Vestel v Access Advance & Philips

26 March 2021

Mark Chacksfield QC and Henry Edwards acted for the appellant claimants, Vestel, in this appeal against the order of HHJ Hacon setting aside service of the claim form out of the jurisdiction and declaring that the court had no jurisdiction to hear the claim.

The subject matter of the action concerned the High Efficiency Video Coding (HEVC) standard, in respect of which the respondent defendants own and administer standards essential patents.  Vestel sought declarations that Access Advance’s Patent Portfolio Licence Agreement was not FRAND and that Vestel’s counter-offer of licence terms was FRAND, or alternatively that the court should declare FRAND terms.

Giving the judgment of the court, Lord Justice Birss allowed the amendment of Vestel’s pleadings to raise two new points: firstly, that gateway 9 of CPR PD 6B para 3.1 could be satisfied where the relevant tort is the tort of patent infringement and the claim is for a negative declaration relating to it; and secondly, reliance upon the court’s inherent jurisdiction as an alternative legal basis on which to seek declarations.

The court held that on the facts of the claim none of the PD 6B para 3.1 gateways were available to allow Vestel to serve the claim form out of the jurisdiction on Access Advance, a United States corporation.  Specifically, gateway 9 was not satisfied because the claim was properly characterised as one for declarations as to FRAND terms and not a claim for declarations of non-liability for the tort of patent infringement, and gateway 11 was not satisfied because the claim for declarations was not based on the existence or non-existence of a legal right.

For similar reasons, the court held that it did not have jurisdiction to hear the claim against Philips (domiciled in the Netherlands) under Brussels 1 Recast because the claims in the case could not properly be characterised as claims for a declaration of non-liability for a tort.

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