In Interdigital Technology Corp and others v Lenovo Group Ltd and others  EWHC 255 (Pat), Hacon HHJ, sitting as a Judge, ruled at a pre-trial review that prior approval from the competent authority in Germany would be required in order for the claimants’ expert to give evidence via video-link from Germany in a forthcoming trial. The judgment, handed down on 8th February 2021, concluded that there was a real risk that giving permission for the claimants’ expert to give evidence by video-link from Germany without the consent of the German court would breach German law.
The main case in dispute, which will be heard remotely, concerns patents relating to 4G telecommunication technology. As part of the upcoming trial, the claimants are seeking to rely on oral evidence provided by their expert, based in Germany. While the preferred plan was for the expert to travel to the UK to give evidence via video-link from the claimants’ solicitors’ office, the claimants’ back-up plan was for their expert to give his evidence remotely, via video-link from Germany. Although permission had been given for the trial to be heard remotely, the defendants’ legal counsel submitted that the claimants required permission from the German judicial authorities for remote video evidence to be given in Germany, if this option was to be pursued.
Hacon J ruled that the issue of whether permission from the German court was required involved an exercise of the court’s discretion. A crucial factor in the exercise of this discretion was whether there would be a significant risk that German law would be breached if permission was not obtained. Hacon J accepted the claimants’ submission that the issue, as a dispute of fact, should be decided on the balance of probability.
After considering the evidence from both parties, Hacon J concluded that there was a “real risk that if this court gave permission for oral evidence to be obtained by video from Germany without the permission of the German court, it would be a breach of German law”. In support of this decision, he cited a German Federal Supreme Court decision from 1999 that had been provided to him by the defendants regarding the taking of evidence outside of Germany for use in a German criminal trial, in which it was held that overseas legal assistance was required. He rejected the defendants’ argument that the Federal Supreme Court case was not relevant because it was a criminal law case and so the conclusion reached could not be transferred to civil law proceedings. Hacon J further accepted the relevance of Article 17 of the Hague Convention in support of his conclusion that German courts regard the taking of video evidence abroad as a matter of sovereignty. He agreed with the defendants’ submission that if an issue of foreign sovereignty is raised where a German court takes video evidence from outside Germany, the reverse is also true: “a court outside German taking evidence by video-link from Germany would raise an issue of German sovereignty”. Hacon J therefore concluded that the claimants must obtain prior permission from the German competent authority for their expert to give his evidence remotely from Germany.
This case again illustrates the importance of making advanced preparations for remote trials in the United Kingdom where witnesses and experts giving evidence are based in foreign jurisdictions. This may necessarily involve taking advice from foreign counsel as to local law requirements and liaising with the relevant competent authority in a foreign language. In any event, these preparations should ideally be considered prior to any pre-trial review.
This case also follows on from Birss J’s recent criticism of the defendants’ legal teams in Illumina Cambridge Limited v Latvia MGI Tech SIA and others  EWHC 57 (Pat) for their delay in obtaining permission from the German and Swiss courts for witnesses to give evidence via video-link from overseas. With Article 17 of EU Regulation (EC) 1206/2001, which stipulates a procedural mechanism for taking evidence directly in another EU Member State, now no longer applicable in the UK, Hacon J’s judgment provides timely confirmation that advance permission from overseas authorities will be required in cases such as these. As the parties and courts become more familiar with virtual trials involving overseas witnesses, the route to obtaining agreement from various foreign competent authorities will become more well trodden. At the same time, judges are likely to have increasingly limited patience for this type of issue where parties have carried out insufficient preparation and planning.
Co-authored by Jack Rigelsford