Apple Retail UK Ltd & Ors v Qualcomm (UK) Ltd & Anor

For service out of the jurisdiction, the claimant must establish a serious issue to be tried, a good arguable case within a relevant jurisdictional gateway, and England and Wales as the proper forum. “Good arguable case” requires a plausible evidential basis; it is not a civil standard of proof.

Gateway 4A applies only where the anchor claim was actually made in reliance on one of the specified gateways. The further claim must also arise from the same or closely connected facts. A broad competition or contractual dispute will not qualify merely because it shares some facts with patent claims.

Where jurisdiction depends on loss within the jurisdiction, a pleading alone may be insufficient. The claimant must provide a plausible evidential basis for the alleged loss.

Apple companies brought claims against Qualcomm entities concerning standard-essential patents, patent exhaustion, alleged breaches of the ETSI IPR Policy, and abuse of a dominant position. The First Defendant applied to strike out or obtain summary judgment on the contractual claim based on the ETSI arrangements. The Second Defendant challenged service and permission to serve claims out of the jurisdiction.

The court considered the construction of the ETSI IPR Policy and declarations, the scope of CPR 63.14, and reliance on Gateways 3, 4A and 9 of Practice Direction 6B. The court also considered whether the First Claimant had shown loss within the jurisdiction and whether England and Wales was the appropriate forum.

1. First Defendant: The claim based on the ETSI IPR Policy and declarations had no real prospect of success. Under Clause 6.1, “the owner” meant the owner of the relevant essential intellectual property right. The First Defendant was not alleged to own the relevant patents and had not been requested to give the relevant undertaking. Clause 6bis did not impose on a non-owner an obligation to grant a licence it could not grant. The declarations did not impose on the First Defendant an unexpressed obligation to procure performance by Qualcomm Incorporated or other affiliates. Summary judgment was therefore granted.
2. CPR 63.14: A claim for a declaration that patent rights were exhausted related to the five specified patents. The fact that determining exhaustion might require examination of supply-chain contracts or conduct outside the jurisdiction did not prevent the claim from relating to those patents. Service on the Second Defendant was valid for that claim.
3. Gateway 3: Once the claim against the First Defendant was dismissed, there was no longer a real issue between the Claimants and an anchor defendant. Gateway 3 was unavailable.
4. Gateway 4A: The words “in reliance on” required actual reliance on one of the specified gateways. It was insufficient that the first claim could have been served under another gateway. In any event, the proposed competition, contractual and ETSI claims arose from facts far wider than, and insufficiently closely connected with, the patent claims. They would substantially transform the litigation.
5. Gateway 9: The Claimants had not yet established a plausible evidential basis for loss within the jurisdiction. The issue was stood over so that the Second Defendant could serve evidence responding to the Claimants’ substantially reformulated case on loss. The Claimants could respond to that evidence but should not receive a further opportunity to reformulate their case.
6. Forum: On the assumed basis that the First Claimant could establish loss in England, this jurisdiction was clearly and distinctly the proper forum for its Article 102 claim. Relevant factors included the First Claimant’s incorporation here, loss here, the application of European law, the European Commission decision, and the related patent proceedings. The existence of overlapping United States proceedings did not alter that conclusion.

This was a first-instance decision. The judgment records that Arnold J granted permission on 12 July 2017 to serve the Second Defendant out of the jurisdiction.