Conductive Inkjet Technology Ltd v Uni -Pixel Displays Inc

Permission to serve proceedings out of the jurisdiction requires a serious issue to be tried, a good arguable case within a jurisdictional gateway, and England to be clearly or distinctly the appropriate forum.

An injunction gateway is territorial. A worldwide injunction cannot qualify merely because it includes conduct in England, and a claim outside the gateway cannot be added to one which qualifies. Exclusive jurisdiction under Article 3 of the Protocol on Jurisdiction and the Recognition of Decisions in respect of the Right to the Grant of a European Patent excludes both forum non conveniens and a case-management stay which would leave the underlying issues to another court. Where related patent-entitlement and confidence claims substantially overlap, that overlap may make England the appropriate forum for the claims which can properly proceed there.

Conductive Inkjet Technology Ltd brought two related claims against Uni-Pixel Displays Inc, a Texas company. The EPA claim sought declarations and consequential relief concerning entitlement to European patent applications. The Breach claim alleged breach of confidence, breach of contract and unlawful means arising from technology allegedly disclosed during earlier dealings.

Permission had been granted to serve both claims out of the jurisdiction under CPR rule 6.36. Uni-Pixel applied to set that permission aside, contending that the jurisdictional gateways were not satisfied and that Texas was the appropriate forum. It alternatively sought a stay of the EPA claim pending proceedings in Texas. The issues were whether the claims satisfied the gateways, whether the European patent-entitlement claim was subject to exclusive English jurisdiction, whether a later non-disclosure agreement superseded an earlier agreement, and where the Breach claim should be tried.

1. Service out. The claimant satisfied the first requirement because there was a serious issue to be tried. The applicable test, stated in AK Investment CJSC v Kyrgyz Mobile Tel Ltd [2011] UKPC 7, was adopted: a serious issue, a good arguable case within a gateway, and England as the clearly or distinctly appropriate forum.
2. Breach claim gateways. The equitable breach-of-confidence claim could proceed through the injunction gateway only if the relief was confined to acts within England. A worldwide injunction did not qualify merely because it included acts in England. Mandatory assignment relief was not an order to do an act within the jurisdiction. The inventorship correction relief and an injunction concerning enforcement in England could qualify if appropriately restricted. A qualifying injunction could not carry broader claims through the gateway.
3. EPA claim. Section 82 of the Patents Act 1977 had to be interpreted consistently with Article 3 of the Protocol. That provision conferred exclusive jurisdiction on the English courts where an applicant outside the Contracting States was faced with an English claimant asserting entitlement to a European patent. The exclusivity covered the disputed facts and matters on which entitlement depended. It therefore excluded both forum non conveniens and a stay which would leave those issues to be decided in Texas.
4. 2010 NDA. Construed in its factual context, the later agreement concerned prospective disclosure in a possible new relationship. Its entire-agreement clause did not supersede the earlier tripartite agreement relating to the previous TMOS project. The 2010 NDA therefore did not govern the present dispute.
5. Forum. Applying the approach in The Spiliada [1987] AC 460, and the guidance in VTB Capital plc v Nutritek International Corp [2013] UKSC 5, the relevant factors had to be weighed in the context of the issues likely to arise. Although the alleged use occurred mainly in the United States, evidence from Xennia in England was likely to be particularly important. The decisive factor was the substantial overlap with the EPA claim, which could be tried only in England.
6. The application to set aside permission or stay the EPA claim was dismissed. Permission for the Breach claim was not upheld for all existing heads of relief, but service out would be permitted if the claim were amended consistently with the judgment.