This case comment is by Aliyah Akram of 12 King’s Bench Walk.
In this patents case the High Court gave detailed consideration to the service out of the jurisdiction gateways.
The Claim in Outline
FKB sought (1) a declaration that their prospective product did not infringe AbbVie’s patent and (2) an anti-suit injunction to restrain AbbVie from bringing patent infringement proceedings once the product had been launched.
AbbVie is a company incorporated in Bermuda and so FKB served their claim form by service out of the jurisdiction. That they should have permission to do so was challenged by AbbVie.
CPR rules 6.36 and 6.37 provide that a party may have permission to serve a claim form out of the jurisdiction if:
- one of the gateways in Practice Direction 6B applied; and
- it could be shown that England was clearly or distinctly the appropriate forum to hear the claim.
Arnold J decided that England was clearly the appropriate forum for the claim: it concerned FKB’s freedom to market its product in the UK under UK patent law. The more vexing question was whether FKB could rely on any of the gateways. FKB argued that the following applied:
Gateway (9): damage from torts sustained in the jurisdiction or as a result of actions committed in the jurisdiction
The judge found that FKB could rely on gateway (9).
AbbVie firstly argued that the declaration did not concern a question of whether a tort would be committed. This was summarily rejected.
Secondly it argued that gateway (9) did not apply to negative declarations, which was what was being sought by FKB. In considering this issue Arnold J found that it was sensible to interpret gateway (9) consistently with Article 7(2) of Brussels II, which did apply to negative declarations. The judge noted that that question had been determined by the CJEU in Folien Fischer AG v Ritrama SpA Case C-133/11,  QB 523 when it had decided that Article 7(2) applied to negative declarations on the basis that questions of jurisdiction should not be affected by the question of which party was the claimant and which the defendant.
Gateway (3): necessary party
FKB was also able to rely on gateway (3). The judge found that AbbVie could be considered a necessary party to the claim as the proceedings also involved a claim against the UK based company in AbbVie’s corporate group. Since the claim against the second defendant was a valid one, in that there were was a real prospect of it succeeding, it was sensible to resolve the claims against both parties in the same proceedings.
Gateway (2): a claim is made for an injunction ordering the defendant to do or refrain from doing an act within the jurisdiction
Another of the challenges made by AbbVie was in relation to gateway (2). This dispute turned on the standards of proof which FKB had to satisfy in showing that a gateway applied. The judge noted that FKB had to show that it had a good arguable case, or more than a real prospect of success that any gateway applied and for jurisdictional purposes that the claim itself involved a serious issue to be tried, or a real prospect of success. These principles were set out in Seaconsar Far East Ltd v Bank Markazi Jomhouri Islami Iran  1 AC 439 at 453D–G, 454C–D and 456G–457C. He therefore found that, ‘all that it is necessary for the claimant to show is that there is a good arguable case that the claim is one which would found an injunction ordering the defendant to do, or to refrain from doing, an act within the jurisdiction’.
AbbVie also argued that gateway (2) did not apply because FKB had only brought the claim for an injunction in order to rely upon gateway (2). The potential for the motive for bringing a claim to disapply a gateway in that way was dismissed.
Gateway (11): the subject matter of the claim relates wholly or principally to property within the jurisdiction
FKB was only unsuccessful in relying upon gateway (11). In relation to this gateway the judge refused to accept that there was at the time of the declaration any property in the jurisdiction and therefore the gateway was not applicable.