Summary
The claimants, Actavis, were members of the Activis group of companies. They sought declarations for non-infringement (DNIs) of patent against Lillly. The designations of the patents in question were France, Germany, Italy, Spain and the UK.
It was not dispute that Brussels I does not apply, and it was agreed that the jurisdiction is a matter for the English law. ([2012] EWHC 3316 [25])
The jurisdictional challenges were dealt with in earlier judgments (see [2012] EWHC 3316 aff’d [2013] EWCA Civ 517. The proceedings regarding the German designation had to be stayed in the light of a German judgment.
The High Court awarded the DNIs. However, the Court of Appeal set the DNIs aside. A Rome II issue arose with regard to interpretation of Articles 1(3) and 15 of Rome II. The dispute concerned the question whether the claimant was entitled to DNIs.
The claimants argued that the issue was a procedural one, and outside the scope of Rome II.
The defendant argued that the issue was a substantive, and Article 15(c) had to apply. Lord Justice Floyd, sitting at the Court of Appeal, held:
“139 I do not accept that Article 15 should be given a wider effect than its language suggests, treating the listed matters as no more than examples of a class of analogous matters regarded as procedural in private international law, but now to be brought within the designated law. Mr Raphael is right that the legislative history shows that the Regulation was intended to respect the private international law principle that the ‘ lex fori ’ is applicable to procedural questions.
140 Although Article 15 applies the lex causae to a number of matters which at least the English common law would have treated as procedural, none of them, as it seems to me, is apt to encompass the rules for admissibility of a DNI. I take these in turn.
141 Paragraph (a) is concerned with the basic conditions and extent of liability under a non-contractual obligation, and the persons who may potentially be held liable. […] To my mind, the negative declaration, whilst no doubt a remedy, is not a remedy which falls within (c).
143 The negative declaration is also not within (d), because it is not a measure which the court takes to prevent or terminate injury or damage, or provide compensation. Unlike an injunction to prevent infringement, it cannot be said that a characteristic of a DNI is that it prevents injury or damage. Moreover paragraph (d) is again concerned with the availability of such remedies, not the conditions which must be satisfied for their admissibility.
144 Finally, the mention of limitation periods in paragraph (h) is not a basis for suggesting that the conditions of applying for a DNI should be brought within the lex causae .
145 It follows that, had we needed to decide the point, I would have agreed with the judge that Rome II does not result in the conclusion that the lex causae applies to the conditions for applying for a DNI. Those conditions are procedural, and subject to the lex fori .” [139-145]