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You are here: BAILII >> Databases >> England and Wales High Court (Patents Court) Decisions >> Anan Kasei Co, Ltd Rhodia Opérations S.A.S v Molycorp Chemicals & Oxides (Europe) Ltd [2016] EWHC 1722 (Pat) (14 July 2016) URL: https://www.bailii.org/ew/cases/EWHC/Patents/2016/1722.html Cite as: [2017] FSR 13, [2017] ILPr 8, [2016] WLR(D) 393, [2016] Bus LR 945, [2016] EWHC 1722 (Pat) |
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CHANCERY DIVISION
PATENTS COURT
Fetter Lane, London EC4A 1NL |
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B e f o r e :
____________________
ANAN KASEI CO., LTD RHODIA OPÉRATIONS S.A.S |
Claimants |
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- and - |
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MOLYCORP CHEMICALS & OXIDES (EUROPE) LTD |
Defendant |
____________________
Hugo Cuddigan QC (instructed by Bird & Bird LLP) for the Defendant
Hearing date: 8 July
____________________
Crown Copyright ©
MR JUSTICE ARNOLD :
Introduction
Issue 1: Does this Court have jurisdiction over the claim in respect of the German designation of the Patent?
"4. The Defendant has infringed the UKand Germandesignationsof the Patent as set out in the Particulars of Infringement served herewith. In respect of the German designation of the Patent, if German designation is not invalid (which is to be determined by the German courts) the Defendant's conduct has infringed, and/or would fall within the scope of the claims of, the German designation of the Patent.
(1) A declaration thateach ofthe UKand Germandesignationsof the Patent has been infringed by the Defendant.
(1A) A declaration that, if German designation is not invalid (which is to be determined by the German courts) the Defendant's conduct has infringed the German designation of the Patent. Alternatively, a declaration that the Defendant's conduct falls within the scope of the claims of the German designation of the Patent (if not found invalid, which is to be determined by the German courts)."
"Article 24
The following courts of a Member State shall have exclusive jurisdiction, regardless of the domicile of the parties:
…
(4) in proceedings concerned with the registration or validity of patents, trade marks, designs, or other similar rights required to be deposited or registered, irrespective of whether the issue is raised by way of an action or as a defence, the courts of the Member State in which the deposit or registration has been applied for, has taken place or is under the terms of an instrument of the Union or an international convention deemed to have taken place.
Without prejudice to the jurisdiction of the European Patent Office under the Convention on the Grant of European Patents, signed at Munich on 5 October 1973, the courts of each Member State shall have exclusive jurisdiction in proceedings concerned with the registration or validity of any European patent granted for that Member State;
Article 27
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 shall declare of its own motion that it has no jurisdiction."
"As I have said, validity is frequently in issue, and sometimes the most important issue, in English patent infringement proceedings. … We have always taken the view that you cannot infringe an invalid patent. … However the fact that the defendant can challenge validity does not mean that he will. … Until he does, only infringement is in issue and the approach in the Pearce case [1977] Ch. 293 applies. The court cannot decline jurisdiction on the basis of mere suspicions as to what defence may be run. But once the defendant raises validity the court must hand the proceedings over to the court having exclusive jurisdiction over that issue. Furthermore, since article 19 obliges the court to decline jurisdiction in relation to claims which are 'principally' concerned with article 16 issues, it seems to follow that jurisdiction over all of the claim, including that part which is not within article 16, must be declined. It may well be that if there are multiple discrete issues before a court it will be possible to sever one or more claims from another and to decline to accept jurisdiction only over those covered by article 16, but I do not believe that that approach applies where infringement and validity of an intellectual property right are concerned. They are so closely interrelated that they should be treated for jurisdiction purposes as one issue or claim. That interrelationship can be illustrated in two ways. Before English courts, it is common for a defendant to run an invalidity attack for the purpose of putting a squeeze on the scope of the claims. Whether there is infringement is likely to be affected significantly by the success of the invalidity attack. Secondly whether there is infringement is dependent on the wording of the claims. Yet the attack on validity frequently forces the patentee to seek to amend his claims in the course of the proceedings. The validity attack therefore directly impinges on the issue of infringement. … So obliging infringement and validity to be run together may have significant advantages. The alternative of leaving infringement to be determined in one country and validity in another has nothing to commend it and is only likely to result in an unhelpful proliferation of proceedings.
At one stage I was attracted to the argument that in Germany questions of validity and infringement are dealt with by separate courts. Therefore it is easier to treat them as discrete and severable claims. … But in the end I have come to the conclusion that this point is bad. The fact that, for constitutional reasons, different courts deal with these issues in Germany does not alter the fact that there, as here, there is in the end only one question; 'has the defendant infringed a valid claim?'"
"26. First, to allow a court seised of an action for infringement or for a declaration that there has been no infringement to establish, indirectly, the invalidity of the patent at issue would undermine the binding nature of the rule of jurisdiction laid down in Article 16(4) of the Convention.
27. While the parties cannot rely on Article 16(4) of the Convention, the claimant would be able, simply by the way it formulates its claims, to circumvent the mandatory nature of the rule of jurisdiction laid down in that article.
28. Second, the possibility which this offers of circumventing Article 16(4) of the Convention would have the effect of multiplying the heads of jurisdiction and would be liable to undermine the predictability of the rules of jurisdiction laid down by the Convention, and consequently to undermine the principle of legal certainty, which is the basis of the Convention (see Case C-256/00 Besix [2002] ECR I-1699, paragraphs 24 to 26, Case C-281/02 Owusu [2005] ECR I-1383, paragraph 41, and Case C-539/03 Roche Nederland and Others [2006] ECR I-6535, paragraph 37).
29. Third, to allow, within the scheme of the Convention, decisions in which courts other than those of a State in which a particular patent is issued rule indirectly on the validity of that patent would also multiply the risk of conflicting decisions which the Convention seeks specifically to avoid (see, to that effect, Case C-406/92 Tatry [1994] ECR I-5439, paragraph 52, and Besix, cited above, paragraph 27).
30. The argument, advanced by LuK and the German Government, that under German law the effects of a judgment indirectly ruling on the validity of a patent are limited to the parties to the proceedings, is not an appropriate response to that risk. The effects flowing from such a decision are in fact determined by national law. In several Contracting States, however, a decision to annul a patent has erga omnes effect. In order to avoid the risk of contradictory decisions, it is therefore necessary to limit the jurisdiction of the courts of a State other than that in which the patent is issued to rule indirectly on the validity of a foreign patent to only those cases in which, under the applicable national law, the effects of the decision to be given are limited to the parties to the proceedings. Such a limitation would, however, lead to distortions, thereby undermining the equality and uniformity of rights and obligations arising from the Convention for the Contracting States and the persons concerned (Duijnstee, paragraph 13)."
"The analyses of Laddie J and the Court of Appeal on the relationship between issues of infringement and validity of a patent for the purposes of articles 22(4) and 25 appear to have been implicitly approved by the ECJ by its decision in the GAT case [2006] ECR I-6509. …"
"44. It must be pointed out in this connection that the Court, in paragraph 24 of its judgment in Case C-4/03 GAT [2006] ECR I-6509, interpreted Article 16(4) of the Brussels Convention widely, in order to ensure its effectiveness. It held that, having regard to the position of that provision within the scheme of that convention and the objective pursued, the rules of jurisdiction provided for in that provision are of an exclusive and mandatory nature, the application of which is specifically binding on both litigants and courts.
45. The Court also considered that the exclusive jurisdiction provided for by Article 16(4) of the Brussels Convention should apply whatever the form of proceedings in which the issue of a patent's validity is raised, be it by way of an action or a defence, at the time the case is brought or at a later stage in the proceedings (see GAT, paragraph 25).
46. In addition, the Court has stated that to allow, within the scheme of the Brussels Convention, decisions in which courts other than those of the State in which a particular patent is issued rule indirectly on the validity of that patent would multiply the risk of conflicting decisions which the convention seeks specifically to avoid (see GAT, paragraph 29).
47. Having regard to the wide interpretation given by the Court to Article 16(4) of the Brussels Convention, to the risk of conflicting decisions which that provision seeks to avoid, and, taking account of the similarity of the content of Article 22(4) of Regulation No 44/2001 and of Article 16(4) of the Brussels Convention, noted in paragraph 43 above, it must be held that the application of the rule of jurisdiction set out in Article 25 of Regulation No 44/2001, which refers expressly to Article 22 of that regulation, and of other rules of jurisdiction such as, inter alia, those provided for in Article 31 of that regulation, are capable of being affected by the specific binding effect of Article 22(4) of Regulation No 44/2001, mentioned above in paragraph 44.
48. Accordingly, it must be established whether the specific scope of Article 22(4) of Regulation No 44/2001, as interpreted by the Court, affects the application of Article 31 of that regulation in a situation such as that at issue in the main proceedings, which concerns an action for infringement in which the invalidity of a European patent has been raised, at an interim stage, as a defence to the adoption of a provisional measure concerning cross-border prohibition against infringement.
49. According to the referring court, the court before which the interim proceedings have been brought does not make a final decision on the validity of the patent invoked but makes an assessment as to how the court having jurisdiction under Article 22(4) of the regulation would rule in that regard, and will refuse to adopt the provisional measure sought if it considers that there is a reasonable, non-negligible possibility that the patent invoked would be declared invalid by the competent court.
50. In those circumstances, it is apparent that there is no risk of conflicting decisions as mentioned in paragraph 47 above, since the provisional decision taken by the court before which the interim proceedings have been brought will not in any way prejudice the decision to be taken on the substance by the court having jurisdiction under Article 22(4) of Regulation No 44/2001. Thus, the reasons which led the Court to interpret widely the jurisdiction provided for in Article 22(4) of Regulation No 44/2001 do not require that, in a case such as that in the main proceedings, Article 31 of that regulation should be disapplied."
Issue 2: Should an order be made for the provision of samples in aid of a claim by Rhodia in the German courts?
Jurisdiction
"Application may be made to the courts of a Member State for such provisional, including protective, measures as may be available under the law of that Member State, even if the courts of another Member State have jurisdiction as to the substance of the matter."
"(1) The High Court in England and Wales or Northern Ireland shall have power to grant interim relief where –
(a) proceedings have been or are to be commenced in … a Regulation State other than the United Kingdom …;
…
(2) On an application for any interim relief under subsection (1) the court may refuse to grant that relief if, in the opinion of the court, the fact that the court has no jurisdiction apart from this section in relation to the subject matter of the proceedings in question makes it inexpedient for the court to grant it.
...
(7) In this section 'interim relief', in relation to the High Court in England and Wales or Northern Ireland, means interim relief of any kind which that court has power to grant in proceedings relating to matters within its jurisdiction, other than—
…
(b) provision for obtaining evidence."
"(1) Subject to the provisions of this section, the High Court, the Court of Session and the High Court of Justice in Northern Ireland shall each have power, on any such application as is mentioned in section 1 above, by order to make such provision for obtaining evidence in the part of the United Kingdom in which it exercises jurisdiction as may appear to the court to be appropriate for the purpose of giving effect to the request in pursuance of which the application is made; and any such order may require a person specified therein to take such steps as the court may consider appropriate for that purpose.
(2) Without prejudice to the generality of subsection (1) above but subject to the provisions of this section, an order under this section may, in particular, make provision—
…
(d) for the taking of samples of any property and the carrying out of any experiments on or with any property;
…
"
"The High Court may by order (whether interlocutory or final) grant an injunction … in all cases in which it appears to be just and convenient to do so."
Expediency
"As the authorities show, there are five particular considerations which the court should bear in mind, when considering the question whether it is inexpedient to make an order. First, whether the making of the order will interfere with the management of the case in the primary court e.g. where the order is inconsistent with an order in the primary court or overlaps with it. That consideration does not arise in the present case. Second, whether it is the policy in the primary jurisdiction not itself to make worldwide freezing/disclosure orders. Third, whether there is a danger that the orders made will give rise to disharmony or confusion and/or risk of conflicting inconsistent or overlapping orders in other jurisdictions, in particular the courts of the state where the person enjoined resides or where the assets affected are located. If so, then respect for the territorial jurisdiction of that state should discourage the English court from using its unusually wide powers against a foreign defendant. Fourth, whether at the time the order is sought there is likely to be a potential conflict as to jurisdiction rendering it inappropriate and inexpedient to make a worldwide order. Fifth, whether, in a case where jurisdiction is resisted and disobedience to be expected, the court will be making an order which it cannot enforce."
"It is a strong thing to restrain a defendant who is not resident within the jurisdiction from disposing of assets outside the jurisdiction. But where the defendant is domiciled within the jurisdiction such an order cannot be regarded as exorbitant or as going beyond what is internationally acceptable. To treat it as such merely because the substantive proceedings are pending in another country would be contrary to the policy which informs both article 24 and section 25.
Where a defendant and his assets are located outside the jurisdiction of the court seized of the substantive proceedings, it is in my opinion most appropriate that protective measures should be granted by those courts best able to make their orders effective. In relation to orders taking direct effect against the assets this means the courts of the state where the assets are located; and in relation to orders in personam, including orders for disclosure, this means the courts of the state where the person enjoined resides."
i) Molycorp is domiciled within the Court's jurisdiction and subject to its control.
ii) It is likely that the products of which samples would be required would be much the same for the purposes of Rhodia's infringement claims in the UK and in Germany. Furthermore, having one court dealing with the matter would allow a single sampling process with one set of tests for both the UK and Germany, saving cost and time; and would allow for one court to supervise the process.
iii) A sampling order in England would not interfere with the management of the German proceedings (Uzan point 1). Nor would it be contrary to the policy of the German courts – they also grant orders for the provision of samples in appropriate cases (Uzan point 2). There was no risk of disharmony or confusion as the German courts would happily receive the samples (Uzan point 3). There was no risk of conflict of jurisdiction (Uzan point 4). So far as any risk of disobedience is concerned (Uzan point 5), the English court would be best placed to deal with it as it has personal jurisdiction over Molycorp.
iv) Furthermore, obtaining samples through the processes of the German courts would be slow because they would operate by requesting assistance from the Chinese courts through the Hague Convention. This is because the samples are not in the possession of Molycorp, but of its Chinese parent company Molycorp Zibo. In contrast, this Court could make an immediate order for samples; and the samples would then be available and analysed within a couple of weeks.
Conclusions
i) this Court has no jurisdiction over Rhodia's claim in respect of the German designation of the Patent; andii) the Court does not have jurisdiction to make an order for the provision by Molycorp of samples for testing for the purpose of the German infringement proceedings which Rhodia proposes to bring.