Magnesium Elektron Ltd v Molycorp Chemicals & Oxides (Europe) Ltd & Anor

Permission to serve proceedings out of the jurisdiction requires a serious issue to be tried on the merits, a good arguable case for the relevant jurisdictional gateway, and England and Wales to be a proper place for the claim.

For a process patent, the serious-issue test may be satisfied by evidence that the allegedly infringing product has a distinctive technical fingerprint. Under section 100 of the Patents Act 1977, a new product need not be defined at the same level of generality as the process claim. A foreign manufacturer may also be joined as a joint tortfeasor where there is a good arguable case of substantive involvement in the domestic tort. Different jurisdictional gateways require separate analysis.

The claimant, a UK company, alleged that the defendants had infringed a UK patent for a process producing zirconium-cerium-based mixed oxides. The second defendant was based in China and allegedly manufactured and imported, or participated in supplying, the relevant product in the United Kingdom.

The claimant had already served the first defendant and applied without notice for permission under CPR r 6.36 to serve the Chinese defendant out of the jurisdiction. The court considered the merits of the infringement claim, the jurisdictional gateways in PD 6B paragraph 3.1, and whether England and Wales was the proper forum.

1. Merits. The serious-issue test for service out was equivalent to the test for resisting summary judgment or striking out. The evidence concerning the product’s nanostructure and oxygen-release kinetics was sufficient to establish a serious issue that it had been obtained directly by the patented process.
2. Joint tortfeasance. The higher good-arguable-case threshold applied to the jurisdictional aspect of the joint-tortfeasance claim. Evidence that the Chinese manufacturer’s certificate addressed the UK customer’s specification supported a good arguable case that it had participated in the domestic supply and was jointly liable with the UK defendant.
3. Section 100. The expression “new product” in section 100 of the Patents Act 1977 referred to a product that was novel in its relevant characteristics. It was not necessary for the product to be novel at the same general level as the process claim. A distinctive fingerprint could constitute the characteristics making the product new.
4. Gateways. The injunction gateway in PD 6B paragraph 3.1(2) was satisfied because an injunction was a genuine part of the relief sought and refusal of a patent injunction was rare. The necessary-and-proper-party gateway in paragraph 3.1(3) was satisfied because the claims against the defendants were inextricably linked. The tort gateway in paragraph 3.1(9)(a) was satisfied: infringement of a UK patent caused direct damage within the jurisdiction. Under paragraph 3.1(9)(b), the importation claim failed the good-arguable-case test because the evidence did not show that the Chinese defendant, rather than the UK defendant, was the importer. The joint-tortfeasance claim satisfied that gateway.
5. Forum. England and Wales was plainly the proper place for the claim, which concerned infringement of a UK patent, conduct connected with Wales, and English law.

Permission was granted to serve the claim on the second defendant in China.