Patents: jurisdiction over infringement where validity challenged

Background

EU member states have exclusive jurisdiction, regardless of the domicile of the parties, in proceedings concerned with the registration or validity of patents, including any European patent granted for that member state (Article 24, recast Brussels Regulation (1215/2012/EU)) (Article 24)).

Where a court of a member state is seised of a claim which is principally concerned with a matter over which the courts of another member state have exclusive jurisdiction by virtue of Article 24, it must decline jurisdiction (Article 27, recast Brussel Regulation) (Article 27).

In GAT v LuK, the ECJ held that only the courts of the member state where the patent is valid have jurisdiction once validity is put in issue, irrespective of whether the issue is raised by way of an action or as a defence or counterclaim (C-4/03).

In Actavis Group HF v Eli Lilly and Company, the High Court held that it had jurisdiction to try a pan-European declaration of non-infringement where the party seeking such pan-European declarations did not challenge the validity of any of the patents.

The court's power to grant interim relief does not apply in relation to provisions for obtaining evidence (section 25(7), Civil Jurisdiction and Judgments Act 1982) (section 25(7)). 

Facts

R sued M, a company domiciled in England, for infringement of the UK and German designations of its patent. M informed R that it intended to raise the invalidity of the German patent as a defence in the English action which would mean that the English court would not have jurisdiction over infringement of the German patent. M then challenged the validity of the German patent in the German Federal Patent Court.

R then applied to amend its pleadings to make it clear that any determination by the English court of infringement of the German patent was conditional on the validity decision of the German court. R also applied, as an interim measure, for the provision of samples from M to assist with its case on infringement of the German patent.

M challenged the English court's jurisdiction over infringement of the German patent, and opposed the application for samples.

Decision

The court held that it had no jurisdiction over R's claim in respect of the German patent. It also had no jurisdiction to order M to provide samples.

The German court had exclusive jurisdiction over proceedings concerned with the validity of the German patent. The issue here was whether the claim in respect of the German patent in R's proposed amended pleading was either concerned with the validity of the German patent within Article 24, or principally concerned with the validity of the German patent within Article 27.

The issue between the parties with respect to the German patent was whether M had infringed a valid claim of that patent. The proposed amendment, pleading the case conditional on the patent being found valid in Germany, should not circumvent jurisdictional rules.

Allowing the German infringement issue to be tried in the UK would multiply the risk of conflicting decisions which the recast Brussels Regulation seeks specifically to avoid. In order to determine both infringement and validity of any claim of the patent, the court must first construe that claim, and the same construction had to be applied when determining both infringement and validity. The English courts might have found that a claim of the German patent had been infringed by M on a construction of the claim which would result in the patent being invalid, but the German courts might find that the claim was valid on a different construction. The construction adopted by the English courts would not be binding on the German courts.

The fact that M had not challenged jurisdiction under the Civil Procedure Rules (CPR) was irrelevant. The CPR could not override the mandatory effect of the recast Brussels Regulation. The CPR did not apply to a jurisdictional issue that was triggered by the defence to that claim (the counterclaim for invalidity) rather than by the nature of the claim. Article 27 also required the court to decline jurisdiction regardless of any application by M.

The court did not have jurisdiction under section 25(7) to make an order for the provision by M of samples for testing for the purpose of the German infringement proceedings which R proposed to bring. R's whole purpose in applying for the order was to obtain evidence to support its infringement claim in Germany, not as it argued to preserve the samples. The court's inherent jurisdiction could not circumvent specific statutory restrictions.

If the court had had jurisdiction to make the order sought by M, it would have been expedient to make the order for the provision of samples. 

Comment

Once M challenged the validity of the German patent, R's attempt to keep the claim for infringement of the German patent in the UK action was bound to fail under UK and ECJ case law. In Actavis v Eli Lilly the party seeking a pan-European declaration of non-infringement did not challenge the validity of any of the foreign patents and so Article 24(4) did not come into play. Here, the court rejected R's attempt to establish jurisdiction by the artificial separation of the issues of infringement and validity in its pleading. In practice, the right to challenge validity is unlikely to be relinquished by a defendant to an infringement action. Unless and until the Unified Patent Court becomes a reality and extends to a post-Brexit UK, the absence of any challenge to validity is a prerequisite to establish jurisdiction for infringement of a non-UK European patent.

The jurisdiction of the German Courts to order the disclosure of samples and documents is generally regarded as being more limited than in the UK. It is presumably for that reason that R tried but failed to obtain from the English court an order for information and samples which it claimed it needed for its German infringement case.

Case: Anan Kasei Co, Ltd and Rhodia Operations S.A.S. v Molycorp Chemicals & Oxides (Europe) Ltd [2016] EWHC 1722 (Pat). 

First published in the September 2016 issue of PLC Magazine and reproduced with the kind permission of the publishers. Subscription enquiries 020 7202 1200.