EUPillar SanDisk Corpn v Koninklijke Philips Electronics NV and others [2007] EWHC 332 (Ch)

Summary

This was an IP dispute, raising some EU competition law infringement concerns which were invoked by the claimant. The English proceedings were preceded by defendants’ acts which were seeking to enforce their patents against the claimant in Germany and the Netherlands. The claimant argued that the defendants’ behaviour (i.e. offering a licensing under objectionable terms) constituted an abuse of dominant position. On 18 Sept 2006, the claimants commenced proceedings against the defendants in England. The proceedings were seeking to establish an EU competition law infringement. Also, the claimant sought interim relief. The defendants challenged the jurisdiction of the English. Since none of the defendants was domiciled in England, the only head of jurisdiction for the substantive claim, which could be invoked in the circumstances, was Article 5(3) of Brussels I. However, as a common problem in such case, the competition law infringement was difficult to localise. Although the defendants’ business activities/strategies were pursued throughout the EU (and immediate damage is arguably suffered in each country), the court held that the substance of this action lied in the enforcement steps in the various Member States (and Germany and Italy in particular). Consequently, the English court did not have jurisdiction to heard and determine the dispute under Article 5(3). The court went on to hold that the English court did not have jurisdiction to grant interim relief under Article 31. The reasons being that there was no connection between the subject matter of the provision measure sought, on the one hand, and England, on the other hand. It was noted that there was: 1) no border detention orders in the UK; 2) no patent enforcement proceedings in the UK. Mr Justice Pumfrey held: “41 It will appear from the foregoing that I consider that the pleaded case, together with the material to which I have referred, establishes neither that any of the first steps of the abuses complained of took place in the United Kingdom, nor that immediate damage was caused to SanDisk in the United Kingdom by reason of the alleged abuses. As I have indicated, it is submitted that a good arguable case must be demonstrated by the claimant before jurisdiction will be assumed under Art.5(3) . Given that there are courts—at least those of the Netherlands, Germany, France and Italy—which indisputably have jurisdiction over the individual defendants pursuant to Art.2 of the Brussels Regulation , it seems to me that in order to preserve the necessarily exceptional nature of the jurisdiction under Art.5(3) , and for the purpose of ensuring the uniform application of the Regulation, something better than a case which is merely arguable is required. […] […] 51 […] the jurisdiction under Art.31 is to be exercised by the court best placed to be acquainted with and to understand the effects of the provisional and protective measures which are sought. […] 52 The test thus depends upon identifying a connection between the subject-matter of the provisional or protective measures sought, on the one hand, and this jurisdiction on the other. The nature of the connection may be purely physical—there are assets within this jurisdiction—or one of control—the person the subject of the order is within this jurisdiction and immediately susceptible to such coercive measures to secure compliance as may be necessary. In any event, there is no such connection in the present case. 53 It will be recalled that the patentees are not UK companies and that Sisvel is Italian. There are no border detention orders in the United Kingdom and no proceedings other than the present set of patent infringement proceedings are on foot here. The courts in the Members States where border detention orders have been obtained are beyond doubt in the best position to decide what, if any, measures of warning it is appropriate for Sisvel to give SanDisk […].” [41 and 51-53]