Lisa Dräxlmaier GmbH v BOS GmbH & Co KG

Proceedings for a declaration of non-infringement under Patents Act 1977, section 71, remain subject to the ordinary abuse jurisdiction. They may be stayed or struck out where they serve no useful purpose or are pursued for an illegitimate collateral purpose.

The use of an English judgment in foreign proceedings is not, by itself, abusive. However, an infringement-only claim brought or maintained solely or essentially to influence a foreign court, without a genuine domestic interest, may be an abuse or may properly be stayed on case-management grounds. A claimant must also be a person doing or proposing to do the allegedly infringing act; a mere busybody has no standing.

The claimant sought a declaration of non-infringement concerning a UK patent relating to a vehicle-window blind system. The defendant had not asserted the UK patent, allowed it to lapse, later offered to surrender it, and undertook not to enforce it.

The claimant nevertheless maintained the proceedings, principally to obtain an English infringement judgment for use in related German infringement proceedings. Those German proceedings were subsequently withdrawn, and both parties accepted that the English action no longer served a useful purpose.

The defendant applied to strike out the claim under CPR 3.4(2), alleging abuse of process, absence of reasonable grounds, waste of court resources and an illegitimate collateral purpose. The central issue was whether the section 71 proceedings should be struck out or otherwise brought to an end.

1. Application and governing principles. The strike-out and summary-judgment applications raised the same issues. The court considered the strike-out application under CPR 3.4(2). The principles in Jameel v Dow Jones & Co Inc [2005] EWCA Civ 75 apply where litigation is pointless or wasteful, and collateral litigation may constitute an abuse.
2. Section 71 proceedings. A claim under section 71 of the Patents Act 1977 is not immune from the abuse jurisdiction. The statutory reference to a person doing or proposing to do the act excludes a mere busybody. Ordinarily, a genuine proposed infringing act supplies a useful purpose, but the court may intervene where the proceedings serve no useful purpose or are pursued for an illegitimate collateral purpose.
3. Foreign use of an English judgment. An intention to deploy an English judgment abroad is not inherently abusive. The authorities concerning validity challenges, commercial certainty, European patent litigation and the injunction gap did not establish that an infringement-only claim could be brought solely to influence a foreign court. The court was not bound by the broader statements in TNS v Nielsen [2009] EWHC 1160 in that different context.
4. Application to the facts. The proceedings had a genuine appearance of domestic purpose when commenced because the defendant had not disclosed its position. After the defendant offered surrender and protection against enforcement, the claimant’s real purpose became apparent: preserving a target for an English judgment to deploy in Germany. That was not a legitimate purpose for continuing the action. The action should not proceed, whether characterised as abuse or as a case-management problem.
5. Order. The preferable order was a general stay rather than strike-out. The proceedings were stayed generally. Costs were reserved for agreement or further determination.