Posts Tagged Litigation

Chugai v UCB: When does one litigate not just the scope but also the validity of a patent?

End of exam season (sadly not yet of marking marathon). In the next few weeks I shall be posting on judgments issued a little or longer while ago, which I was pondering to use in exams. (I did for some of them).

In [2017] EWHC 1216 (Pat) Chugai Pharmaceutical v UCB the issue at stake was to what degree a suit seeking to establish absence of liability under a patent license, in reality provokes argument on the validity of the patent. Carr J has excellent review of precedent, much of which has passed in one way or another on this blog. Please do refer to judgment for proper reading.

Claimant (“Chugai”) seeks a declaration against the Defendants (collectively “UCB”) that it is not obliged to continue to pay royalties under a patent licence (“the Licence”) granted by the First Defendant (“UCB Pharma”).  UCB Pharma is a Belgian company with an English branch which entered into the Licence with Chugai in respect of a portfolio of patents. Chugai claims that its products, which are, in part, manufactured and sold in the USA, fall outside the scope of the claims of the Patent concerned. Accordingly, Chugai seeks a declaration that it owes no royalties for the manufacture and sale of these drugs manufactured after a certain date.

UCB alleges that, although framed as a claim for a declaration relating to a contract, a part of these proceedings, in substance, concerns not only the scope but also the validity of the Patent. UCB submits that the validity of a US patent is non-justiciable, since the English court has no power to determine the validity of a foreign patent. Accordingly, it submits that those parts of Chugai’s pleading which are said to raise issues of invalidity fall outside the subject matter jurisdiction of the English court.

European private international law as readers will know lays greats emphasis on exclusive jurisdiction in the case of validity of patents. The CJEU’s holding in C-4/03 Gat v Luk that nullity actions against a national part of a certain European patent can only be conducted in the jurisdiction for which that patent was registered, regardless of whether the nullity argument is raised in the suit or by way of defence, is now included verbatim in Article 24(4) Brussels I Recast. The EU’s take is rooted in the idea that the grant of a national patent is “an exercise of national sovereignty” (Jenard Report on the Brussels Convention (OJ 1979 C59, pp 1, 36)). The rule therefore engages the Act of State doctrine, and suggests that comity requires the courts of States other than the State of issue, to keep their hands off the case.

Particularly in cases where defendant is accused of having infringed a patent, this rule gives it a great possibility to stall proceedings. Where the action is ‘passive’, with plaintiff aiming to establish no infringement, the argument that the suit really involves validity of patent is less easily made.

The possibility of ‘torpedo’ abuse, coupled with less deference to the jurisdictional consequences of the Act of State doctrine [particularly its contested extension to intellectual property rights], means the English courts in particular are becoming less impressed with the exclusivity. (Albeit Carr J on balance decides per curiam (at 73-74) that direct challenges to the validity of foreign patents should not be justiciable in the English courts). Where the EU Regulation applies, they do not have much choice. Carr J refers to [2016] EWHC 1722 (Pat) Anan where claimant sought to carve out issues of validity by seeking a declaration that the defendant’s acts infringed a German patent “if the German designation is invalid (which is to be determined by the German courts)“.  EU law meant this attempt could not be honoured. Carr J however suggests that EU rules have no direct application in the present case because the Patent at stake is a United States patent. That is spot on, on the facts of the case: choice of court having been made in favour of the English courts, the case does not fall under the amended lis alibi pendens rule of the Brussels I Recast. In Article 33 juncto recital 24, reflexive effect is suggested for the Regulation’s exclusive jurisdictional rules, leaving a Member State court in a position (not: under an obligation) to give way to pending litigation in third countries, if its own jurisdiction is based on a non-exlusive jurisdictional rule (Articles 4, 7, 8 or 9) and not within the context of the protected categories.

Allow me to lean on 20 Essex Street’s conclusion in their review of the case: Carr J held that the case before him was not a direct challenge to validity. He accepted Chugai’s submissions that its claim was contractual. Disputed parts of the patent were incidental to the essential nature of its claim, which was a claim for determination of its royalty obligations. In his view, this claim fell within the exclusive jurisdiction clause, in favour of the English courts, which parties had agreed.

Essential reading for IP litigators.

Geert.

 

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Paris suing FoxNews. (Birmingham joining optional). A dream essay for conflict of laws, many questions for practitioners..

Exam time for conflict of laws students the world over, I imagine. Here’s a dream essay question. (Pick and mix a definite possibility). Bear in mind each of these questions exercises practitioners, too.

‘It is widely reported that Paris (the town, not the socialite) may sue FoxNews. (For the sake of this essay assumed to be incorporated in Delaware, USA). A FoxNews analyst suggested the existence of ‘no go’ zones for non-muslims in the French capital.

1. How would you qualify Paris’ suit?

2. Where would you advise Paris to file the suit and why? What legal basis supports your litigation advice?

3. Assuming a French court would entertain the suit. What law would it apply to the case at hand?

4. Assuming a US (State) court would entertain the suit. What law would it apply to the case at hand?

5. Assume FoxNews countersues Paris.

5.1. Under the assumption of Q3, can the French Court join the countersuit to the original one?

5.2. Under the assumption of Q4, can the US Court join the countersuit to the original one?

5.3. Assume FoxNews is successful on its countersuit in a French court and wishes to have that judgment recognised and enforced against the bank account of Paris with BancoFrancais in London. Would an English court apply state immunity?

5.4 Assuming the same as under 5.3 however against assets held in Belgium. Would you come to the same conclusion?

5.5 Assume the same as under 5.3 however on a countersuit in a US court. Would FoxNews be succesful in enforcing the judgment in France?

6. Replace ‘Paris’ with ‘Birmingham (United Kingdom)’.  Revisit all of the questions above.

7. Add (rather than replace) a claim against FoxNews by Birmingham, UK. Could a French court assumed to have already upheld jurisdiction over Paris’ claim, join a Birmingham claim? On what legal basis? (if at all).’

Enjoy pondering.

Geert.

 

 

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Is something fishy in the State of Denmark? Faroe Islands WTO and UNCLOS litigation provides a honey pot to trade and EU lawyers

Yummie. That’s how Trade lawyers and EU lawyers receive news of the Danish request for consultations  with the EU, over at the WTO, on behalf of the Faroe Islands. A separate action is underway with UNCLOS (although the docket there shows no sign as yet of the case). Disagreement over herring stock lies at the root of the offending EU Regulation, with sanctions imposed by the EU disallowing Faroese fishermen to land mackerel or herring in EU harbours or export such fish to the EU.

The EU justify their action on stock conservation grounds, thus bringing GATT Article XX into play. Action at the WTO is exciting both because it joins a growing list of actions related to domestic regulatory authority, and because it is unheard of for one EU Member to take another to the WTO (Faroe’s specific status under EU law explains this, however even in EU law this terrain is quite uncharted).

As sources at the WTO say: ‘it’s a really interesting case’: that quote must be in the running for understatement of the year. Sources at the EU suggest no one had expected Denmark’s WTO filing to actually materialise.

Geert.

POSTSCRIPT 11 June 2014: An understanding reached today (11 June) means the case will now not reach the WTO. Pitty in many ways.  See EC press release .

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