BUSINESS AND PROPERTY COURTS OF ENGLAND AND WALES
INTELLECTUAL PROPERTY LIST
Rolls Building, Fetter Lane, London, EC4A 1NL
B e f o r e :
| (1) Eli Lilly & Co.
(2) Lilly France SAS.
(3) Eli Lilly Deutschland GmbH
(4) Eli Lilly Italia SpA
(5) Eli Lilly and Co (Ireland) Limited
(6) Eli Lilly Kinsale Limited
(7) Lilly SA
(8) Eli Lilly and Company Limited
|- and -
David Lewis QC, Michael Ashcroft QC and William Duncan (instructed by Marks & Clerk Solicitors LLP) for the Defendant
Hearing dates: 6th and 7th November 2017
Crown Copyright ©
Mr Justice Birss :
The CPR Gateway in PD 6B para 3.1(4A)
"3.1 The claimant may serve the claim form out of the jurisdiction, with the permission of the court under r6.36 where-…
(4A) A claim is made against the defendant in reliance on one or more of paragraphs (2), (6) to (16), (19) or (21) and a further claim is made against the same defendant which arises out of the same or closely connected facts."
Art 24(4) of Brussels I (recast)
"… the view must be taken that the exclusive jurisdiction provided for by that provision [now Art 24(4)] should apply whatever form of proceedings in which the issue of a patent's validity is raised, be it by way of an action or plea in objection, at the time the case is brought or at a later stage."
"… the Court of Justice of the European Union has held that Article 24(4) should be given a wide interpretation, and it has implicitly endorsed the reasoning of Laddie J in Coin Controls Ltd v Suzo International (UK) Ltd  Ch 33 to the effect that the issues of validity and infringement are inseparable in patent cases because there is in the end only one question: has the defendant infringed a valid claim? Accordingly, I held that this court had no jurisdiction over Rhodia's claim in respect of the German designation of the Patent because, although framed exclusively as a claim for infringement, it implicitly asserted that the German designation was valid when, as the claim itself acknowledged, the validity of the German designation had been challenged by Molycorp and had to be determined by the German courts."
Is validity going to be in issue in future?