MAGNESIUM ELEKTRON LTD v MOLYCORP CHEMICALS & OXIDES (EUROPE) LTD

H2 Patents Act 1977, ss.1(1)(a), 2(1), 60(1)(c), 100 Council Regulation 44/2001 (“the Judgments Regulation”), art.5(3) Community Patent Convention, art.35 Agreement on Trade-Related Aspects of Intellectual Property Rights (“TRIPS”), art.34 Civil Procedure Rules, rr. 3.4, 6.37(3) and Part 24 Practice Direction 6B, paras. 3.1(2), 3.1(3) and 3.1(9) This was an application for permission to serve proceedings for patent infringement out of the jurisdiction on Zibo Jia Hua Advanced Material Resources Co Ltd (“Zamr”), in China. The claimant contended that Zamr, the second defendant in the proceedings, was liable for infringement of its European Patent (UK) No. 1 444 036 entitled “Process for preparing zirconium-cerium-based mixed oxides” (“the Patent”) as the importer into the UK of rare earth mixed oxide products (“REMO”) allegedly made using the patented process and/or as a joint tortfeasor with the first defendant (“Molycorp Europe”) in relation to Molycorp Europe’s alleged dealings in such goods. Zamr and Molycorp Europe were both indirect subsidiaries of the same US corporation and it would appear to have been accepted that the REMO complained of had been produced by Zamr. The claimant sought permission to serve proceedings on Zamr out of the jurisdiction under the “gateways” provided for in para. 3.1 of Practice Direction 6B of the Civil Procedure Rules under sub-paras. (2) (claim for an injunction to refrain the doing of an act within the jurisdiction), (3) (proposed additional defendant a necessary and proper party) and/or (9)(b) (claim in tort where damage resulting from an act committed or likely to be committed in the jurisdiction). It contended (i) that there was a serious issue to be tried on the merits, (ii) that there was a good arguable case that each of the “gateways” relied upon applied, and (iii) that England and Wales was a proper place in which to bring the claim against Zamr. Sub-para 9(a) also arose for consideration (claim in tort where damage sustained or likely to be sustained in the jurisdiction). H3 There were two distinct questions which arose for consideration when assessing the merits of the claimant’s case of infringement against Zamr, namely: (a) whether Zamr had committed any relevant act relating to the Zamr REMO complained of, and (b) whether that Zamr REMO was a product made directly by the patented process. The [2016] R.P.C. 18 663