Jurisdiction in Intellectual Property Disputes
Conducting litigation in relation to international standards
The English courts’ attitude before GAT and Roche Nederlands
Cases in the UKindicate that the English courts would have been very likely to arrive at the same outcomes as recent ECJ case law.
Pearce v Ove Arup [1997] FSR 641 (Lloyd J); [1999] FSR 525 (CA). A copyright case brought in England (because the claimant could obtain legal aid) alleging infringements of Dutch copyright. Held that:
(a)The Berne Convention does not rule out the application of the Brussels Convention to claims of copyright infringement;
(b)in the absence of the application of Article 16(4) of Brussels, the jurisdictional rules laid down in Articles 2, 5 and 6 governed whether the English court had jurisdiction over claims of infringement of foreign copyrights;
(c)there was no longer any basis for the rule in the Moçambique (rule against double actionability), at least in relation to land (and by analogy IP rights);
(d)there is no invariable rule that the lex fori should apply and the exception to the double actionability rule should apply to allow the court to apply the law of the country of infringement in an action for infringement in the UK.
Coin Controls v Suzo [1997] FSR 660. A patent infringement case in which infringement of corresponding UK, German and Spanish European patents was alleged. Decision of Laddie J. Held that:
(a)Article 6(1) of Brussels Convention applies to claims of patent infringement;
(b)where there are claim of infringement in several jurisdictions under corresponding European Patents Article 6(1) will apply to make the actions related because the patents are essentially identical;
(c)the Brussels Convention forces the courts to hear foreign infringement claims;
(d)Article 19 of Brusselsapplies to claims made by either party, not just the claimant; accordingly, a counterclaim for invalidity in a patent action is subject to it;
(e)until a defendant challenges validity, the court cannot decline jurisdiction under Article 16(4); once jurisdiction is challenged, Article 19 requires it to do so;
(f)infringement and validity are so closely related that they should be regarded as a single claim; accordingly the court has no jurisdiction to hear claims for infringement of foreign patents once it is clear the defendant intends to challenge validity.
FortDodge v Akzo [1998] FSR 222 (Laddie J and CA). A case where Akzo commenced proceedings for patent infringement in Holland to include acts committed in the UK. Fort Dodge petitioned for revocation of the UK patent and sought an injunction to restrain the continuation of the allegations of infringement in the UK in the Dutch proceedings. Held referring the case to the ECJ that:
(a)Pearce rightly decided and jurisdiction for infringement claims determined by Articles 2, 5 and 6 of Brussels Convention;
(b)Coin Controls rightly decided and Articles 16(4) and 19 give exclusive jurisdiction over validity and corresponding infringement claims to court of jurisdiction of patent grant;
(c)no risk of irreconcilable judgments because the claims were in relation to two different national rights. Tenuous to suggest that expedient to try together. Article 6 therefore does not apply;
(d)infringement should only be decided with consideration of validity;
(e)not acte claire that pursuit of claim in Dutch court was vexatious (on ground that claim falls within the exclusive jurisdiction of UK courts) so injunction restraining proceedings refused and claim referred.
Boston Scientific v Cordis (unreported) 18 November 1997. A patent infringement case where action brought in Holland under kort geding procedure for infringement of UK patent. Further questions referred jointly with FortDodge on applicability of the reasoning in that case to kort geding procedure and whether that procedure contravenes the provisions of Articles 2 and 64 of the European Patent Convention.
International standards in technologically based industries
Technology based industries have to conform to common standards to enable interoperability of equipment. Many examples, mobile telephony, wi-fi, CD and DVD, MPEG, MP3, Bluetooth, etc.
Intellectual property rights exist in many standards requirements. Must be schemes of control to ensure availability of standards for use by all.
GSM as an example. Controlled by the European Telecommunications Standards Institute (ETSI). Website contains a great deal of information about its operation and contains copies of the entire GSM and UMTS standards. ETSI is based in Sopia Antipolis in France and membership of ETSI is subject to French law.
ETSI scheme is fairly typical (although all are slightly different). It sets down IPR policy, a copy of which is attached to these notes (and which you can find at This requires members to notify IPRs which are essential to operation of standards and to grant licences on Fair Reasonable and Non-Discriminatory (FRAND) terms under such rights. Key paragraphs of IPR policy are those defining “essential IPR” (Article 15(6)) and setting out the obligation (Article 4) and consequences (Article 6).
Litigation concerning IP rights in standards
Many players in these industries have large portfolios of both essential and relevant patents. There are increasing numbers of disputes about the need to take licences under those patents and the appropriate royalties for the grant of such licences. Currently there are cases pending in the UK between Ericsson and Samsung, Nokia and Qualcomm, Nokia and InterDigital and others relating to 2G and 3G technology. There are actions in Germany between Siemens and Amoy and a number of others. There are parallel actions in France, Italy, Spain and the US involving some or all of these parties. There are many unanswered questions concerning the interrelationship of these actions.
Clearly important to know whether a particular patent is essential to the standard and is accordingly required to be licensed. The existence of standards means that the usual route of seeking declarations of non-infringement is not readily available. What the parties want to know is not whether a particular implementation in a particular product falls within a patent but whether operation within the requirements of the standard necessarily does so. Also important to know the nature and extent of obligation to licence in under each scheme.
The determination of FRAND royalties and other licence terms is clearly of immense importance to industry as a whole. Important to know the extent to which the number of patents held by a particular party and whether particular patents are essential affects the appropriate level of royalty. Also important to know whether the validity and commercial importance of patents are relevant to setting royalties, whether licensees can challenge validity and so on.
Determining such disputes involves interpreting the meaning of terms used in the standards, such as “essential” and “FRAND”.
Currently the UK courts are willing to adjudicate upon disputes whether patents are essential, taking the view that this applies only to the UK patents: InterDigital v Nokia 5.12.2006, CA. Court ruled:
(a)manufacturers of equipment operating under standards have a “manifest and real commercial interest” in knowing whether patents are essential;
(b)such claims are not suitable for procedure under section 71 of Patents Act 1977 seeking declaration of non-infringement because individual articles not in issue;
(c)notification or disclosure of a patent as “essential” is effectively the equivalent of a claim of right as it amounts to an assertion that anyone operating under the standard is infringing;
(d)the floodgates are not opened by permitting such actions, as demonstrated by the fact that there has not been a huge number since the court first indicated that it would entertain them in December 2004.
Note that meaning of essential depends upon interpretation of ETSI IPR Policy document. Effect of declaration of essentiality depends upon whether membership of ETSI creates a contractual relationship between members.
TheUK courts are also willing to consider disputes relating to whether terms offered are FRAND under ETSI IPR Policy: Ericsson v Samsung 22.12.2006, Pumfrey J. This judgment indicates that the courts are now in the throes of working out the impact and consequences of adjudicating upon such matters.
Similar issues arise in related litigation in other jurisdictions. Clearly a risk of courts in different jurisdictionis reaching different conclusions. Question whether such judgments are conflicting or irreconcilable or whether their impact is limited to the jurisdiction in which they are pronounced so that following GAT v LUK they can happily co-exist.
The existence of these disputes indicates that there is a pressing need for a jurisdiction in which such disputes can be determined with more extensive effect than is currently available in the national European courts. The proliferation of actions in many jurisdictions indicates that the present system is deeply commercially and legally unsatisfactory.
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