Anan Kasei Co, Ltd Rhodia Opérations S.A.S v Molycorp Chemicals & Oxides (Europe) Ltd

Exclusive jurisdiction over patent validity cannot be avoided by pleading infringement separately from validity. Where validity of a foreign designation is challenged, infringement and validity are substantively inseparable because infringement depends on a valid claim. The court seised of the infringement claim must decline jurisdiction under the Recast Brussels I Regulation.

The High Court also cannot use its general injunction jurisdiction to circumvent Parliament’s exclusion of provision for obtaining evidence in aid of foreign proceedings. Evidence, including samples and experiments, must be obtained through the statutory or applicable international procedures.

The claimants, proprietor and exclusive licensee of a European patent, sued for infringement of its UK and German designations. The defendant challenged validity of the German designation in proceedings before the German Federal Patent Court.

The claimants proposed amended pleadings which separated infringement from validity and sought declarations concerning infringement if the German designation proved valid. They also sought samples from the defendant for testing in support of anticipated German infringement proceedings.

The issues were whether the English court had jurisdiction over the German infringement claim and whether it could order the provision and testing of samples for use in Germany.

1. German designation claim. The court had no jurisdiction over the claim concerning the German designation. Under Article 24(4) of the Recast Brussels I Regulation, the German courts had exclusive jurisdiction over validity. Article 27 required the English court to decline jurisdiction of its own motion.

2. The amended formulation did not alter the substance of the dispute. The issue remained whether the defendant had infringed a valid claim. Infringement and validity were inseparable because claim construction was relevant to both issues and inconsistent constructions could produce conflicting decisions. Pleading the issues separately was therefore an impermissible attempt to circumvent the mandatory jurisdictional rule.

3. The reasoning in GAT v LuK supported a wide interpretation. Allowing the claim would multiply jurisdictional bases, undermine predictability and increase the risk of conflicting decisions. The defendant’s failure to make an application under CPR Part 11 did not preserve jurisdiction: the CPR could not override the Regulation, the challenge could arise from the defence, and Article 27 operated automatically.

4. Samples for German proceedings. The court had no jurisdiction to order samples and experiments under CPR rule 25(1)(c)(iii) and (iv). Section 25(7)(b) of the Civil Jurisdiction and Judgments Act 1982 excluded provision for obtaining evidence from the interim relief power. The appropriate route was section 2 of the Evidence (Proceedings in Other Jurisdictions) Act 1975.

5. Section 37(1) of the Senior Courts Act 1981 did not provide an alternative route. Although the injunction jurisdiction was unfettered in breadth, it had to be exercised in accordance with principle and could not be used to circumvent the statutory limitation.

6. Had jurisdiction existed, an order would have been expedient. The relevant considerations included interference with the primary court, the policy of that court, territorial disharmony or conflicting orders, jurisdictional conflict, enforceability, and the defendant’s domicile. The practical overlap between the UK and German claims and the defendant’s English domicile favoured an order. Those observations were unnecessary to the result.

The claim concerning the German designation and the application for samples for the German proceedings were both refused for want of jurisdiction.

First-instance decision. No appellate history was stated in the judgment.