KF 2024 010445 - [2025] EWHC 1584 (KB)

Ms Pickard submitted that the two jurisdictional requirements are met by the Letter of Request: the request was issued by and on behalf of the US Court and the evidence to which the application relates is to be obtained for the purpose of the US Proceedings, which are civil proceedings before the US Court.

Ms Pickard accepted that the Applicant did not, in Mr Knight’s witness statement, refer to the three points raised in Ms Butcher’s evidence, namely: (i) the non-payment of costs orders; (ii) the alleged breach of funding disclosure orders; and (iii) the complaint to the German prosecuting authorities.

Ms Pickard accepted that non-payment of costs orders is a serious matter, but submitted there were mitigating circumstances, namely the refusal of Hiscox to indemnify the Applicant and the consequent need for the Applicant to pursue Hiscox in the German courts.

Ms Pickard accepted that with the benefit of hindsight, it might have been better for the Applicant to bring Coulson LJ’s remarks to my attention and fully explain the Hiscox situation to put the point in its proper context. But the Applicant did not seek to conceal those remarks, on the contrary, the Court of Appeal decision was referred to and included in the exhibited evidence.

In the circumstances Ms Pickard submitted that none of the alleged omissions constituted a breach of sufficient materiality to justify or require the immediate discharge of the Order without examination of the merits.

Lastly Ms Pickard conceded that in light of the evidence of Ms Butcher that the requests for specific documents in Attachment A 4, 5 and 16 would not be pursued.

As in relation to Mr Charlton’s submissions I will only set out Ms Pickard’s submissions in relation to the first three requests under Attachment A.

Ms Pickard pointed out that Requests 1-3 are for copies of the portions of the Showroom Visualizer software, RROC software and Web Configurator software relating to Topalsson Software that were added in March 2020 or later. These requests are time limited to avoid capturing Rolls Royce’s pre-existing configurator software.

Ms Pickard did not accept the argument made on behalf of the First Respondent that neither the RROC or the Web Configurator software are part of the US Proceedings. She submitted that this was factually wrong as the evidence demonstrated that the Showroom Visualizer, RROC and Web Configurator are each part of the “Accused Software” referred to in the US Complaint.

Ms Pickard pointed out that the complaint that the Applicant has not identified the specific aspects of the Topalsson Software said to be infringed was in fact one of the points raised by the US Dealerships before the US Judge and that he was content that this was not a reason to deny the request.

In the event that the Court was concerned with the definitions relating to the software in Requests 1 to 3, Ms Pickard submitted that the words “relating to Topalsson’s DTE and VARY software” could be omitted leaving the requests relating to, portions of the relevant software that were added in March 2020 or later. Ms Pickard accepted the source code should be provided subject to the Protective Order already operating in the US Proceedings or with any necessary extension granted by this court.

Lastly, in relation to restrictions or conditions, Ms Pickard repeated the point she made in relation to the non-payment of costs and the Applicant’s dispute with its insurer Hiscox and submitted they are not material to the issues arising in respect of the Letter of Request. As to the alleged breach of the funding disclosure orders she pointed out that there is a separate Committal Application in the Contract Proceedings and in the circumstances, it would be wrong for this court to speculate on whether or not they are well founded.