatever game the parties choose to play upon it. The court is concerned to ensure that judicial and court resources are appropriately and proportionately used in accordance with the requirements of justice...." "69. If the claimant succeeds in this action and is awarded a small amount of damages, it can perhaps be said that he will have achieved vindication for the damage done to his reputation in this country, but both the damage and the vindication will be minimal. The cost of the exercise will have been out of all proportion to what has been achieved. The game will not merely not have been worth the candle, it will not have been worth the wick.[70]... It would be an abuse of process to continue to commit the resources of the English court, including substantial judge and possibly jury time, to an action where so little is now seen to be at stake. Normally where a small claim is brought it will be dealt with by a proportionate small claims procedure. Such a course is not available in an action for defamation where, although the claim is small, the issues are complex and subject to special procedures under the CPR."[10]Counsel for the defendant also prayed in aid the judgment of Laddie J. in Reckitt Benkiser (UK) v. Home Pairfum Ltd [2004] EWHC 302 (Pat), [2004] F.S.R 37. In his judgment, Laddie J. referred to Broxton v. McClelland and Wallis v. Valentine. That case was, of course, prior to the decision of the Court of Appeal in Jameel v. Dow Jones. It is sufficient to quote two paragraphs from the judgment:
"28. It follows that, on the basis of Wallis and in view of Mr. Hill's concessions, I should proceed on the basis that the court does indeed have power under the CPR to strike out a valid claim brought to enforce a right created by statute. Mr. Hill's argument was that the Claimant's application to strike out fails on the facts here. He relied in particular on the statement in Simon Brown LJ's judgment in Broxton that it is only in the most and obvious cases that a strike out will be appropriate. He said that it must be obvious that nothing will be achieved by the claim, that is brought for illicit reasons and that, in all the circumstances, the pursuit of the overriding objective would be seriously hindered were the claim allowed to proceed. 29. I accept the generality of that submission. However, I would prefer to express it somewhat differently. The court's powers under the CPR are wide. They should be tailored to meet the circumstances of the case. Although, as Wallis shows, the court has power to strike out even a prima facie valid claim where there is abuse of process, it does not follow that in all cases of abuse the correct response is to strike out the claim. The striking out of a valid claim should be the last option. If the abuse can be addressed by a less draconian course, it should be."
[11]I accept that the court has power under CPR r. 3.4(2)(b) to strike out a properly constituted claim on the ground that it is an abuse of process in circumstances where it is plain that the litigation is pointless and wasteful. In my judgment, however, a case such as the present cannot be struck out on that basis.[12]Section 72(1) of the Patents Act 1977 provides that "the court ... may on the application of any person (including the proprietor of the patent) ... by order revoke a patent... [emphasis added]." That stands in contrast with the position which previously existed under section 32 of the Patents Act 1949 whereby only "a person interested" could petition to revoke a patent. There is a series of cases which establishes that "any person" means what it says, and that no interest of any description is required to be shown by a claimant seeking to revoke a patent.[13]The first in time is a decision of the Enlarged Board of Appeal in Cases G03/97 and G04/97 INDUPACK, GENENTECH/Third Party Opposition [2000] EPOR 81. The question that was raised in that case was whether an opposition was inadmissible because it was filed by an indirect representative, a so-called "straw man". The Enlarged Board of Appeal held that an opposition was not inadmissible on that ground because Article 99 of the European Patent Convention provides that "any person" may oppose and "any person" means any person.[14]In Cairnstores Ltd v. Aktiebolaget Hassle [2002] F.S.R. 35, the claimant was an "off-the-shelf company which did not trade, had no assets and had no objects relating to the pharmaceutical industry. It applied to revoke two patents relating to the formulations of a drug owned by the defendant. The claimant declined to state the nature of any interest it might have in bringing the proceedings. It was therefore legitimate to infer that the claimant was bringing the proceedings on behalf of some undisclosed third party. The defendant applied to strike out the claim as an abuse of process. That application was refused by Pumfrey J., as he then was.[15]In his judgment he held, in short, that "any person" in section 72 meant any person and that no interest was required to be shown. So far as the question of abuse of process is concerned, he said this at [36]:
"Before dealing with these individual matters, it seems to me that it might be helpful briefly to consider the nature of an abuse of process. An abuse of process is the use of the court's procedure for an improper or collateral purpose for which that procedure was not intended. In Hunter v. The Chief Constable for the West Midlands [1982] A.C. 529, Lord Diplock said that the court had an inherent power to prevent misuse of its procedure which, although not inconsistent with the literal application of its procedural rules, would nevertheless be manifestly unfair to a party to litigation before it or would otherwise bring the administration of justice into disrepute among right-thinking people."
[16]In Oystertec Plc's Patent [2002] EWHC 2324 (Pat), [2003] R.P.C. 29, a firm of patent agents applied to the Comptroller to revoke a UK patent in the name of Oystertec. While no admission was made, it was clear from the circumstances and not denied that the patent agents were acting on behalf of an undisclosed principal. The patentee applied to the Comptroller for an order that the identity of the principal be disclosed, which was refused. The patentee's appeal to the Patents Court was dismissed by Jacob J., as he then was.[17]In support of the appeal, the patentee relied on many of the same arguments which previously had been advanced before Pumfrey J. in the Cairnstores case, but in addition relied upon the Human Rights Act 1998 and a number of considerations which were said to flow from that. Nevertheless, Jacob J. was not persuaded that the decision in Cairnstores was wrong or should not be followed. In the course of his judgment, he said at [4]:
"The rival argument advanced by Mr. Burkill QC is that the Act means exactly what it says: any person can apply for revocation; his motive, including whether he is acting for somebody else is entirely irrelevant. The Act requires no locus standi. That is the policy of Parliament. A patent is a monopoly; Parliament has provided that any member of the public can challenge a purported public monopoly. They may do so because they have a commercial interest in doing so; they may do so because they do not believe this monopoly is a good thing; they may even do so in order to annoy or harass the patentee. Unless the proceedings are conducted in such a way as to be an abuse of process, they can proceed. Whether or not there is an abuse of process depends upon what is being advanced in the proceedings, not upon the motive behind them. I think Mr. Burkill is right..."
[18]He reiterated this at [31]:
"In the end, therefore, the cases are all against Mr Miller. The Act means what it says. A consequence of that is that the motives of a person for seeking revocation of a patent are irrelevant. That being so, the fact that they are doing it at the instigation of another itself becomes irrelevant. I therefore dismiss the appeal."
[19]In the present case it is not disputed by the defendant that the claimant has a properly constituted and arguable claim for revocation of the patent in suit, nor is it suggested by the defendant that there is anything in the conduct of the present claim for revocation, as opposed to its institution, that amounts to an abuse of process. Given that any person can apply to revoke a patent and that the applicant's motive is irrelevant, in my judgment it follows that it is not an abuse of process to apply to revoke a patent even if, as counsel for the defendant argues, the claimant has no sufficient commercial interest in bringing the present claim. There is no requirement that the claimant should have any commercial interest at all. It is sufficient that the claimant contends that the patent is invalid and should be revoked. The position is different to that in defamation cases because a patent is a monopoly and section 72(1) of the 1977 Act reflects the public interest in ensuring that invalid monopolies are revoked.[20]I hasten to add that counsel for the claimant vigorously disputes that his client has no sufficient commercial interest in bringing the claim. He contends that they do have good commercial reasons for seeking to revoke the patent in suit, notwithstanding the licence which has been offered and the BARB contract. I will return to that topic in the context of considering the question of a stay.[21]The second basis upon which the defendant contends that the claim to revoke the patent in suit is an abuse of process is that it is brought for an improper or collateral purpose in the sense described by Pumfrey J. in his judgment in Cairnstores at [36]. The contention that the claim is brought for an improper or collateral purpose is based upon evidence given by Alan Johnson, a solicitor and partner in the firm of Bristows, who has the conduct of the action on behalf of the claimant, in a witness statement in opposition to the present application. Mr. Johnson says this:
"20. Finally on this topic, the choice of the UK has the obvious benefit that it clears the 860 patent out of the way in a country where the Claimant is offering services which the Defendant may allege may come within the scope of the 860 Patent. There will then be no possibility of arguments as to the scope of the licence or the parties entitled to benefit from it. 21. I would also like to draw attention to three other issues which are important to the Claimant. 22. First, there is another motivation of the Claimant in bringing these proceedings. In view of the previous conduct of the Defendant and AGB Nielsen, the Claimant is very concerned that it may face similar tactics of threats of proceedings being used against customers in other European countries based on the 860 Patent. I understand from Mr. Marks that significant audience measurement contracts will be put to tender in other European territories within the next several years prior to the expiry of the 860 Patent, including the following. [He then sets out a table of contracts in the years 2009 - 2012 in countries ranging from The Netherlands to Norway.] I understand that the 860 Patent is in force in the 3 most significant countries referred to in this table, namely, the Netherlands, Germany and Denmark. Absent a wide-ranging settlement of the issues which has proved impossible, the most effective way to demonstrate to customers and potential customers of a UK-based company the worthlessness of the 860 Patent is to have it revoked in a respected national jurisdiction such as the UK. Such a decision may be 'exported' to other national Courts, or shown to customers and potential customers to alleviate their concerns. This is in my view a legitimate and well-established use of the UK Court's jurisdiction in any matter such as this, but most especially when a company associated with the patentee has already previously behaved in a manner which, whilst commercially pragmatic, was plainly in my view in breach of s. 70 Patents Act 1977 and hence unlawful, and if repeated in other jurisdictions is likely also to be unlawful or at least reprehensible."
[22]Counsel for the defendant submits that paragraph 22 of Mr. Johnson's witness statement, and in particular the words "Such a decision may be 'exported' to other national Courts", demonstrates that the claimant's true purpose in commencing these proceedings is to obtain a judgment for use in other Contracting States of the European Patent Convention and, possibly, in the EPO. He submits that that constitutes an improper or collateral purpose as described by Pumfrey J., and accordingly an abuse of process.[23]In my judgment, what Mr. Johnson says in paragraph 22 of his statement is not evidence of any improper or collateral purpose. There is a clear line of authority which demonstrates that it is perfectly legitimate for a party to proceedings in the United Kingdom concerning the validity of a European patent to seek to rely upon what has been referred to as the "spin-off value" of a judgment of this court.[24]In Unilever plc v. Frisa N. V. [2000] F.S.R. 708, 713 Laddie J. said this:
"Furthermore, there is an advantage of proceedings being conducted here in accordance with the fairly tight time tables which are now imposed, namely that judgments obtained from this court, or obtained from this court and then from the Court of Appeal on issues of infringement and validity have in the past, at least on occasions, helped to inform the parties so as to enable them to resolve their disputes on a worldwide basis earlier rather than later."
[25]That passage was quoted by and relied upon by Kitchin J. in GlaxoSmithKline Biologicals SA v. Sanofi Pasteur SA [2006] EWHC 2333 (Pat) at [32] - [35] and again at first instance by Lewison J. in Glaxo Group Ltd v. Genentech Inc [2007] EWHC 1416 (Pat), [2007] F.S.R. 35 at [63] - [65]. On appeal in the latter case, [2008] EWCA Civ 23, [2008] F.S.R. 18, Mummery L.J., giving the judgment of the Court of Appeal, referred to that part of Lewison J.'s judgment with apparent approval at [33].[26]In my judgment, those authorities demonstrate that it is perfectly legitimate for the claimant to seek to obtain a judgment of this court on the validity of the patent in suit in the hope that it will lead to a settlement of the dispute between the parties throughout Europe. Nor, in my judgment, would it be in any way illegitimate for the claimant, absent such a settlement being achieved, to seek to rely upon the judgment of the English court in proceedings before the courts of other Contracting States or the European Patent Office. It is commonplace for parties litigating on the same European patent in a number of Contracting States to put before the courts of one Contracting State decisions arrived at in one or more other Contracting States. I do not see that such conduct can possibly be stigmatised as an abuse of process. That is particularly so given that such judgments may come to the attention of courts in other Contracting States in any event. The courts of all the Contracting States are seeking to apply the same substantive law. It would be most unfortunate if anything were to be done which made it more difficult for the courts of the Contracting States to arrive at common answers to common questions.

Application for a stay

[27]The principles applicable to an application for a stay of patent proceedings in this court pending the resolution of a parallel opposition in the EPO have recently been restated by the Court of Appeal in Glaxo Group Ltd v. Genentec Inc case as follows:
"79. The following summary is offered as general guidance on the Patents Court's discretion to stay legal proceedings on the ground that there are parallel proceedings pending in the EPO contesting the validity of the patent in suit. It is not intended to fetter the discretion of the court nor should it be interpreted as having that effect. 80. First, the discretion, which is very wide indeed, should be exercised to achieve the balance of justice between the parties having regard to all the relevant circumstances of the particular case. 81. Secondly, it is the discretion of the Patents Court, not of the Court of Appeal. The Court of Appeal would not be justified in interfering with a first instance decision that accords with legal principle and has been reached by taking into account all the relevant, and only the relevant, circumstances. 82. Thirdly, although neither the EPC nor the 1977 Act contains express provisions relating to automatic or discretionary stay of proceedings in national courts, they provide the context and condition the exercise of the discretion. 83. Fourthly, the possibility of the duplication of proceedings contesting the validity of a patent granted by the EPO is inherent in the system established by the EPC. In practice national courts exercise exclusive jurisdiction on infringement issues and they have concurrent jurisdiction with the EPO on validity issues. As Mr. Daniel Alexander Q.C. appearing for GSK said, the Contracting States and the UK Parliament contemplated that the national Patents Courts should be able to determine the same issues of patentability as the EPO. The resultant legislation allowed the determination by the national court and the EPO to proceed at the same time. Indeed, there is nothing in the EPC or the 1977 Act to prevent the commencement of revocation proceedings in the Patents Court on the very date of the grant of the patent by the EPO. 84. Fifthly, this setting indicates that, in present conditions, one factor affecting the discretion will usually carry more weight than any other. That is the length of time that it will take for the respective proceedings in the national court and in the EPO to achieve some certainty on the issue of the validity of the patent in suit so that business knows where it stands. The length of the stay of proceedings, if granted, is, in general, the most significant factor in the discretion. Both of the parties' legitimate interests and the public interest are in dispelling the uncertainty surrounding the validity of the monopoly rights conferred by the grant of a patent and the existence of nonexistence of exclusive proprietary rights on a public register. A decision in the revocation action in the Patents Court will dispel some of the uncertainty. If the likelihood is that proceedings in the Patents Court would achieve this resolution significantly sooner than the proceedings in the EPO, it would normally be a proper exercise of discretion to decline to stay the Patents Court proceedings. They should be allowed to proceed to a decision that would supply some certainty in the public interest and the parties' legitimate interests. 85. Sixthly, there are no grounds justifying the application by the Patents Court of a presumption that the duplication of legal proceedings in it and in the EPO is, without more, a ground for a stay of the proceedings in the Patents Court, as the EPC system allows for parallel proceedings contesting the validity of the patent in both the international court (which is what the EPO in substance is) and in the national court. 86. Seventhly, the Patents Court judge is entitled to refuse a stay of the national proceedings where, as here, the evidence is that some commercial certainty would be achieved at a considerably earlier date in the case of the UK proceedings than in the EPO. It is true that it will not be possible to attain certainty everywhere until the EPO proceedings are finally resolved, but some certainty, sooner rather than later, and somewhere, such as in the UK, rather than nowhere, is, in general, preferable to continuing uncertainty everywhere. Thus, in this case some degree of commercial certainty could be achieved at the trial of the UK revocation action in February without unfairly prejudicing Genentech's legitimate interests in the protection of its patent. 87. Eighthly, much weight should be given to an assertion by a commercial party that it has a good reason for resisting a stay. Normally a party is the best judge of its interests. Contentions of a competitor that there is no commercial need for early resolutions of validity should be viewed with suspicion. Detailed arguments of the sort advanced here are unlikely to carry weight and a judge would be justified in dealing with them shortly. 88. Finally, other considerations in the particular case may affect the balance of justice, such as the additional costs in the duplication of proceedings, the order in which the proceedings wee commenced and so on, but, in general, the other factors, though relevant, are of lesser importance than achieving some commercial certainty somewhere sooner. The judge will receive evidence and submissions on other relevant factors, but should be wary of over-elaboration of the issues by the parties in their evidence and legal submissions. Although due consideration must, of course, be given to the evidence and the arguments, the actual exercise of the discretion does not require the judge to deliver a judgment dealing in detail with all the points taken by the parties. A global assessment of the relevant material, supported by valid reasons, is normally sufficient to justify the decision to refuse or to grant a stay."
[28]In support of the application for a stay the defendant contends that the costs of duplicative proceeding in the present case are not justified, given that the proceedings are, as it argues, commercially pointless. Accordingly, it contends that, rather than having to incur costs on fighting on two fronts at once, it should only have to fight in the EPO pending a resolution of the disputes there. Accordingly, it says that the present case should be stayed until the resolution of the opposition. The defendant does not suggest, however, that it cannot afford to litigate in both jurisdictions.[29]To that, the claimant makes, essentially, three responses. First, the claimant contends, as I have mentioned earlier, that the present proceedings are not commercially pointless. On the contrary, the claimant contends that there is a very real point in seeking to have what it regards as an invalid patent held invalid by a court of a Contracting State. Counsel for the claimant argued that the licence which had been offered by the defendant simply was not good enough for two reasons. First, he said that it was commercially unacceptable, in particular because of the requirement of the defendant to keep the terms of the licence confidential. He submitted that that simply did not meet the claimant's commercial need in the way that a public judgment of this court holding the patent invalid would do. Secondly, he submitted that the licence was legally unacceptable because the terms of the licence were insufficiently clear. No draft licence has been put forward by the defendant, only a statement in general terms as to what the licence would extend to and the basic commercial terms. Thus it was unclear, he submitted, as to what the position would be regarding products made in the United Kingdom and exported to other Contracting States or as regards systems spanning more than one country.[30]Counsel for the defendant replied that the licence offered was clear and unambiguous. He submitted that there was no doubt as to its extent or its terms and that it met any conceivable commercial need for certainty that the claimant might have.[31]So far as this point is concerned, it seems to me that the answer lies in the judgment of the Court of Appeal in Glaxo v Genentech at [87], where Mummery LJ said that much weight should be given to an assertion by a commercial party that it has a good reason for resisting a stay and that the contention of a competitor that there is no commercial need for early resolution of validity should be viewed with suspicion. The claimant has put forward reasons why it says it needs the commercial certainty provided by a judgment and why it believes a judgment would be of assistance to it, not just in providing certainty in the United Kingdom but more generally. I am unable to say that its view on that is without foundation or fanciful.[32]The second point put forward by the claimant is the position so far as timing is concerned. The unchallenged evidence of Mr. Johnson on behalf of the claimant is that, even if the EPO proceedings are accelerated, those proceedings are unlikely to be concluded before 2013. There is a difference of view between the parties as to whether they are in a position to obtain expedition from the EPO. Until now the defendant, has not requested expedition, thinking, it says, that such a request would be pointless. Nevertheless, I am informed today that it is now prepared to make such a request. The claimant, for its part, has requested expedition and believes that such a request is not pointless. It seems to me that the question of whether a request for expedition is likely to be fruitful or not is academic. I shall assume that it will be fruitful. Nevertheless, as I have said, Mr. Johnson's evidence is predicated on that assumption and is unchallenged.[33]By comparison, it is common ground that the UK revocation proceedings would be likely to be tried in 2010 and that an appeal could be determined either in 2010 or 2011. Accordingly, the present proceedings will reach a conclusion at least two years before the conclusion of the opposition proceedings in the EPO.[34]The Court of Appeal in Glaxo v. Genentech said at [84] that the relative timings of the two proceedings would usually be the most important factor. Accordingly, I consider that the two year difference is a strong pointer in favour of refusing a stay.[35]The third point made by counsel for the claimant is with regard to costs. He pointed out that the Court of Appeal had held in Glaxo v. Genentech that duplication was inherent in the system. He also pointed out that there is no specific evidence from the defendant's side as to the costs that will be involved in litigating the present proceedings as compared to the costs that will be involved in the EPO opposition proceedings, particularly bearing in mind the potential for recycling of evidence and submissions prepared for this jurisdiction in the EPO. Accordingly, he submitted that there was no sufficient evidence of a significant costs saving if a stay were to be granted.[36]I consider that that point is well made but, on the other hand, I also consider that it is likely that the grant of a stay would lead to some saving in costs if the patent is revoked by the EPO. The question to my mind, on the present application is whether that prospect justifies a stay in view of the other factors to which I have referred.[37]Before expressing my conclusion on that, I should also refer to one other matter relied upon by counsel for the claimant, which was touched on by Mr. Johnson in paragraph 22 of his statement, which I quoted earlier. This relates to what the claimant characterises as a threat of infringement proceedings made by the defendant at a late stage in the negotiations for the BARB contract awarded in December 2007. I do not propose to go into this point in any detail. The claimant submits that that in itself constitutes a ground for the court to exercise its discretion to refuse a stay. The defendant has adduced evidence that the person who was responsible for drafting the letter in question has left its employment and that it has put in place a new team of people dealing with such matters. It contends that there is no evidence of any likely repetition of such conduct. More importantly, to my mind, the defendant points out that the BARB contract was awarded despite the alleged threat and that any concern that the claimant may have with regard to the position in other countries is a matter to be dealt with under the law of the countries in question.[38]In my judgment, so far as this point is concerned, it suffices to say that the claimant has a genuine interest, as I have said already, in achieving commercial certainty and that it has put forward reasons for thinking that a judgment of this court would provide it with a degree of certainty that the licence which has been offered would not do.[39]Looking at matters in the round, therefore, I have concluded that the present case is not one in which I should exercise my discretion to grant a stay. (For proceedings after Judgment, see main transcript)

Cited in 9 later judgments