Fort Dodge Animal Health Ltd v Akzo Nobel NV

Under the Brussels Convention, patent infringement proceedings may generally be brought in the defendant’s domicile or where the harmful event occurred, subject to the exclusive jurisdiction provisions. Article 16(4) gives the courts of the state of registration exclusive jurisdiction over proceedings principally concerned with patent validity. A bona fide and substantial validity challenge may make infringement and validity inseparable, so that the whole claim falls within that exclusive jurisdiction. Article 24 does not support provisional relief ancillary to foreign proceedings in such a case. Where the Convention’s proper construction is not acte clair, the court should refer the issue to the European Court of Justice and should not grant final anti-suit relief before receiving its ruling.

The appellants petitioned the English Patents Court to revoke a United Kingdom patent owned by Akzo Nobel NV. Akzo and its licensee, Intervet International BV, had commenced Dutch proceedings concerning alleged infringement of both the corresponding Dutch patent and the United Kingdom patent, including acts allegedly committed in England.

The appellants sought relief restraining the Dutch proceedings insofar as they concerned the United Kingdom patent. Laddie J refused relief on 16 October 1997. The central issues were whether Articles 6, 16(4), 19 and 24 of the Brussels Convention gave the English courts exclusive jurisdiction and whether interim or final anti-suit relief should be granted pending clarification by the European Court of Justice.

1. Appeal adjourned. The court reserved the costs of the appeal below and stayed costs in the court below. No final anti-suit injunction was granted.
2. Articles 2 and 5(3) of the Brussels Convention generally permit proceedings concerning intellectual property rights in the defendant’s domicile or where the infringement occurs, subject to Article 16. The court approved the conclusion in Gareth Pearce v Ove Arup Partnership Ltd (1997) FSR 641 that those provisions apply to intellectual property rights.
3. Article 6(1) is an exception to the domicile rule. It requires a connection between claims against multiple defendants such that joint determination is expedient to avoid irreconcilable judgments. Claims concerning distinct national patent rights may not satisfy that requirement merely because they derive from the same patent application or involve similar rules of construction.
4. Article 16(4) gives the courts of the state in which a patent is registered exclusive jurisdiction over proceedings concerned with registration or validity. The distinction between infringement and validity cannot always be maintained. Under the European Patent Convention and sections 60, 72 and 75 of the Patents Act 1977, validity may determine whether infringement exists and whether revocation or amendment is required.
5. Where a defendant raises a bona fide and substantial validity challenge, particularly with a Gillette defence, an infringement claim may be principally concerned with validity for Article 19 purposes. The appellants had raised such a challenge, so the English Patents Court had exclusive jurisdiction over the United Kingdom patent claims.
6. Article 24 permits provisional or protective measures available under the internal law of a contracting state only where they are provisional and ancillary to a contemplated final determination. If Article 16(4) applies, it does not justify Dutch provisional relief concerning the United Kingdom patent.
7. The court nevertheless considered the issue not acte clair and referred appropriate questions concerning Articles 6, 16(4), 19 and 24 to the European Court of Justice. Although English courts may restrain persons subject to their jurisdiction from pursuing vexatious or oppressive foreign proceedings, final relief was premature while the Convention questions remained unresolved. Interim relief was also refused because justice did not require it and significant uncompensated harm was unlikely pending the European court’s decision.

• Court of Appeal (Civil Division) [1997] EWCA Civ 3096: the appeal was adjourned pending a judgment of the European Court of Justice on Articles 6, 16(4), 19 and 24 of the Brussels Convention. Costs of the appeal below were reserved and costs in the court below stayed.
• Chancery Division, Patents Court: Laddie J refused the requested relief by order dated 16 October 1997.