Top Optimized Technologies v Vodafone

14 January 2021

Jaani Riordan appeared with Thomas Raphael QC for Vodafone in their application for a stay of proceedings alleging breach of confidence and patent infringement arising from Vodafone’s use of Huawei base station equipment and mobile phones, pending the outcome of parallel proceedings brought by TOT against Huawei in Spain.  The action was a jurisdiction challenge in a multi-territorial patent infringement and breach of confidence claim.

There were three sets of parallel proceedings.  TOT had brought proceedings against Vodafone and Huawei in Madrid for patent infringement and related claims.  Vodafone then successfully challenged the Spanish court’s jurisdiction on the related claims, but the infringement proceedings were allowed to continue.  Vodafone started UK proceedings to obtain declarations of non-infringement under English non-disclosure agreements.  Those UK proceedings were then stayed, and the Spanish judgment dismissed TOT’s claims.  TOT appealed the Spanish judgment, but also served a second UK action against Vodafone.

Vodafone sought a stay of the UK proceedings either under Article 30(1) of the Brussels I Regulation (recast), alternatively under the court’s case management powers.

A key issue was that of when actions can be said to be ‘related’ for Article 30(1).  Mr Justice Marcus Smith held that this concept is to be construed widely.  Here the UK and Madrid proceedings were related since they concerned essentially the same technology being used in the same base stations and raised the same allegations, and the English court had the power to stay the UK proceedings on that basis.  However, the court considered that a stay was not appropriate in this case as a matter of discretion: the UK and Madrid proceedings concerned differently framed causes of action against different defendants; it was premature to establish that the UK proceedings were an abuse of process; and there were procedural applications that the parties could be progressing in advance of the decision of the Madrid Court of Appeal.

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