TY - JOUR
AU - England, Paul
AB - ‘There is no doubt that the modern trend is in favour of the enforcement of foreign intellectual property rights’. (LucasFilm1) There are probably three, broad issues that have entertained English patent lawyers more than any others over the past 10 years. They all concern extra-territorial matters in some way: the Unified Patent Court (UPC); the approach to fair, reasonable and non-discriminatory (FRAND) terms and the UK leaving the European Union. The last of these, Brexit, has had the well-known consequence that the UK will not participate in the first: the UPC. It also means that the UK is no longer a party to the Brussels Regulation.2 For the time being, at least, it is not a party to Lugano3 either. Whilst these developments might be thought to diminish the role of the UK in extra-territorial patent matters, the second issue, the jurisdiction to determine global FRAND terms in Unwired Planet,4 has increased it. If you add to Unwired Planet the impact of Actavis v Eli Lilly5 on cross-border jurisdiction then, as foreshadowed in LucasFilm, extraterritorial jurisdiction looks very much like a trend. Where do these apparent counter-currents leave the cross-border jurisdiction of the Patents Court of England and Wales in other respects; in particular, is there any scope for the award of cross-border preliminary injunctions? This article seeks an answer to this question, by investigating (i) justiciability under English law; (ii) whether the English court would consider itself the appropriate forum for such a measure and (iii) the procedural and strategic issues that would be raised. The author Paul England, PhD, is a senior professional support lawyer in the IP/IT group of Taylor Wessing, London, specializing in patents. Paul is the editor and lead author of the forthcoming A Practitioner’s Guide to European Patent Law: for national practice and the UPC (Second edition, Bloomsbury) and A Practitioner’s Guide to the Unified Patent Court and the Unitary Patent. This article Arguably English law provides the ability of the court to award cross-border preliminary injunctions in patent disputes. However, although there may be strategic reasons why a party may wish to obtain such an injunction, there would be a number of hurdles to overcome when attempting to do so. The UK position prior to 31 December 2020 Until 31 December 2020, the Brussels Regulation had force in the UK. As regards cross-border patent matters, this piece of EU legislation had been interpreted by three major Court of Justice (CJEU) rulings: GAT v LuK;6Roche v Primus7 and Solvay v Honeywell.8 What did these say about the cross-border jurisdiction of the EU member state courts? GAT v LuK GAT v LuK dealt with predecessor legislation to the Brussels Regulation, the Brussels Convention,9 specifically Article 16(4): in proceedings concerned with the registration or validity of patents, trade marks, designs, or other similar rights required to be deposited or registered, the courts of the Contracting State in which the deposit or registration has been applied for, has taken place or is under the terms of an international convention deemed to have taken place; The Court of Justice explained that Article 16(4) ensures jurisdiction rests with the courts most closely linked to the proceedings in fact and law; particularly important in patent matters, because disputes are often dealt with by specialized courts. Exclusive jurisdiction is also necessary because the grant of patents involves the national administrative authorities, which touches on deeper diplomatic and sovereignty matters (see further below). In GAT v LuK, the CJEU had been asked for a preliminary ruling on whether Article 16(4) should be interpreted to apply when the defendant in a patent infringement action, or the claimant in a declaratory action, pleads that the patent is invalid. A claim to invalidity had been brought in support of a declaration of non-infringement—GAT had sought to establish in the Düsseldorf Regional Court that two of LuK’s French designated European patents were invalid, as well as a declaration that it did not infringe them. The CJEU ruled that the exclusive jurisdiction provided for by Article 16(4) should apply whatever the form of the proceedings in which the issue of a patent’s validity is raised: by way of an action or a defence, or at whatever stage in the proceedings. Otherwise, simply by the way the claims are formulated, it would be possible to circumvent the mandatory nature of the Article. Furthermore, allowing decisions in which foreign courts rule indirectly on the validity of a patent would multiply the risk of conflicting decisions, which the legislation is specifically intended to avoid. As a result of GAT v LuK, Article 16(4) was amended to include the words: ‘irrespective of whether the issue is raised by way of an action or as a defence’. This is now Article 24(4) Brussels Regulation. Cross-border infringement actions—Roche v Primus On the same day as GAT v LuK, the Court of Justice also ruled on a reference that had been made by the Dutch Supreme Court in Roche v Primus. This case concerned proceedings for infringement of a European patent by Roche Nederland BV, a Dutch domiciled company, and several companies in the Roche group based in different European Member States. It was claimed that each of these companies only infringed the respective national part of the European patent in force in the country of its domicile. The Court of Justice was asked whether the defendants were sufficiently closely connected for the purpose of the application of Article 6(1) Brussels Convention that all the defendants could be dealt with in one action in the Netherlands. Article 6(1) is now Article 8(1) Brussels Regulation: A person domiciled in a Member State may also be sued: (1) where he is one of a number of defendants, in the courts for the place where any one of them is domiciled, provided the claims are so closely connected that is it expedient to hear and determine them together to avoid the risk of irreconcilable judgments resulting from separate proceedings. The CJEU ruled that there was not a sufficient connection and the infringement of each national part of the European patent should be heard in the court of its country of registration. The court reasoned that when defendants commit infringements only in the territory in which they are domiciled, there is no risk of contradictory decisions being given if infringement proceedings are brought in their Member States of domicile, separately—the existence of the same facts cannot be inferred and, because European patents continue to be governed by the national law of the Member States for which the patent is granted, any divergences between the decisions given by the courts concerned do not arise from the same legal situation. The CJEU went on to say that even assuming the court that is seised were able to accept jurisdiction, the consolidation of the patent infringement actions would still be at risk of ‘at least a partial fragmentation’. This was because the validity of the patent could be raised indirectly, triggering the exclusive jurisdiction laid down in (what is now) Article 24(4) Brussels Regulation. Preliminary injunction cases—Solvay v Honeywell In Solvay v Honeywell, the CJEU ruled on another referral from the Netherlands concerning Article 8(1) Brussels Regulation. Here, however, the action was for a preliminary injunction rather than proceedings on the merits. The facts also differed significantly from those in Roche v Primus: the European patent at issue was allegedly infringed by each of the defendant companies, one Dutch and two Belgian, in their own country of domicile in addition to the countries of domicile of their co-defendants. The defendants raised a defence of invalidity in response to the preliminary injunction. How, the Hague District Court asked the Court of Justice, did (what are now) Article 8(1) and Article 24(4) apply in these circumstances? The CJEU repeated what it had said in Roche v Primus: for Article 8(1) to apply, a risk of diverging outcomes from the national courts must arise from the same situation of fact and law. In this case, unlike Roche v Primus, the situation of fact and law determined by different courts would be the same and potential divergences would therefore be likely to arise: the defendants were each separately accused of committing the same infringements with respect to the same products and such infringements were committed in the same member states as each other, so that they adversely affected the same national parts of the European patent at issue. As a result, the court ruled that Article 8(1) would apply to allow the proceedings against all defendants to be brought in the court of one of them. Significantly, as regards the invalidity defence, the Court of Justice concluded that in circumstances where the court hearing the preliminary injunction did not make a final decision on the invalidity of the patent invoked in defence, it did not risk making a conflicting decision of the kind Article 24(4) is designed to avoid. In other words, preliminary injunctions form an exception to the general rule in Roche v Primus. The UK position from 31 December 2020 From 11:00pm, 31 December 2020, the Brussels Regulation ceased to apply in the UK, together with Lugano, which contains provisions drafted in similar terms in relevant respects. Therefore, even though Court of Justice rulings that pre-date 31 December 2020 continue to bind the first instance courts of England and Wales, including the Patents Court,10 the relevance of the three above cases, because they apply the Brussels Regulation, are diminished in direct terms Instead, cross-border jurisdiction must be assessed according to English law. But, in doing so, it must be appreciated that the various manifestations of the Brussels Regulation, and the case law interpreting it, have shaped that English law over time. The applicable principles in English law In fact, the impact of the original Brussels Convention on English law can be seen by tracing the principles back to the rule established in Moçambique.11 This stated:12 …inasmuch as property of the kind is to be held according to the laws of the country where it is situated, and as the right of granting it is vested in the ruler of the country, controversies relating to such property can only be decided in the state in which it depends. Moçambique concerned the title, possession and trespass of foreign land. However, in Potter v Broken Hill,13 the High Court of Australia reasoned that the principle of comity of nations, together with the act of state doctrine in the United States Supreme Court,14 required a similar rule to Moçambique for patents. The act of state doctrine says: Every sovereign State is bound to respect the independence of every other sovereign State, and the Courts of one country will not sit in judgment on the acts of the government of another done within its own territory. Redress of grievances by reason of such acts must be obtained through the means open to be availed of by sovereign powers as between themselves.15 Consequently, in Potter v Broken Hill these doctrines were applied to patents so that not only was the subsistence of a patent a matter for the courts of the country (or state) in which the patents was granted, but also its infringement. The inclusion of infringement within the rule was changed by the advent of the Brussels Convention, which permitted, as discussed above, circumstances in which the infringement of a patent might be adjudicated by a foreign court. But now that the Brussels Regulation no longer has force in the UK, does the law revert simply to Moçambique and Potter v Broken Hill? The answer to this question comes from Actavis v Eli Lilly16 which, due to the domicile of the defendant in the US, was outside the scope of the Brussels Regulation17 and decided under English law. In this case, the defendant did not seek to argue that the claims for declarations of non-infringement were not justiciable before the Patents Court by virtue of the Moçambique rule. The reason was the decision of the Supreme Court in LucasFilm,18 in which Lords Walker and Collins overturned the Court of Appeal to hold that the English court did have jurisdiction to decide the infringement of a foreign copyright and that, as regards infringement, the Moçambique rule no longer applied: There is no doubt that the modern trend is in favour of the enforcement of foreign intellectual property rights. First, article 22(4) of the Brussels I Regulation only assigns exclusive jurisdiction to the country where the right originates in cases which are concerned with registration or validity of rights which are ‘required to be deposited or registered’ and does not apply to infringement actions in which there is no issue as to validity. This can rarely, if ever, apply to copyright. Second, the Rome II Regulation also plainly envisages the litigation of foreign intellectual property rights and, third, the professional and academic bodies which have considered the issue, the American Law Institute and the Max Planck Institute, clearly favour them, at any rate where issues of validity are not engaged. There are no issues of policy which militate against the enforcement of foreign copyright. States have an interest in the international recognition and enforcement of their copyrights …. Many of the points relied on by the Court of Appeal to justify the application of the Moçambique rule in this case as a matter of policy would apply to many international cases over which the English court would have jurisdiction and would in principle exercise it, especially the suggestion that questions of foreign law would have to be decided. It was also said by the Court of Appeal that enforcement of foreign intellectual property law might involve a clash of policies such that a defendant may be restrained by injunction from doing acts in this country which are lawful in this country. But such an injunction will be granted only if the acts are anticipated to achieve fruition in another country, and there is no objection in principle to such an injunction. Nor is there any objection in principle, as the Court of Appeal thought, to a restraint on acts in another country. Extra-territorial injunctions are commonly granted here against defendants subject to the in personam jurisdiction. As a matter of justiciability, in Actavis v Eli Lilly, Arnold J (as he then was) did not consider that claims for patent infringement or claims for declarations of non-infringement stood in a different position to claims for copyright infringement, and the defendant did not argue it. As a result, although the Moçambique rule still applies in respect of validity, LucasFilm has confirmed the law on a more liberal course as regards infringement. Limitations on cross-border infringement actions However, there are still considerable restrictions on cross-border infringement related actions in English law. In Coin Controls Ltd v Suzo International (UK) Ltd,19 Laddie J considered (what are now) Articles 24(4) and 27 Brussels Regulation.20 The case concerned a claim for infringement of the UK, German and Spanish designations of a European patent. The defendant had put the validity of the patent in issue. The judge said: once the defendant raises validity the court must hand the proceedings over to the court having exclusive jurisdiction over that issue. Furthermore, since [Article 27] obliges the court to decline jurisdiction in relation to claims which are ‘principally’ concerned with [Article 24(4)] issues, it seems to follow that jurisdiction over all of the claim, including that part which is not within [Article 24(4)], 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 24(4)], 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. The reasoning in Coin Controls was that infringement and validity are two inseparable aspects of the same question, ‘has the defendant infringed a valid claim?’. This reasoning has been subsequently applied by the Court of Appeal in Fort Dodge21 and Prudential Assurance,22 where it was considered to be implicitly approved by the CJEU in GAT v LuK.23 More recently, Arnold J (as he then was) applied Coin Controls in Anan Kasei.24 In this case, the judge held that the English court has no jurisdiction to hear claims concerning infringement of a German designation of a patent when that patent is implicitly asserted to be valid. In particular, the English proceedings would be ‘concerned with’ the validity of the German designation, under Article 24(4) Brussels Regulation, or at least ‘principally concerned with’ it under Article 27. As in Coin Controls, the infringement case could not be separated from that of validity. In what circumstances would the principle in Coin Controls not be triggered? One answer, from Actavis v Eli Lilly, is that validity is not raised in a cross-border declaration of non-infringement if the claimant undertakes not to raise it (which is the prerogative of the claimant in these actions). To consider whether a hypothetical cross-border preliminary injunction action would fall foul of Coin Controls it is necessary to consider the role of validity in such an action. Validity in a cross-border preliminary injunction action Before deciding what the impact of validity is, it is necessary to determine the extent to which it is raised. This means knowing what law applies. English law or foreign law? The Brussels Regulation may no longer apply to the UK, but the rules of Rome II on applicable law25 continue to apply by operation of statutory instrument.26 As explained in Actavis v Eli Lilly, the purpose of Rome II is to harmonize the approaches to the law applicable to non-contractual obligations. Under Article 15 Rome II, if an English court decides a legal dispute in a foreign jurisdiction, the lex causae applies. Procedural matters falling within Article 3(1) are, however, reserved for the lex fori. For example, Article 15(c) says that the question of whether a successful patentee in an infringement claim can elect between an award of damages and an account of profits is governed by the lex causae rather than the lex fori, as is the determination of damages.27 The question whether an injunction may be granted is also governed by the lex causae,28 under Article 15(d), although this provision contains the qualification ‘within the limits of powers conferred on the court by its procedural law’, indicating the distinction between: the question of principle as to whether an injunction should be granted, which will be a matter for the lex causae, and the procedural conditions which must be observed, which will be a matter for the lex fori. Thus the rule under English law that three clear days’ notice must be given of an application for an interim injunction, save where circumstances of urgency justify giving less notice or where it is justified to take the defendant by surprise by giving no notice at all, is a procedural condition which is a matter for the lex fori.29 Consequently, the role of validity in assessing a preliminary injunction is to be made by the English court according to the national law of the country in which the patent is registered. Assessing a preliminary injunction in national jurisdictions In the English Patents Court itself, validity plays next to no role in assessing a preliminary injunction. This is evident from the fact that even where a patent has been held invalid at first instance, a preliminary injunction based on it was continued pending appeal.30 The key patent jurisdictions in Europe take a very different approach. In France, when determining a preliminary injunction, in addition to assessing infringement, the French courts will also conduct a preliminary assessment of the validity of the patent. The Dutch court will need prima facie evidence of infringement, and will come to a provisional view about the patent’s validity (the likelihood of invalidity of the patent concerned in the main proceedings is a reason for refusal of a preliminary injunction).31 In this respect, proceedings are often referred to as a ‘mini-trial on the merits’. Nonetheless, unless new evidence of invalidity is produced, such as new prior art not available on prosecution, the court will be more likely to assume validity. This is particularly the case where the patent has been contested through an opposition and even appeal. Except in circumstances such as generic launch, in the Düsseldorf and Karlsruhe courts of Germany the patent must be confirmed in first instance opposition or nullity proceedings.32 By contrast, the Munich Court of Appeals has taken a more liberal approach in which a preliminary injunction can be ordered if there are no serious doubts about validity. This approach has now been challenged in Munich in the Elektrische Anschlussklemme case,33 which followed Düsseldorf and Karlsruhe, and a reference to the Court of Justice on the issue has subsequently ensued. In summary, with the notable exception of the English courts, there is no doubt that the validity of a patent plays a role in preliminary injunction proceedings in the most prominent European patent courts. Is this enough to trigger the Coin Controls principle? In an English court, would the consideration of validity under foreign law, of the kind described, offend against the principle in Coin Controls that ‘[infringement and validity] are so closely interrelated that they should be treated for jurisdiction purposes as one issue or claim’? The rule in Moçambique, and its parallel expressions in the state doctrine and Article 24(4) Brussels Regulation, is concerned that the courts of one country should respect the sovereignty of another as the only authority vested with the power to grant rights in its territory. This is reflected in the national register. The reasoning in Coin Controls is, however, based on an interrelationship that the court expressly illustrated in two ways: that it is common for a defendant to run an invalidity attack for the purpose of putting a squeeze on the scope of the claims, meaning that whether there is infringement is likely to be affected significantly by the success of the invalidity attack; and whether there is infringement is dependent on the wording of the claims, which the attack on validity frequently forces the patentee to seek to amend in the course of the proceedings. The first of these situations concerns a final finding of infringement and, in the second, the court has in mind proceedings on the merits in which validity is raised and the scope of a patent amended.34 Both have an impact or potential impact upon the register of the kind that Moçambique seeks to avoid. Neither of the situations that Coin Controls describes relates to a provisional finding of infringement or validity, or the assumption of validity, that may feature in foreign preliminary injunction proceedings; the latter do not affect the register. As described above, in Solvay v Honeywell, the Court of Justice held that a preliminary injunction does not require a final decision on the invalidity of the patent. In Actavis v Eli Lilly,35 Arnold J (as he then was) drew an analogy with exactly this case when reasoning why he should award a cross-border declaration of non-infringement. Lilly had argued that, even though Actavis had not challenged the validity of the patent, validity was still relevant to the scope of the patent’s claims. But the judge did not think that this made any real difference to the question of whether the foreign courts are the appropriate fora.36 For these reasons, it is submitted, a claim to a cross-border preliminary injunction in the English court should not be inconsistent with the rule in Coin Controls, and by implication Moçambique, and is justiciable. Forum non conveniens Would the English court nonetheless be the appropriate forum for hearing a cross-border preliminary injunction, or would such an action be stayed for reasons of forum non conveniens? The principles to be applied to this question are stated by Lord Goff of Chieveley in Spiliada:37 The basic principle is that a stay will only be granted on the ground of forum non conveniens where the court is satisfied that there is some other available forum, having competent jurisdiction, which is the appropriate forum for the trial of the action, i.e. in which the case may be tried more suitably for the interests of all the parties and the ends of justice. Since the question is whether there exists some other forum that is clearly more appropriate for the trial of the action, the court will look first to see what factors there are which point in the direction of another forum. These are the factors which Lord Diplock described, in MacShannon’s case [1978] A.C. 795, 812, as indicating that justice can be done in the other forum at ‘substantially less inconvenience or expense.’ … Lord Keith of Kinkel, in The Abidin Daver [1984] A.C. 398, 415, … referred to the ‘natural forum’ as being ‘that with which the action had the most real and substantial connection’. So it is for connecting factors in this sense that the court must first look; and these will include not only factors affecting convenience or expense (such as availability of witnesses) but also other factors such as the law governing the relevant transaction …, and the places where the parties respectively reside or carry on business. If the court concludes at that stage that there is no other available forum which is clearly more appropriate for the trial of the action, it will ordinarily refuse a stay …. If however the court concludes at that stage that there is some other available forum which prima facie is clearly more appropriate for the trial of the action, it will ordinarily grant a stay unless there are circumstances by reason of which justice requires that a stay should nevertheless not be granted. In this inquiry, the court will consider all the circumstances of the case, including circumstances which go beyond those taken into account when considering connecting factors with other jurisdictions. One such factor can be the fact, if established objectively by cogent evidence, that the plaintiff will not obtain justice in the foreign jurisdiction …. The answer to the forum non conveniens question is therefore very fact-dependent. There were, however, some general points aired in Eli Lilly v Actavis. In particular, it was argued that foreign law is difficult and expensive to prove because it is treated as a question of fact and it may lead to different outcomes. But Arnold J (as he then was) considered this to be increasingly common in English courts38 and, whilst he accepted that there are differences in approach in different national courts, this seems to have made a virtue of a single English action in the judge’s mind: I accept that there are differences. In my view, however, the differences are rather less now than they have been in the past. Certainly, in recent years the European patent judiciary have been striving for consistency. I am sceptical that the remaining differences of approach, as opposed to other factors, are responsible for different outcomes in parallel cases. In any event, it seems to me to be manifest that it will reduce the likelihood of inconsistent decisions if one court at first instance and one court on appeal determines all five of Actavis’ claims. The judge did not think the relative speed of English proceedings should be a factor in whether the English action is stayed on forum non conveniens grounds, however, because the question was more narrowly concerned with the appropriate forum for trial only. The fact that Lilly’s European Patent Operations Department was based in the UK was a small factor in favour of the English court, but neither side sought to rely on the location of witnesses as significant. In conclusion, the judge held that Lilly had not shown that the courts of France, Germany, Italy and Spain were the appropriate fora for the trial of Actavis’ claims in relation to the French, German, Italian and Spanish designations of the Patent. And he did not consider that it had been shown that those courts were clearly or distinctly more appropriate than the Patents Court. As a result, the judge declined to grant a stay of the claims on the ground of forum non conveniens. Despite the inherent factual sensitivity of any forum non conveniens analysis, the broader considerations at issue in Actavis v Eli Lilly would, it is submitted, be equally in favour of a cross-border preliminary injunction. There are, however, other considerations that may need to be factored in. Other considerations Stay and enforcement abroad The award of a cross-border preliminary injunction in the English court raises the possibility of duplicative actions with actions in the courts of the countries in which the relevant patents are registered. This risk, between the EU member states and the English courts, if all the relevant proprietors and licensees likely to take part in the action are parties to the English action, is managed by the international lis pendens provisions in Article 33 Brussels Regulation: 1. Where jurisdiction is based on Article 4 or on Articles 7, 8 or 9 and proceedings are pending before a court of a third State at the time when a court in a Member State is seised of an action involving the same cause of action and between the same parties as the proceedings in the court of the third State, the court of the Member State may stay the proceedings if: it is expected that the court of the third State will give a judgment capable of recognition and, where applicable, of enforcement in that Member State; and the court of the Member State is satisfied that a stay is necessary for the proper administration of justice. 2. The court of the Member State may continue the proceedings at any time if: the proceedings in the court of the third State are themselves stayed or discontinued; it appears to the court of the Member State that the proceedings in the court of the third State are unlikely to be concluded within a reasonable time or the continuation of the proceedings is required for the proper administration of justice. 3. The court of the Member State shall dismiss the proceedings if the proceedings in the court of the third State are concluded and have resulted in a judgment capable of recognition and, where applicable, of enforcement in that Member State. Under Article 33.1, if a court of a member state is seised by an action concerning the same parties and the same cause of action as a court of a third state (in this case, the English court) it has the discretion to stay its proceedings.39 If the action in the third state has resulted in a decision under Article 33.3 the court must stay. In each case, as a matter of national law, the judgment must be capable of recognition and enforcement.40 This raises the question whether an infringement action on the merits would be considered the same cause of action as a preliminary injunction. If it is, then the claimant risks preventing further proceedings on the merits. The Court of Justice in Tatry41 stated that a cause of action is as follows: the ‘cause of action’ comprises the facts and the rule of law relied on as the basis of the action [and] [t]he ‘object of the action’ … means the end the action has in view. … An action seeking to have the defendant held liable for causing loss and ordered to pay damages has the same cause of action and the same object within the meaning of that article as earlier proceedings brought by that defendant seeking a declaration that he is not liable for that loss.42 For example, it follows from Tatry that an infringement action is the same cause of action as a non-infringement action. It may be debatable whether a preliminary injunction action necessarily concerns the same facts and law as an action on the merits, at least in all countries, or whether they have the same end in view. It is submitted here that they do not, and that there is inherently no risk of duplicative decisions between a preliminary finding of infringement with the purpose of holding the status quo, and a final decision that leads to permanent remedies. Consequently, whilst preliminary injunctions must be stayed in all foreign countries covered by a cross-border preliminary injunction, it may not necessarily follow that actions on the merits will also be stayed. This will of course be an important issue strategically (see below) as well as a potential consideration of the court of its utility as the forum. Cross-undertaking for damages A cross-undertaking is a procedural measure, and so governed by the lex fori. Therefore, it should pose no difficulty for the English court to require an undertaking from the claimant to pay damages caused by a preliminary injunction in all the countries covered. The calculation of damages under a cross-undertaking would be determined by the English court according to national law of the countries covered by the undertaking.43 The UPC The possibility of the English court awarding a cross-border preliminary injunction inevitably raises the question of what its impact might be on the UPC, when and if that court comes into operation. The UPC is not a jurisdiction separate to those of the Member States. Instead, it is a court simultaneously present, jointly and severally in the jurisdictions of the participating Member States.44 As a result, the same cross-border jurisdictional principles discussed above in respect of European national courts apply equally in respect of the UPC as a member state court. As may be expected, however, the UPC presents its own considerations in the detail. For example, a preliminary injunction in the UPC does not necessarily require consideration of the patent’s validity—the Rules of Procedure state only that the court may require the applicant to provide reasonable evidence that the patent is valid.45 The lis pendens provisions of Article 33 Brussels Regulation also apply to the UPC as a court of a member state. This raises the interesting question of whether a cross-border decision of the English court that applies to a European bundle patents,46 or indeed a unitary patent, would receive full or partial recognition in the court.47 If partial, a further question arises as to whether the UPC would be barred from: Proceeding with a preliminary injunction with which it is seised in respect of all designations in the European bundle; or, Proceeding with the action regarding only the national designations at issue in the English cross-border decision, but proceeding with the others. Interpretation 2 appears inconsistent with the requirement in the UPC legislation that all European patent designations are dealt with by the UPC together and at the same time.48 But it does have the advantage of avoiding the risk of irreconcilable judgments whilst allowing the action concerning the other European patent designations to progress. There is currently no answer to this particular question. What of forum non conveniens, given that being able to deal with multiple actions at the same time weighed in favour of using the English jurisdiction in Actavis v Eli Lilly? The UPC is itself designed to do this, at bigger scale and, in theory at least, more efficiently. The question that the English court would have to wrestle with is whether it would be willing to provide effectively a rival centre of litigation to the UPC on such matters. In suitable cases, the English court could theoretically decide a preliminary injunction for all commercially important countries in which an equivalent European patent is in force or even a unitary patent, plus the UK—a jurisdiction broader than the UPC itself. This may be a very good reason why the court would entertain a cross-border preliminary injunction, particularly if it covers other jurisdictions, such as Spain, Switzerland and Poland that are not participating in the UPC. Pros, cons and conclusion The conclusion of this article is that a cross-border preliminary injunction is justiciable in the English court. Whether it is suitable to hear a case is a matter for the court to determine using forum non conveniens principles. These principles, such as they have been applied in Actavis v Eli Lilly, suggest good reasons why the court would find the English court the appropriate forum. Questions may follow, however, on whether all of the affected foreign jurisdictions would recognise and enforce such an injunction. There will be, of course, strategic reasons for and against why a party would want an injunction in a particular situation. The most obvious advantage is that an injunction could simultaneously halt manufacture and supply of an infringing product in several countries, in one proceeding. The English jurisdiction also carries advantages of speed. As against the UPC, speed is also likely to be a factor, as is greater predictability and substantive factors such as the greater emphasis placed on the balance of convenience than, if at all, validity.49 There are other considerations. In particular, the impact of a claimant’s cross-border preliminary action on their ability to follow-up with proceedings on the merits in the countries covered. As discussed above, the issue of whether a preliminary injunction is the same cause of action as infringement on the merits, triggering lis pendens provisions, would require consideration for each country concerned. However, there is no obvious reason why the national courts could not provide the forum for trial on the merits whilst the status quo is held in the English court. If and when the English courts do come to consider such an action it will be a new test to the limits of the Supreme Court’s statement in LucasFilm that ‘the modern trend is in favour of the enforcement of foreign intellectual property rights.50’ Footnotes 1 Lucasfilm Ltd & Ors v Ainsworth & Anor [2011] UKSC 39, para. 108. 2 Regulation (EU) No 1215/2012 of the European Parliament and of the Council of 12 December 2012 on jurisdiction and the recognition of judgments in civil and commercial matters (recast). 3 Convention on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters (21 December 2007) OJ L 339, 3–41. 4 Unwired Planet v Huawei; Huawei v Conversant; ZTE v Conversant [2020] UKSC 37. 5 Actavis Group HF v Eli Lilly & Company [2012] EWHC 3316 (Pat). 6 Case C-4/03, Gesellschaft für Antriebstechnik mBH & Co KG (GAT) v Lamellen und Kupplungsbau Beteiligungs KG (LuK) ECLI:EU:C:2006:457 (13 July 2006). 7 Case C-539/03, Roche Nederland & Ors v Frederick Primus & Milton Goldenberg ECLI:EU:C:2006:458 (13 July 2006). 8 Case C-616/10, Solvay SA v Honeywell Fluorine Products Europe BV and Others ECLI:EU:C:2012:445 (12 July 2012). 9 Convention of 27 September 1968 on Jurisdiction and the Enforcement of Judgments in Civil and Commercial Matters (OJ 1978L 304, p. 36), as amended. 10 Section 6, European Union (Withdrawal) Act 2018. 11 This article borrows from the account given in Lucasfilm Ltd v Ainsworth [2011] UKSC 39. 12 British South Africa Co v Cia De Moçambique (Companhia De Moçambique v British South Africa Co) [1893] AC 622. 13 Potter v Broken Hill Pty Co Ltd [1905] VLR 612, affd (1906) 3 CLR 479. 14 Underhill v Hernandez, 168 US 250, 252 (1897). 15 Ibid. 16 Actavis v Eli Lilly (n 5). 17 Article 4 Brussels Regulation. 18 Lucasfilm v Ainsworth (n 1). 19 Patents Court, Coin Controls Ltd v Suzo International (UK) Ltd [1999] Ch 33 (26 March 1997). 20 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.’ 21 Court of Appeal, Fort Dodge Animal Health Limited v Akzo Nobel NV [1998] FSR 222. 22 Court of Appeal, Prudential Assurance Co Ltd v Prudential Insurance Co of America [2003] EWCA Civ 327. 23 Court of Appeal, JP Morgan Chase Bank NA v Berliner Verkehrbetriebe (BVG) Anstalt des Öfftenlichen Rechts [2010] EWCA Civ 390 (28 April 2010). 24 Patents Court, Anan Kasei Co, Ltd & Rhodia Opérations SAS v Molycorp Chemicals & Oxides (Europe) Ltd [2016] EWHC 1722 (Pat). 25 Regulation (EC) No 864/2007 of the European Parliament and of the Council of 11 July 2007 on the law applicable to non-contractual obligations. 26 The Law Applicable to Contractual Obligations and Non-Contractual Obligations (Amendment etc.) (EU Exit) Regulations 2019. 27 For example, see Wall v Mutuelle de Poitiers Assurances [2014] EWCA Civ 138. 28 OJSC TNK-BP v Lazurenko [2012] EWHC 2781 (Ch). 29 In Actavis v Eli Lilly, Arnold J draws support from Professor Maria Pertegas on the draft Rome II in ‘Intellectual Property and Choice of Law Rules’ in Alberto Malatesta (ed) The Unification of Choice of Law Rules on Torts and other Non-Contractual Obligations in Europe: the ‘Rome II’ Proposal (CEDAM, 2006) at 221–248, in particular the following passage at 240–241: ‘A distinction should be made between the availability of a given remedy – generally, injunctive relief and/or damages – and the procedure(s) available to the plaintiff to request those remedies. It is submitted that only the latter is governed by the law of the forum.’ 30 Novartis AG v Hospira UK Limited [2013] EWHC 1285 (Pat). 31 See for example, Gerchtshof Den Haag Aventis Inc v Apothecon, 299702 / KG ZA 07-1439, in which a preliminary injunction was refused on the basis that the patent was likely to be held invalid on the merits. 32 For example, see Oberlandesgericht Düsseldorf Harnkatheterset I-2U 126/09. 33 Oberlandesgericht Munich, 6U 4009/19. 34 See section 75(1) Patents Act 1977. 35 Actavis Group HF v Eli Lilly & Company [2012] EWHC 3316 (Pat). 36 The statement was made in the context of forum non-conveniens but is also relevant to justiciability, as the judge acknowledged. 37 Spiliada Maritime Corp v Cansulex Ltd [1987] AC 460. 38 See Celltech R & D Ltd v MedImmune Inc [2004] EWHC 1124 (Pat). 39 See Article 34 Brussels Regulation in respect of related actions. 40 This topic is outside the scope of this article, but see for example Germany: Available at https://iclg.com/practice-areas/enforcement-of-foreign-judgments-laws-and-regulations/germany (accessed 1 March 2022). 41 Case C-406/92 Owners of the cargo laden on board the ship v Owners of the ship Maciej Rataj (the Tatry) ECLI:EU:C:1994:400 (6 December 1994); see also Wright v Granath [2021] EWCA Civ in which is it said proceedings must be in ‘identical terms’. 42 Tatry (n 41), paras. 39, 41 and 45. 43 Collecting damages under an undertaking is, it is submitted, to be contrasted with seeking damages for foreign infringement in lieu of a licence (see IPCom GmbH & Co KG v HTC Europe Co Ltd & Ors [2020] EWHC 2941). 44 Article 71a(2)(a). See also Articles 1 and 21 UPC Agreement. 45 Rule 211.2, UPC Rules of Procedure. 46 That has not been opted-out of the UPC. 47 Enforcement is a matter of national law of the contracting member states concerned (see Article 82(3) UPC Agreement). 48 Article 34 UPC Agreement. 49 An English court is more likely to use the available discretion against considering validity under Rule 211.2, UPC Rules of Procedure. Note that the balance of convenience is a mandatory factor (Rule 211.3, mirroring Article 62(2) UPC Agreement). 50 Lucasfilm v Ainsworth (n 1). © The Author(s) 2022. Published by Oxford University Press. All rights reserved. For permissions, please e-mail: journals.permissions@oup.com This article is published and distributed under the terms of the Oxford University Press, Standard Journals Publication Model (https://academic.oup.com/journals/pages/open_access/funder_policies/chorus/standard_publication_model)
TI - Can the English Patents Court award a cross-border preliminary injunction?
JF - Journal of Intellectual Property Law & Practice
DO - 10.1093/jiplp/jpac018
DA - 2022-04-05
UR - https://www.deepdyve.com/lp/oxford-university-press/can-the-english-patents-court-award-a-cross-border-preliminary-sDZWeJeLex
SP - 367
EP - 375
VL - 17
IS - 4
DP - DeepDyve
ER -