On Tuesday, 27 November 2012 the High Court ruled in the case of Actavis Group hf v Eli Lilly and Company [2012] EWHC 3316 (Pat) that declarations for non-infringement relating to foreign designations of a European patent, can be brought before the English court, to be heard concurrently with a UK declaration.  This decision opens the door for more pan-European declarations emanating from the English court and shows that the court is increasingly willing to assert jurisdiction over foreign IP matters, following the Lucasfilm decision.  For potential defendants of patent infringement claims, it means having the benefit of being able to pursue a declaration of non-infringement for multiple jurisdictions in one court within the EU.

The facts

Actavis brought a claim against Eli Lilly for a declaration that its proposed dealings in the drug pemextred dipotassium (a cancer treatment) would not infringe Eli Lilly's patent ("the Patent").  The declarations were sought in relation to the UK, French, German, Italian and Spanish designations of the Patent (Actavis were clear in their claim that there was no challenge to the validity of the Patent).

Following various pre-action correspondence between Actavis' and Eli Lilly's legal teams, during the course of which Eli Lilly's solicitors confirmed in writing that they were instructed to accept service on behalf of their client, Actavis accordingly served proceedings on Eli Lilly's solicitors in relation to all five country designations of the Patent.  (An identical second claim was also brought by an associated company of Actavis, but that is not important to this analysis of the judgment.)

Eli Lilly contested service of proceedings in relation to the non-UK designations on the basis that (1) they were not validly served and (2), if they were validly served, the English court did not have, or should not exercise, jurisdiction over the claims for declarations in respect of the non-UK designations of the Patent.  It was accepted that the English court did have and should exercise jurisdiction over the claim in respect of the UK designation.

The decision

Arnold J held that proceedings were validly served in respect of both the UK and the associated European designations, by virtue of the consent to service given by Eli Lilly's legal team. 

However, even if he was wrong on that conclusion, the proceedings were validly served in accordance with CPR 6.9(2) (the relevant civil procedure rule), which enables a claim form to be served on a company or corporation other than one registered in England and Wales at "[a]ny place within the jurisdiction where the corporation carries on its activities; or any place of business of the company within the jurisdiction".  This was based on the fact that the US-based Eli Lilly had a place of business and carried out the requisite business "activities" in the UK.

With regard to Eli Lilly's desired stay of the proceedings relating to the non-UK designations, as Eli Lilly had consented to service, it was held that it could not contest jurisdiction on the ground of forum non conveniens

However, would Eli Lilly be entitled to a stay if the judge was wrong on that point, and proceedings were not validly served on the basis of consent but were in fact served in accordance with CPR 6.9(2) – place of business in the UK?   It was common ground that the principle to be applied was that stated by Lord Goff in the case of Spiliada Maritime Corp v Cansulex Limited [1987] AC 460, namely that "a stay will only be granted on the basis of forum non conveniens where the court is satisfied that there is some other available forum, having competent jurisdiction, which is the appropriate forum for the trial of the action, i.e. in which the case may be tried more suitably for the interests of all the parties and the ends of justice".

It was not in question that the declarations for non-infringement of the French, German, Italian and Spanish designations of the patent could be tried in their respective national courts, however the High Court did not agree with Eli Lilly in that they were more "appropriate" forums than the UK court. 

Indeed, Arnold J drew attention to the decision of the Supreme Court in Lucasfilm v Ainsworth [2011] UKSC 39.  The Court of Appeal in Lucasfilm acknowledged that  the common law rule in British South Africa Co v Companhia de Moçambique [1893] AC 602 that an English court had no jurisdiction to entertain an action for the determination of title to foreign land, or the recovery of damages for trespass to such land, was an example of a general principle which applied to claims for infringement of foreign intellectual property rights.  However the Supreme Court concluded in that case that, provided there is a basis for in personam jurisdiction over the defendant, an English court does have jurisdiction to try a claim for infringement of foreign copyright.  Arnold J continued that as patents are no different to copyright for the purposes of justiciability, they should not be treated differently for the purposes of forum non conveniens when validity is not in issue.

Accordingly, and on the basis that it was advantageous in these circumstances for one court to determine all five claims (for ease and reduced cost of conducting proceedings, and the fact that it will reduce the likelihood of inconsistent decisions at first instance and on appeal), the High Court held that the English court was entitled to hear the five declarations together, with no stay for non-UK designations on the grounds of forum non conveniens.

Comment

As with many cases, this decision was decided on the specific facts in question.  However, the clear view of the High Court in granting the English court the ability to hear the infringement proceedings in relation to all five designations of the Patent is that, following the decision in Lucasfilm, such pan-European declarations may become more common.  Arnold J stated that "it is increasingly common in intellectual property cases for the courts of this country to apply case law from other EU Member States when deciding questions of European Union law or national law based on European conventions" and as the existence of the European unitary patent moves ever closer, the differences in national approaches may become fewer.  It is to be hoped that increased efficiency and therefore lower costs in pursuing patent litigation in Europe could be the result.  This decision, and the possibility of more pan-European declarations, may be a warm-up for what is to come.