EUPillar Innovia Films Ltd v Frito-Lay North America, Inc [2012] EWHC 790 (Pat)

Summary

The claimant, IFL, was a part of the Innovia group of companies. It had an R&D centre in Wigton, Cumbria. IFL contended that it was the rightful owner of patents, and submitted that any patent granted to the defendant, Frito-Lay, was in breach of confidence. Court proceedings regarding the patents’ entitlement and breach of confidence had been commenced in England by IFL. Frito-Lay commenced proceedings in Texas, and challenged the jurisdiction of the English court. It was submitted that the English court had exclusive jurisdiction under the EPC, Protocol on Recognition, but was this jurisdiction founded on the Brussels I Regulation? Can the English court decline jurisdiction on the of forum non conveniens? The English Court dismissed the jurisdictional challenged. It was further inter alia held the English law was to be applied: 84 […] Art.4 is expressly subject to Arts.22 and 23, which provide for exclusive jurisdiction in certain cases. Where Arts.22 or 23 apply, the court cannot decline jurisdiction on forum non conveniens grounds. Where an Art.71 convention provides for exclusive jurisdiction, then it seems to me that the same result should follow. Furthermore, as counsel for IFL submitted, all the reasons given by the Court of Justice in Owusu in the passage quoted above apply with equal force to the Protocol on Recognition “ […]. 109 Events after 11 January 2009. […] Art.6 of Rome II contains a specific choice of law regime for “a non-contractual obligation arising out of an act of unfair competition”, while Art.39 of TRIPS requires WTO Member States to protect undisclosed information “in the course of ensuring effective protection against unfair competition”. (Since this is common ground, I do not need to explain why it is necessary to have regard to TRIPS for this purpose.) 110 In the present case counsel for IFL submitted that Art.6(2) was the applicable rule on the ground that the acts of unfair competition alleged affected the interests of a specific competitor, namely IFL. Since counsel for Frito-Lay did not argue to the contrary, I accept that submission. It follows that Art.4 applies. 111 Neither counsel relied on Art.4(1). Rather, both relied on Art.4(3). Counsel for Frito-Lay again argued that the NDA gave rise to a closer connection with Delaware than any other state. Counsel for IFL again argued that IFL’s claim was more closely connected with England. In my view the claim is more closely connected with England for similar reasons to those given in para.108 above. […] 127 For the reasons explained above, I have concluded that this Court has exclusive jurisdiction over the European Applications and that no stay can be granted on forum non conveniens grounds. It remains to be considered, however, whether a stay of that claim should be granted on case management grounds. So far as the breach of confidence claim is concerned, the burden is on IFL to show that England is clearly or distinctly the appropriate forum. So far as the section 12 claim is concerned, the burden is on Frito-Lay to show that the Texas Court is the appropriate forum. […] 134 […] I consider that the interests of justice are best served by trying as many of the claims as possible in the same court at the same time, and that the court which is best placed to do that, in particular because (a) it has exclusive jurisdiction over the European Applications and (b) it has jurisdiction over the foreign applications corresponding to the pending US applications, is this Court.” [84, 109-111, 127 and 134]