Ablynx NV v Vhsquared Ltd
| Jurisdiction | England & Wales |
| Judge | Hacon |
| Judgment Date | 29 March 2019 |
| Neutral Citation | [2019] EWHC 792 (Pat) |
| Docket Number | Case No: HP-2018-000025 |
| Court | Chancery Division (Patents Court) |
| Date | 29 March 2019 |
[2019] EWHC 792 (Pat)
IN THE HIGH COURT OF JUSTICE
BUSINESS AND PROPERTY COURTS OF ENGLAND AND WALES
PATENTS COURT
Royal Courts of Justice, Rolls Building
Fetter Lane, London, EC4A 1NL
HIS HONOUR JUDGE Hacon
SITTING AS JUDGE OF THE HIGH COURT
Case No: HP-2018-000025
Justin Turner QC (instructed by Bird & Bird LLP) for the Claimants
Lindsay Lane QC and Alexander Thomson (instructed by Linklaters LLP) for the Defendants
Hearing dates: 15 th and 18 th March 2019
Approved Judgment
I direct that pursuant to CPR PD 39A para 6.1 no official shorthand note shall be taken of this Judgment and that copies of this version as handed down may be treated as authentic.
HIS HONOUR JUDGE Hacon
Introduction
In August 1993 the second claimant (‘VUB’), a University in Brussels, applied for a European Patent for an invention relating to immunoglobulins derived from camelid antibodies. (Camelids are an animal family which includes camels, llamas and other even-toed ungulates). The Application matured into three granted patents, EP 1 087 013 B1, EP 0 656 946 B2 and EP 1 589 107 B1 (‘the Patents’). The Patents expired in August 2013.
In April 1997 VUB granted the third defendant (‘Unilever NH’) a licence under the Patents for use of the inventions in a defined field called the ‘Reserved Sector’. Pursuant to subsequent agreements, in December 2010 the first defendant (‘VHsquared’) became a non-exclusive licensee under the Patents in relation to the Reserved Sector.
In November 2001 the first claimant (‘Ablynx’) became a sub-licensee under the Patents with the exclusive right to exploit the inventions in relation to certain medical uses outside the Reserved Sector.
Since 2012 Ablynx has alleged that VHsquared exploited uses of the inventions in breach of Ablynx's rights as exclusive licensee. This has led to litigation in the Netherlands, the present English action and most recently proceedings in Belgium.
Ablynx alleges that the UK designations of the Patents (‘the Patents UK’) were infringed by VHsquared in England before they expired and that the infringing acts have provided a springboard for work done by VHsquared after expiry, causing Ablynx damage. The second to sixth defendants, all part of the Unilever Group, are alleged to be joint tortfeasors.
VUB is present as the second claimant because it is the patentee. The main claimant protagonist is Ablynx and I will treat Ablynx as if it were the sole claimant.
The defendants have not entered an appearance before this court and apply for a declaration that the English courts have no jurisdiction and a stay of this action. The stay would be pending the outcome of the litigation in Belgium.
Lindsay Lane QC and Alexander Thomson appeared for the applicant defendants, Justin Turner QC for the respondent, Ablynx.
The defendants' overall case on jurisdiction
Since Coin Controls Ltd v Suzo International (UK) Ltd [1997] FSR 660, whenever the validity of a patent has been raised as an issue, the English courts have awarded exclusive jurisdiction to the courts of the EU Member State in which the patent was registered. This exclusive jurisdiction is conferred by art.24(4) of Regulation (EU) 1215/2012 (‘ Brussels I recast’) and previously has been by predecessor articles, i.e. art.22(4) of Regulation 44/2001 and before that art.16(4) of the Brussels Convention on the Jurisdiction and Enforcement of Judgements (‘the Brussels Convention’). Art.24(4) applies also to European patents, exclusive jurisdiction being conferred on the courts of the Member State for which the European patent is designated.
The defendants assert that if the present proceedings continue they will allege that the Patents UK are invalid. But they also say that the usual rule on exclusive jurisdiction under art.24(4) does not apply for two reasons.
First, the defendants say that VHsquared was licensed to carry out the acts alleged to have infringed the Patents UK. This defence turns on the meaning and effect of the licence agreement of April 1997. That agreement contains an article granting exclusive jurisdiction to ‘the Court of Brussels’ to settle any disputes arising in connection with the agreement. Pursuant to arts.25 and 31(2) of Brussels I recast this court must stay the present proceedings until the relevant Brussels court declares that it has no jurisdiction, should that happen.
Secondly, the defendants argue that the validity of the Patents UK would form only an incidental part of this action, since it is really a dispute about the scope of VHsquared's licence. Accordingly, these proceedings would not be ‘concerned with’ the validity of the Patents UK within the meaning of art.24(4) and therefore art.24(4) is not engaged.
The defendants had further arguments in support of their case for a stay, or in one case supporting a claim to strike out the action. They were:
(1) There should be a stay pursuant to art.29 of Brussels I recast because these proceedings involve the same cause of action between the same parties as proceedings pending in the Netherlands.
(2) There should be a stay pursuant to art.30 in favour of the Netherlands proceedings because the latter are related proceedings within the meaning of art.30.
(3) There should be a stay pursuant to s.9 of the Arbitration Act 1996.
(4) These proceedings should be struck out because of a cause of action estoppel arising from an earlier, first Dutch action.
(5) Service of the claim form and particulars of claim should be set aside because of defects in service.
The further arguments (1) and (2) above were adjourned upon Ablynx undertaking (a) to provide written confirmation that in a current Netherlands action no allegation of infringement of the Patents UK will be raised and (b) to amend the Particulars of Infringement to allege infringement of the product of which Ablynx complains in this country. This was done by a letter from Ablynx's solicitors, Bird & Bird, dated 19 March 2019.
Brussels I recast
I set out here the relevant articles of the Regulation.
Article 24
The following courts of a Member State shall have exclusive jurisdiction, regardless of the domicile of the parties:
…
(2) in proceedings which have as their object the validity of the constitution, the nullity or the dissolution of companies or other legal persons or associations of natural or legal persons, or the validity of the decisions of their organs, the courts of the Member State in which the company, legal person or association has its seat. In order to determine that seat, the court shall apply its rules of private international law;
…
(4) in proceedings concerned with the registration or validity of patents, trade marks, designs, or other similar rights required to be deposited or registered, irrespective of whether the issue is raised by way of an action or as a defence, the courts of the Member State in which the deposit or registration has been applied for, has taken place or is under the terms of an instrument of the Union or an international convention deemed to have taken place.
Without prejudice to the jurisdiction of the European Patent Office under the Convention on the Grant of European Patents, signed at Munich on 5 October 1973, the courts of each Member State shall have exclusive jurisdiction in proceedings concerned with the registration or validity of any European patent granted for that Member State;
…
Article 25
1. If the parties, regardless of their domicile, have agreed that a court or the courts of a Member State are to have jurisdiction to settle any disputes which have arisen or which may arise in connection with a particular legal relationship, that court or those courts shall have jurisdiction, unless the agreement is null and void as to its substantive validity under the law of that Member State. Such jurisdiction shall be exclusive unless the parties have agreed otherwise. The agreement conferring jurisdiction shall be either:
(a) in writing or evidenced in writing;
(b) in a form which accords with practices which the parties have established between themselves; or
(c) in international trade or commerce, in a form which accords with a usage of which the parties are or ought to have been aware and which in such trade or commerce is widely known to, and regularly observed by, parties to contracts of the type involved in the particular trade or commerce concerned.
…
4. Agreements or provisions of a trust instrument conferring jurisdiction shall have no legal force if they are contrary to Articles 15, 19 or 23, or if the courts whose jurisdiction they purport to exclude have exclusive jurisdiction by virtue of Article 24.
5. An agreement conferring jurisdiction which forms part of a contract shall be treated as an agreement independent of the other terms of the contract.
The validity of the agreement conferring jurisdiction cannot be contested solely on the ground that the contract is not valid.
…
Article 26
1. Apart from jurisdiction derived from other provisions of this Regulation, a court of a Member State before which a defendant enters an appearance shall have jurisdiction. This rule shall not apply where appearance was entered to contest the jurisdiction, or where another court has exclusive jurisdiction by virtue of Article 24.
…
Article 27
Where a court of a Member State is seised of a claim which is principally concerned with a matter over which the courts of another Member State have exclusive jurisdiction by virtue of Article 24, it shall declare of its own motion that it has no jurisdiction...
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