APPLE RETAIL UK LIMITED AND OTHERS v. QUALCOMM (UK) LIMITED AND ANR - (22 May 2018)

INTELLECTUAL PROPERTY LAW

Intellectual Property Rights

In the instant case the Apple group of companies is involved in the design, manufacture and marketing of various mobile communication and media devices, personal computers and portable music devices. Apple's products include the iPhone and iPad devices. There were originally Four Defendants but the Claimants now wish to proceed against only two of them. The remaining two Defendants are now known as the First and Second Defendants.

The First Defendant is incorporated in England and Wales and is a wholly owned indirect subsidiary of the Second Defendant. Second Defendant is Qualcomm Incorporated, which is incorporated in Delaware, USA. It is the ultimate parent company of the companies in the Qualcomm group. The Second Defendant has described itself as a leading contributor to the development of technologies used in smartphones. It has accumulated over 130,000 relevant patents and patent applications worldwide. Of these, approximately 13,300 are European patents. Its UK patent portfolio consists of 5,168 UK and EP (UK) patents. It has declared approximately 26,700 patents as potentially essential to the European Telecommunications Standards Institute ("ETSI") mobile telephone standards.

The Claimants issued (but did not then serve) the original Claim Form in these proceedings on 23 January 2017. Claimants amended the Claim Form on 19 May 2017. The Claimants then served the Amended Claim Form and Particulars of Claim on the First Defendant, the UK company, within the jurisdiction. The Claimants also served the Amended Claim Form and Particulars of Claim, in so far as they put forward certain claims relating to patents, on the Second Defendant, the US company, within the jurisdiction, in reliance on CPR 63.14. On 30 June 2017, the Claimants applied without notice for permission to serve the Amended Claim Form on the Second Defendant out of the jurisdiction (presumably in so far as the Claimants had not already served it on the Second Defendant within the jurisdiction in reliance on CPR 63.14). On 12 July 2017, Arnold J granted the permission which had been sought. On 11 August 2017, the Second Defendant served a Defence to the patent claims made against it, save for one of those claims (the patent exhaustion claim). As to the patent exhaustion claim, the Second Defendant contends that that claim is not within CPR 63.14 and was not validly served on it within the jurisdiction.

This Court concludes that the claim against the First Defendant has no real prospect of success and there is no compelling, or any, reason why it should proceed to a trial. The position is clear. Moreover position does not turn on a disputed issue of fact as to the principles of French law. It is desirable that the sooner the fate of the claim is decided the better. The Court should not assume jurisdiction against the Second Defendant pursuant to Gateway 3 on the basis that there is a real issue between the Claimants and the First Defendant. Hence the First Defendant is granted summary judgment in relation to the claims against it.

Tags : JURISDICTION EXHAUSTION PATENT