‘10. To that end it has initiated two unfounded applications, the substance of which I have addressed in my previous witness statements. The Defendant’s conduct in issuing first the Defence Application, and then some weeks later when it became clear that the Defence Application might be resolved quickly on the papers, the Strike Out Application, was a transparent and self-serving attempt to delay the progress of my Client’s claim. 11. S.71 allows the potential infringer to seek a declaration from the court that their product or process does not infringe a patent, in circumstances where the proprietor has not provided, when asked, an acknowledgement to that effect. That is the remedy to which my client is entitled and seeks. 12. Per Arnold J in TNS Group Holdings v Nielsen Media Research[2009] EWHC 1160 (Pat) and HTC Corporation v Yozmot 33[2010] EWHC 1057 (Pat) , it is permissible for a party to seek a judgment in order to export it to a court in another EPO jurisdiction. 13. My client is therefore entitled under s.71 to seek a declaration of non-infringement from this court, and to put that decision before the German court seized of the parallel infringement proceedings.’
‘7. The Defendant very deliberately validated the 631 Patent in a small number of countries excluding the UK. The validation in the UK occurred automatically upon the grant of the European Patent, and the Defendant did not intend to maintain the 631 Patent in the UK. Indeed, as the UK is not a significant market for the Defendant or its competitors, it allowed the 631 Patent to lapse in this jurisdiction by not paying the first renewal fee in respect of the 631 Patent. After some pre-action correspondence between the parties and their German representatives, proceedings for patent infringement were commenced by the Defendant in the Dusseldorf District Court based on the German part of the Patent on16 August 2021 . Germany is the jurisdiction in which the parties manufacture their products and the relevant car manufacturer customers are located. As a part of this pre-action correspondence, the Claimant wrote to the Defendant and sought an acknowledgement of non-infringement in respect of the 631 Patent under s.71 of the Patents Act. As the Defendant intended to commence proceedings in Dusseldorf and correctly believed that it did not hold a UK patent2, it did not respond specifically to the s.71 request. 8. The Claimant then waited some 3 months, paid the renewal fee in respect of the Defendant’s lapsed patent in order to revive it, and 4 days later commenced these proceedings on16 November 2021 . Once served with these proceedings in Germany, over 4.5 months later on31 March 2022 , the Defendant promptly took steps to surrender the 631 Patent with the UKIPO and offered assurances and ultimately undertakings to the Court that, as it had never wanted the 631 Patent, it would of course not enforce the 631 Patent against anyone. 9. The UKIPO has advertised the Defendant’s intention to surrender the 631 Patent. The Claimant has indicated that it will oppose the surrender of the 631 Patent but has not been prepared to explain on which basis.’
‘20. As is well known, the German courts operate a bifurcated system. It is not possible to raise invalidity of an EP(DE) directly as a defence in the infringement proceedings. If the infringement claim succeeds, there are then the following possibilities: (i) First, a defendant may request in his Defence that the infringement proceedings are stayed on the ground that the patent in suit is likely to be found invalid in pending nullity proceedings either before the German Federal Patent Court or in EPO Opposition proceedings. Abbott assures me that each of its defences will include a request for a stay. (ii) If there is no stay, then an order for an injunction usually follows. (iii) In order to enforce an injunction the successful claimant must serve the judgment and put in place financial security as ordered by the Court, typically a bank guarantee, which is designed to cover the defendant’s losses in the event the injunction is later lifted and usually amounts to the profits the defendant makes on the injuncted product for a period of 18 months going forward.’ … 28. In spite of the available procedures in Germany (summarised in paragraph 0 above), in theory the injunction gap problem in Germany is capable of producing some very unfair results. If a patent is pretty clearly invalid, there is no problem because the infringement court grants a stay. If a patent is weak but no stay is granted (because invalidity is not clear enough) and ultimately is declared invalid, it may suit a competitor to put up the required security. As I understand matters, the security does not amount to a cross-undertaking in damages. The competitor may calculate that he can inflict far more damage on his rival through an injunction than the value of the security he will lose. Whether such unfairness can occur in practice lies in the hands of the German courts, who I am sure are aware of the scourge of weak patents which turn out to be invalid when scrutinised.’
‘22. Counsel for the defendant submits that paragraph 22 of Mr. Johnson's witness statement, and in particular the words "Such a decision may be 'exported' to other national Courts", demonstrates that the claimant's true purpose in commencing these proceedings is to obtain a judgment for use in other Contracting States of the European Patent Convention and, possibly, in the EPO. He submits that that constitutes an improper or collateral purpose as described by Pumfrey J., and accordingly an abuse of process. 23. In my judgment, what Mr. Johnson says in paragraph 22 of his statement is not evidence of any improper or collateral purpose. There is a clear line of authority which demonstrates that it is perfectly legitimate for a party to proceedings in the United Kingdom concerning the validity of a European patent to seek to rely upon what has been referred to as the "spin-off value" of a judgment of this court. 24. In Unilever plc v. Frisa N. V. [2000] F.S.R. 708, 713 Laddie J. said this: "Furthermore, there is an advantage of proceedings being conducted here in accordance with the fairly tight time tables which are now imposed, namely that judgments obtained from this court, or obtained from this court and then from the Court of Appeal on issues of infringement and validity have in the past, at least on occasions, helped to inform the parties so as to enable them to resolve their disputes on a worldwide basis earlier rather than later." 25. That passage was quoted by and relied upon by Kitchin J. in GlaxoSmithKline Biologicals SA v. Sanofi Pasteur SA[2006] EWHC 2333 (Pat) at [32] - [35] and again at first instance by Lewison J. in Glaxo Group Ltd v. Genentech Inc[2007] EWHC 1416 (Pat) , [2007] F.S.R. 35 at [63] - [65]. On appeal in the latter case,[2008] EWCA Civ 23 , [2008] F.S.R. 18, Mummery L.J., giving the judgment of the Court of Appeal, referred to that part of Lewison J.'s judgment with apparent approval at [33]. 26. 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.’
‘9. …..it seems to me to be reasonably plain that HTC's objective in pursuing its claim for revocation was not limited to ensuring freedom of commercial action for itself, its distributors and its customers in the United Kingdom. On the contrary, having regard to the background of the parallel proceedings in Spain and threats that have been made to customers such as Vodafone in a number of European countries, it is evident that HTC hoped that a finding of invalidity by this court would be of assistance to it in foreign proceedings such as those in Spain. It may also be the case, although this is perhaps slightly more speculative, that HTC was of the hope that a judgment of invalidity of this court would assist in promoting a settlement between the parties on a European-wide basis. 10. It is perhaps worth interpolating at this point that, for the reasons I gave in my judgment in TNS Holdings Ltd v Nielsen Media Research Inc[2009] EWHC 1160 (Pat) ,[2009] FSR 23 at [23] to [26], it is legitimate, and I would add increasingly common, for parties to seek a judgment of this court on the validity of European patents in the hope that such a judgment will be of assistance to them in either of the two ways that I have just mentioned. 11. The conclusion I draw is that the open offer does not mean that the pursuit of the claim thereafter by HTC was commercially pointless.’
‘16. Mr Haberl has explained to me that the position in Germany, following the 2010 decision of the Federal Court of Justice in “Walzenformgebungsmaschine” (docket Xa ZB 10/09), is that German courts have to consider decisions of the EPO or courts of other contracting states of the EPC which concern an essentially identical question and, in case of a divergent decision, to deal with the reasons. I am told that this approach was confirmed in the 2014 decision “Sitzplatznummerierungseinrichtung” (docket X ZB 1/13). 17. Mr Haberl told me that, although these two Federal Court of Justice decisions, and decisions following them, dealt with validity or infringement by equivalent means, the interpretation of a patent claim is a question which equally concerns each national part of an EP – i.e. it is an “essentially identical question”. Considering the case law, the Düsseldorf court would take into account a UK decision on the same patent with regards to interpretation of the claims – as would be determined in any finding of noninfringement.’