Posted: December 18th, 2015
Magnesium Elektron Limited v (1) Molycorp Chemicals & Oxides (Europe) Limited (2) Zibo Jia Hua Advanced Material Resources Co. Ltd  EWHC 3596
The UK Patents Court has granted permission to a claimant to serve proceedings for patent infringement out of the jurisdiction on a defendant in China.
The claimant had a UK process patent for the manufacture of rare earth mixed oxide (REMO) products. The first defendant was a UK company which supplies REMO products; the second defendant was a Chinese entity which manufactures REMO products in China. The claimant’s case was that both defendants had infringed the patent in relation to the REMO products manufactured in China, that one or other defendant had committed the infringing act of importing them into the UK and that they were acting pursuant to a common design and were jointly liable for infringement.
Birss J had to consider whether the criteria for service out of the jurisdiction were met. First, on the evidence before him, he found that there was a serious issue to be tried that Zibo REMO was a product obtained directly by means of the patented process, it imported this product into the UK and there was a good arguable case that it was liable with Molycorp as a joint torfteasor for the infringing acts carried out in the UK. Second, he found that there was a good arguable case that the “gateways” for service out of the jurisdiction set out in Practice Direction 6B paragraph 3.1 of the Civil Procedure Rules (which govern practice and procedure in the civil courts of England and Wales) relied on by the claimant were satisfied. Third, he held that England and Wales was the proper forum to bring the claim: the claim related to a UK patent and involved the supply of goods to a company in Wales. English law was the applicable law and if the validity of the patent were put in issue it would be within the exclusive jurisdiction of the English court.
In the circumstances, Birss J granted permission to the claimant to serve the proceedings out of the jurisdiction.
Read the decision here.
Head note: Sarah Routledge, Marks & Clerk Solicitors