Anan Kasei Co., Ltd and Another v Molycorp Chemicals & Oxides (Europe) Ltd, High Court of England and Wales (Arnold J), London, UK, 14 July 2016, Neutral Citation Number: [2016] EWHC 1722 (Pat)

The Claimants (“Rhodia”) owned the two patents in suit: the UK and German designations of EP 1 435 338, entitled “Ceric oxide and method of production thereof, and catalyst for exhaust gas clarification”. Rhodia sued the Defendant (“Molycorp”) in the English court for infringement of both the UK and German patents. Molycorp acknowledged service, but stated that it would be challenging the validity of the German patent in the German court, and it subsequently started proceedings in the Bundespatentgericht for that purpose.

This judgment followed a hearing regarding two applications, one by Rhodia and one by Molycorp. Molycorp’s application was for an extension of time to serve its defence and counterclaim, and in doing so to contest the English court’s jurisdiction over the German patent infringement claim, patent revocation proceedings in the German court having started. Rhodia was requesting an order for provision of samples by Molycorp for use in parallel proceedings in Germany.

Jurisdiction
At this point in the proceedings, Molycorp was arguing that the English court did not have jurisdiction over the claim of infringement of the German patent on account of Article 24(4) of the Brussels Regulation, Regulation 1215/2012 which provides that the courts of a “Member State shall have exclusive jurisdiction … in proceedings concerned with the registration or validity of patents … in which the deposit or registration has been applied for.”

The Court of Justice has interpreted this Article, and its predecessor provisions in the earlier Brussels Regulation and the Brussels Convention, on a number of occasions. Most importantly, in Case C-4/03 GAT v LuK, the Court of Justice determined 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 a plea in objection”. Molycorp argued that because it had challenged the validity of the patent in the German court, and would raise it as a defence in the English court if that was necessary, the English court did not have jurisdiction.

With this case as authority, it is clear, and the judge so held, that the English court had no jurisdiction. Rhodia made attempts, however, to complicate the situation.

First, it asked for the English court to give a declaration that Molycorp infringed which was conditioned on the patent being found valid in Germany. Arnold J rejected this. First, simply pleading something in a conditional manner should not permit a party to get around jurisdictional rules. Second, permitting Rhodia to continue would complicate what are meant to be simple jurisdictional rules. Third, it would go against the spirit of the Regulation to avoid inconsistent judgments: the English court and the German court may come to different constructions of the patent, leading to contradictions which could not be resolved. If both the infringement case and the validity case were heard in Germany, however, even though there is a bifurcated system, the Bundesgerichtshof could unify the judgments.

Second, Rhodia argued that Molycorp could not raise a jurisdictional challenge as it had not followed the CPR Rule 11 procedure for contesting jurisdiction. This was also rejected. Arnold J held that the timing of the challenge was irrelevant, and in this context CPR Rule 11 was not relevant. The best point, however, was Arnold J’s third justification, namely that the Brussels Regulation is directed towards the courts of Member States, not just the parties, and the court must refuse the case sua sponte if it does not have jurisdiction (per Article 27).

Provisional Measures
Rhodia requested samples from Molycorp for testing to assist with its case on infringement of the German patent. Article 35 of the Brussels Regulation provides that even if a court does not have jurisdiction over the main proceedings, it can grant such interim measures “as may be available under the law of that Member State”. It was therefore necessary to look at the domestic English law.

The English court has jurisdiction to make an order to obtain samples under s.2(7)(d) of the Evidence (Proceedings in Other Jurisdictions) Act 1975. However, according to s.25(7)(b) of the Civil Judgments and Jurisdiction Act 1982, the court cannot grant an injunction for the “provision of obtaining evidence”. Since Rhodia was unable to give an undertaking that it would not use the samples as evidence in Germany, Arnold J considered these provisions did not give him jurisdiction to grant Rhodia’s request.

Rhodia put forward a further argument under s.37(1) of the Senior Courts Act 1981, which provides the general power of the High Court to grant an order where it is “just and convenient to do so”. Arnold J did not think that it would be “a principled exercise” of the courts power to grant an order under s.37 SCA in a way which merely circumvents s.25(7)(b) CJJA. Arnold J therefore said declined to grant the order.

Read the judgment (in English) here.

Head note: Philip Davies & Nicholas Fox Simmons & Simmons LLP