“Lord Wilberforce and Lord Denning M.R. differed in the circumstances of [an earlier] case as to whether the declaration would serve a useful purpose. However, if it would, that it would then be appropriate to grant a declaration was agreed. The approach is pragmatic. It is not a matter of jurisdiction. It is a matter of discretion. The deployment of negative declarations should be scrutinised and their use rejected where it would serve no useful purpose. However, where a negative declaration would help to ensure that the aims of justice are achieved the courts should not be reluctant to grant such declarations. They can and do assist in achieving justice. … So in my judgment the development of the use of declaratory relief in relation to commercial disputes should not be constrained by artificial limits wrongly related to jurisdiction. It should instead be kept within proper bounds by the exercise of the court’s discretion.”
“It seems to me that, when considering whether to grant a declaration or not, the court should take into account justice to the claimant, justice to the defendant, whether the declaration would serve a useful purpose and whether there are any other special reasons why or why not the court should grant the declaration.”
“We have said enough to explain why we do not consider that there is any issue of principle which prevents the granting of Arrow declarations in appropriate cases. Drawing the threads together: (i) A declaration that a product, process or use was old or obvious at a particular date does not necessarily offend against section 74 of the 1977 Act. (ii) Such a declaration may offend against the 1977 Act where it is a disguised attack on the validity of a granted patent. (iii) Such declarations do not offend against the scheme of the EPC or the Act simply because the declaration is sought against the background of pending divisional applications by the counter-party. (iv) On the other hand the existence of pending applications cannot itself be a sufficient justification for granting a declaration. (v) Whether such a declaration is justified depends on whether a sufficient case can be made for the exercise of the court’s discretion in accordance with established principles.”
“We are not persuaded that declarations in the Arrow form will open any floodgates. The Arrow decision is now of some age, and has not resulted in many such cases being brought. The circumstances in which such declarations will be justified, will, we would have thought, be uncommon. [Counsel for AbbVie]’s example of a business problem in Romania would be unlikely to justify the grant of a declaration by the English court.”
“The fact that the hearings of an expert led the English court to the conclusion that the patent in the suit did not make a technical contribution to progress did not itself constitute a circumstance that would render the EPO decision manifestly incorrect. At most, there are two conflicting decisions on this point with regard to the inventive step, although in this situation the board cannot predict with sufficient certainty which result the Federal Patent Court will reach.”
“In my judgment, those authorities demonstrate that it is perfectly legitimate for the claimant to seek to obtain a judgment of this court on the validity of the patent in suit in the hope that it will lead to a settlement of the dispute between the parties throughout Europe. Nor, in my judgment, would it be in any way illegitimate for the claimant, absent such a settlement being achieved, to seek to rely upon the judgment of the English court in proceedings before the courts of other contracting states or the European Patent Office. It is commonplace for parties litigating on the same European patent in a number of contracting states to put before the courts of one contracting state decisions arrived at in one or more other contracting states. I do not see that such conduct can possibly be stigmatised as an abuse of process. That is particularly so given that such judgments may come to the attention of courts in other contracting states in any event. The courts of all the contracting states are seeking to apply the same substantive law. It would be most unfortunate if anything were to be done which made it more difficult for the courts of the contracting states to arrive at common answers to common questions.”
“29. … Given the proceedings in the People’s Republic of China courts, there is reason to believe that a declaration of the position as a matter of English law given by an English court may be of utility to the claimant and it may also be of utility to the courts of People’s Republic of China …. In those circumstances, one might say that a negative declaration would help to ensure that the aims of justice are achieved, that being one of the criteria which the authorities establish. 30. So far as the recent caution to this court to be careful when granting declarations for a foreign court it is said that this is not simply a declaration which is sought in relation to a foreign court. In any event the declaration may be of utility to the claimant in the United Kingdom and this is a rather different case to the kinds of cases where the court has been wary about granting a declaration in relation to circumstances which are likely to be predominantly debated before a foreign court. There is, it is said, no element of forum shopping here because there is a non-exclusive English jurisdiction clause and the contracts are governed by English law. It is not a question of there being a number of possible fora which could be equally appropriate. 31. I accept this submission. This is a case where DBSH should be entitled to seek a declaration in any event, because the case is uniquely within this court’s ability to judge the position so far as the contract is concerned because it is an English law contract. It may be of utility here, even if its obvious use is for a foreign court. It is not a forum shopping case. …”
“I accept that the spin-off value of a judgment in a contracting state can be very valuable, and it is legitimate for parties to rely upon such judgments in other contracting states. However, it is important not to extend this principle too far. Statements as to the spin-off value of UK judgments have been made in the context of applications to stay pending resolution of EPO oppositions, or of applications to expedite trials. Those cases are very different from the present. It is also important to guard against forum shopping, where a declaration from the UK court is sought in cases which have no connection with this jurisdiction.”
“411. I now turn to the question of spin-off value. The claimants submit that the declarations will be influential in other European Courts and tribunals, and will make it more difficult for AbbVie to obtain preliminary injunctions, particularly in jurisdictions where validity cannot be challenged whilst patents are under opposition in the EPO. 412. I accept that the spin-off value of a judgment in a contracting state can be very valuable, and it is legitimate for parties to rely upon such judgments in other contracting states. However, on reflection and having regard to the legal principles which I have set out above, I have not taken this into account other than to the extent that this issue may have an impact on the UK market … .”
“ I consider that, on the most unusual facts of this case, there are special reasons which support the grant of the declarations. These include AbbVie’s conduct of threatening infringement whilst abandoning proceedings at the last moment (in order to shield its patent portfolio from scrutiny); the amount of money at stake for the claimants in terms of investment in clinical trials and potential damages if they launch at risk; and the need for commercial certainty, having regard to AbbVie’s threats to sue for infringement throughout the world.”
“i) The court has no jurisdiction to grant declarations where there was no dispute about UK legal rights or disputes of facts that were relevant to UK legal rights. (ii) In the alternative, if that argument fails, there was a ‘hard-edged’ point of principle that precluded the court from granting declarations in such circumstances. The ‘useful purpose’ test (see FSA v Rourke ) therefore related to a purpose that was useful in the context of a UK legal dispute. (iii) In the further alternative and in any event, the circumstances in this case do not justify granting a declaration for two reasons. First because in fact there is nothing in Roche’s conduct to date which justifies exercising the jurisdiction as a matter of fact. Second because the only ‘useful purpose’ relied on by Pfizer is the spin-off value of a UK judgment in foreign jurisdictions; and that is not enough.”
“86. Taking stock, in my judgment the position is the following. Roche's first submission (set out at [64(i)] above) is wrong because it purports to place a limit on the court’s power to grant a declaration even when it would serve a useful purpose. That is not right because the only relevant limitation is concerned with useful purpose. I would characterise Henry Carr J. in FujiFilm as a case illustrating why the first point is wrong. The fact that analytically, by the time the question came to be decided, it was true that there was no longer a dispute before the court about the existence or scope of AbbVie’s UK legal rights, did not mean the declaration would serve no useful purpose. 87. As for Roche’s second submission ([64(ii)] above), the first part of it is wrong for the same reasons as the first submission. The second part of the second submission is that the useful purpose test must be related to a purpose that is useful in the context of a UK legal dispute. The Deutsche Bank case shows why that is not correct. At least as long as one is not concerned with forum shopping, the fact that the purpose is useful in relation to a dispute in a foreign court may justify granting a declaration. On the other hand Deutsche Bank is a long way on the facts from the present case, because there the foreign court was going to have to decide issues arising under a contract governed by English law. 88. Roche’s third point ([64(iii)]) is not really a submission of law or principle. The true principle in my judgment is that in considering all the circumstances and the issue of useful purpose, the court will wish to identify what the real purpose of the declaration is. There may be more than one purpose. The court will look carefully at a case in which the only or predominant purpose of the declaration sought is to use the court’s judgment in foreign jurisdictions.”
“118. If today there were pending UK applications in any of the families, this would be a plain case for an Arrow declaration and I would go on to examine the merits of the Gillette defences in detail. However given the complete absence of the possibility of UK rights in future, the reality is that the commercial value of an Arrow declaration to Pfizer is the utility it might have (along with a reasoned judgment) in helping Pfizer defend itself against suits brought by Roche in other European countries. This case is unlike FujiFilm in that in relation to bevacizumab there is no outstanding uncertainty at all relating to UK rights. Pfizer does not need the Patents Court to tell it or anyone else that it can freely sell bevacizumab in this country without risk from the Roche patent families. 119. There is uncertainty relating to the UK market but that derives from the fact that the goods are to be supplied from a separate jurisdiction (Belgium) in which the uncertainty remains. Now what Pfizer really wants is a UK judgment so as to use it in Belgium. In Deutsche Bank the issue which was to come before the foreign court was about a UK contract and UK law and so the UK court was naturally in a better position than a foreign court to rule on such a point, and so obtaining a ruling here to use abroad was not forum shopping. However the position here is different because the issue which will come before the Belgian court (if it ever does) will be about a Belgian patent and Belgian law. The fact that a Belgian court would take a judgment of this court into account does not alter the fact that the UK courts are in no better position to rule on those points of the patent law. It is true that under the EPC we apply the same law in Belgium and in the UK but that is not a sufficient justification for embarking on the exercise of deciding the technical issues. 120. What will happen in Belgium is likely to affect the UK market but that is only because of the local effect in Belgium of a Belgian designation of the European patent. It is nothing to do with any UK legal right. 121. Another way a declaration could be useful would be to assist settlement. That can often be a useful factor, and I think it probably applies in this case, but on these facts it is not enough to make a difference. 122. When the action began it was not forum shopping at all. There were pending UK applications which provided a basis for considering an Arrow declaration. However now they have gone. There might have been other factors which justified Arrow relief such as arose in Fujifilm but on examination in this case, there are not. There is no evidence of uncertainty about UK patent rights. The true purpose of an Arrow declaration in this case would be for it to be used in foreign courts. I am not persuaded that that is enough.”
“These considerations force me strongly to the conclusion that the questions on which the court’s declaratory judgment is sought are far better decided in the foreign court where those questions arise, if they ever do. It would be an exercise in jurisdictional imperialism to foist this court’s view as to whether ZyXEL were unwilling licensees, or holding-out on an unknown foreign jurisdiction. Far less can it be said that it is in the interests of justice for it to do so.”
“i) First, Novartis’ aggressive enforcement of EP 894, including the fact that it had obtained injunctive relief. ii) Secondly, that a declaration would provide clarity to Teva’s customer in the UK, the NHS. iii) Thirdly, the inadequacy of Novartis’ undertakings in dispelling the uncertainty on the UK market. iv) Fourthly, the potential utility of a UK judgment to a decision in Germany on whether to grant a preliminary injunction against Teva. v) Fifthly, the fact that Teva’s supplies to the UK transited through Country A, such that an injunction against Teva in that country would threaten that supply chain.”
“… whatever the nuances of the views of the experts on this point, the fundamental problem with this aspect of Teva’s case is that the case-law discussed above consistently establishes that if the only or predominant purpose of the declaration sought is to use the judgment for a foreign court, this court will look carefully at the justification for the declaration. In such a case, a declaration is only likely to be granted in unusual cases where [there is] a very compelling justification for doing so.”
“71. The question is, however, whether that is enough. I do not think that it is. Given the prevalence of global supply chains, it is not surprising that, in this case, as no doubt in very many others in this sector, the decision of the relevant foreign courts as to whether to injunct a product is likely to have a knock-on impact on the supply of that product to the UK, but the fact that a decision in Country A will therefore affect the UK market indirectly by having an impact on Teva’s supply route to the UK does not change the fact that the purpose of an Arrow declaration in this jurisdiction will be to use it in the courts of Country A and other countries, rather than to obtain or enforce any right in the UK. … 75. … The point of principle in both Pfizer and the present case is that the purpose of the declaration was and is to influence a foreign court whose decision is likely to impact upon the supply of the product to the UK, whether or not that supply has already commenced at the time that the declaration is sought. Birss J’s assessment in Pfizer was that the decision of the Belgian courts was ‘likely’ to affect supplies to the UK market. That is similar to the conclusion I have reached in this case. … 76. The question I have to ask, therefore, is whether there are particular unusual circumstances in the present case which provide a compelling justification for the grant of the injunction sought by Teva. In my judgment, there are not. As I have already noted, there is nothing unusual in the fact of a global supply chain with the result that a decision in one country may impact upon the supply of product to another, specifically the UK. Nor, in my judgment, does Novartis’ conduct in this case tip the balance in favour of granting an injunction in the present case, in circumstances where, as I have found, unlike in Fujifilm, it cannot be said that this conduct has resulted in any continuing uncertainty on the UK market.”