No jurisdiction over foreign designations of European patents where validity is also challenged

The High Court recently dismissed a request to hear an infringement action in respect of the German designation of a European patent. In reaching this decision, the High Court confirmed that where the validity of the European patent is called into question, the English courts have no jurisdiction to hear an infringement action in respect of a foreign designation, and careful drafting or re-drafting of the infringement action does not provide a way round this position.

Background
It is well known that English courts can hear infringement actions in relation to foreign patents under certain circumstances. Where UK and foreign patent rights are both at issue, the ability to bring infringement actions against multiple claims in the English courts may allow a claimant to reduce costs and obtain a more expedient decision than if claims were litigated in multiple jurisdictions. 

Claims for non/-infringement and declaratory relief in respect of foreign designations of European patents can be determined by the English courts where validity of that patent has not been raised. However, where the validity of the patent is challenged in a counterclaim, the courts of the state where the patent is registered will instead have exclusive jurisdiction over the final determination of infringement (GAT v Luk (Case C-4/03) and Articles 24(4) and 27 of the Recast Brussels I Regulation). This does not prevent national courts exercising pan-European jurisdiction in an action for a declaration of non-infringement in which the validity of the patent is not challenged (Actavis v Eli Lilly [2013] EWCA Civ 517).

The European Court of Justice held in Solvay SA v Honeywell Fluorine Products Europe BV (Case C-616/10) that the exclusive jurisdiction rule (invoked when the validity of the patent is in question) does not preclude a court from invoking provisional measures ordering a defendant to stop infringing a patent on a pan-European basis (even if validity is challenged). Thus, one national court may have jurisdiction in relation to provisional measures even where another national court would have jurisdiction as to the substance of the matter.

Facts
The facts of the case were as follows:

• Rhodia, as the exclusive licensee of the UK and German designations of a European patent "Ceric oxide and method for production thereof, and catalyst for exhaust gas clarification", brought infringement proceedings in the English Patents Court (a division of the High Court) against the English-domiciled defendant, Molycorp, for infringement of the UK and German designations of the patent.
• Rhodia issued an application for an order for the provision by Molycorp of samples of its ceric oxide products for testing for the purposes of infringement of both the UK and German designations.
• Molycorp then issued nullity proceedings in the German Federal Patent Court challenging the validity of the German designation of the patent.
• Rhodia applied to have the infringement actions heard before the English courts, while Molycorp challenged the jurisdiction of the English courts in respect of the claim for infringement of the German designation.
• Rhodia declined to accept Molycorp’s position and amended its allegations of infringement by separating out the issue of validity to try to enhance its case on the jurisdiction in respect of infringement of the German designation.

 Decision
Does the English Patents Court have jurisdiction over the infringement claim in respect of the German designation of the patent?
The parties were aware that the German courts had exclusive jurisdiction over the validity of the German designation of the patent. The issue in dispute was whether the amended allegations of infringement by Rhodia were “concerned with” the validity of the German designation, or “principally concerned with” the German designation (within Articles 24(4) or 27 of the Brussels Regulation), such that jurisdiction would fall exclusively with the German courts.

Rhodia argued that its amended allegations of infringement excluded any question on the validity of the German designation, and so the English courts had jurisdiction over the claim in respect of the German designation. Molycorp contended that the amended allegations still fell within these provisions of the Brussels Regulation because the question of infringement is inseparable from that of validity.

The High Court agreed with Molycorp, considering that the dispute was simply whether “Molycorp has infringed a valid claim” of the patent. Rhodia’s careful re-drafting of the allegations were seen to be a “transparent attempt” to circumvent the mandatory nature of the rule of jurisdiction laid down in the Brussels Regulation. To allow Rhodia’s claim to proceed, according to the High Court, would undermine the predictability of the rules of jurisdiction.

The High Court emphasised that the same claim construction must be used for both infringement and validity. If these issues were allowed to be tried separately, by different courts, the risk of conflicting decisions would be multiplied since a claim construction adopted by the English courts would not be binding on the German courts.

Should an order be made by the English court for the provision of samples in aid of a claim by Rhodia in the German courts?
Rhodia intimated that if the English court did not have jurisdiction in respect of the German designation, it still wished to obtain samples from Molycorp for testing for the claim for infringement, which Rhodia would bring in a German court in that event.

The High Court held that Rhodia’s application was for the sole purpose of obtaining evidence to support its infringement claim in Germany. This form of interim relief could not be granted by the High Court, as in its opinion, it did not have jurisdiction in relation to the subject matter of the infringement proceedings (in accordance with the exclusion in Section 25(7)(b) of the Civil Jurisdiction and Judgments Act 1982, which Rhodia intended to bring in the German courts.

Comment
This decision illustrates that where infringement actions are brought in respect of UK and foreign designations of European patents and validity is challenged, the courts of the state where the patent is registered will have exclusive jurisdiction. Careful drafting or re-drafting of the action is not a way to circumvent the rule of jurisdiction laid down in the Brussels Regulation.