Who's suing who?

A number of IP cases heard this year have already highlighted practices which could affect the way practitioners operate in the future, says Jim Kinnier-Wilson. Jim Kinnier-Wilson is an intellectual property partner at Nabarro Nathanson.

So far, 1997 has seen a series of decisions in the Chancery Division concentrating on practical issues faced by IP practitioners – including who to join as defendants, the claims which are justiciable before the courts, and the scope of discovery and evidence. Each of these will affect the way practitioners look to the future and draft their pleadings.

A number of cases dealt with joint tortfeasance. In Mead Corp v Riverwood, the court noted that a mere parent-subsidiary relation was insufficient to establish a case of joint tortfeasance. To do so, evidence is needed that the parent had done more than “look on with approval” in acting in a common design with the subsidiary.

In Coin Controls v Suzo, the Dutch parent company and its UK, Dutch and German subsidiaries were sued by an English company. The allegations of infringement related to European patents in the UK, Germany and Spain. While the Dutch subsidiary manufactured the product in dispute, the parent only supplied finance to the subsidiaries – not enough to make it joint tortfeasor in the UK. There was insufficient evidence that the German subsidiary had committed acts of infringement in the UK, and could not be a joint tortfeasor simply by being a subsidiary.

Three cases have been heard at the interlocutory stage relating to questions of the jurisdiction of the English courts. In Coin Controls v Suzo, the plaintiff sought to have acts of alleged patent infringement in the UK, Germany and Spain determined by the UK court, as the alleged acts of infringement were sufficiently similar to each other in the various jurisdictions. However, the judge held that article 16(4) of the Brussels Convention provided that the jurisdiction of a national court over questions of validity of patents precluded the UK court from dealing with issues of German and Spanish infringement where the defendant alleged invalidity. Further, article 19 requires such a court to declare that it has no jurisdiction over that question.

In relation to copyright, Mr Justice Lloyd ruled in Pearce v Ove Arup that, under articles 2 and 6(1) of the Brussels Convention, where there was a proper defendant domiciled in the UK, with co-defendants domiciled in the Netherlands, it was appropriate for the UK courts to accept jurisdiction even where questions of infringement of Dutch copyright in the Netherlands were sought to be tried in the UK.

In Mecklermedia Corporation v DC Congress GmbH, Mr Justice Jacob stated that the plaintiff had to commence proceedings in the place of domicile of the defendant (article 2 of the Brussels Convention) unless one of the exceptions applied. Article 5(3) of the Convention allows a plaintiff to commence proceedings where the harmful event occurred.

In this case, where the plaintiffs owned UK goodwill in the words “Internet World” and the defendant was drumming up business in Germany under the same words by targeting persons in the plaintiff's trade show catalogue, Mr Justice Jacob held that harm was caused to the goodwill and reputation in England, and the UK court therefore had jurisdiction. He declined to set aside the UK passing off proceedings in favour of trade mark infringement proceedings going on in Germany at the same time, as they did not involve the same parties nor the same causes of action.

One of the issues that has made IP litigation expensive in the UK is the requirement for discovery in relation to litigation. In Hoechst Celanese v BP Chemicals, Mr Justice Laddie suggested, obiter, that discovery of research records documenting the actual making of the invention was of little value in assessing obviousness for the notional skilled man, and that in future cases discovery of this nature could be much more limited. In the case of Beecham v Norton Healthcare, a discovery application was rejected when the defendant sought all documents concerning the features of three sub-claims in the patent in suit. The court held that the request for documents was not necessary or relevant to the action, especially since the discovery could involve work going back to the 1950s.

These two cases show that the patents courts are taking a leading role in implementing Lord Woolf's proposals for quicker and cheaper proceedings by limiting the amount and relevance of discovery.