Fujifilm Kyowa Kirin Biologics Company Ltd v Abbvie Biotechnology Ltd & Anor

The court may grant an Arrow declaration where it is useful to determine pre-emptively whether a product would have a Gillette defence to a later patent infringement claim. Such a declaration does not put patent validity in issue for the purposes of section 74 of the Patents Act 1977.

A domestic anti-suit injunction may be granted against a person subject to the court’s in personam jurisdiction where threatened proceedings would be vexatious, oppressive or an abuse of process. The power must be exercised cautiously and will usually be qualified by permission to commence proceedings.

For service out, jurisdictional gateways require a good arguable case, while the merits of the substantive claim require only a serious issue to be tried or a real prospect of success. A negative declaration concerning tort may fall within the tort gateway.

The claimant sought declarations concerning proposed biosimilar products and dosing regimens before the expiry of an SPC and before relevant European patent applications had proceeded to grant. It also sought injunctions restraining the defendants from threatening or commencing patent infringement proceedings.

The defendants applied for summary judgment on the claims against the English defendant and challenged service on the Bermudian defendant. The claimant relied on Arrow declarations, domestic anti-suit relief, the jurisdictional gateways in Practice Direction 6B and Article 24(4) of the Recast Brussels I Regulation.

The issues were whether the claims had a real prospect of success, whether the UK courts had exclusive jurisdiction over the declaration claim, whether the service-out gateways were satisfied, and whether England was clearly or distinctly the appropriate forum.

1. Arrow declaration. The claimant had a real prospect of obtaining an Arrow declaration. The declaration was useful because it could establish that the claimant would have a Gillette defence to a later infringement claim. It did not contravene section 74 of the Patents Act 1977, since it did not put patent validity in issue; it determined pre-emptively whether an infringement claim could succeed.
2. Declarations and injunctions against the English defendant. The claim had a real prospect of success against the English defendant even though that defendant was not presently an exclusive licensee. A claimant seeking declaratory relief need not have a cause of action against the defendant if it is affected by the determination and has a legitimate interest in being bound by it. The proposed injunction also had a real prospect of success.
3. Domestic anti-suit injunction. Under section 37(1) of the Senior Courts Act 1981, the court had power to restrain proceedings threatened within England where they would be vexatious, oppressive or an abuse of process. The power was not confined to cases with existing proceedings capable of determining the same issue. It should, however, be exercised with considerable caution. Except in cases such as winding-up petitions, an order would rarely be justified without permitting proceedings to be commenced with the court’s permission.
4. Article 24(4). The substance of an Arrow declaration, rather than its form, was decisive. The claim concerned the validity of prospective European patents because it required determination of the single question whether the claimant had infringed a valid claim. The fact that the determination was sought before grant did not alter that conclusion. The UK courts therefore had exclusive jurisdiction over the declaration claim against the Bermudian defendant.
5. Service out. The claimant had a good arguable case under gateways (2), (3) and (9) of Practice Direction 6B. Gateway (11) did not apply because the proposed product was not yet in existence or within the jurisdiction. Gateway (4A) could not independently assist because reliance on the injunction gateway was circular. Gateway (9) extended to a negative declaration that no tort had been or would be committed. The claimant needed to establish a good arguable case on gateway requirements, but only a serious issue to be tried or real prospect of success on the substantive claim.
6. England was clearly the appropriate forum. The defendants’ applications were dismissed, and the claimant was given permission to amend its Particulars of Claim.