Parainen Pearl Shipping Ltd & Ors v Kristian Gerhard Jebsen Skipsrederi AS & Ors, Court of Appeal - Patents Court, October 18, 2017, [2017] EWHC 2570 (Pat)

Resolution Date:October 18, 2017
Issuing Organization:Patents Court
Actores:Parainen Pearl Shipping Ltd & Ors v Kristian Gerhard Jebsen Skipsrederi AS & Ors
 
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Case No: HC-2017-000517

Neutral Citation Number: [2017] EWHC 2570 (Pat)

IN THE HIGH COURT OF JUSTICE

CHANCERY DIVISION

PATENTS COURT

Rolls Building

Fetter Lane, London, EC4A 1NL

Date: 18 October 2017

Before :

MR JUSTICE ARNOLD

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Between :

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James Mellor QC and Quentin Cregan (instructed by Stephenson Harwood LLP) for the Claimants

James Abrahams QC and Yash Kulkarni (instructed by Bristows LLP) for the Defendants

Hearing date: 16 October 2017

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JudgmentMR JUSTICE ARNOLD :

Introduction

  1. This is an application by the Defendants under CPR Part 11 to set aside service of the claim form on them on the ground that this Court has no jurisdiction over the claims asserted in it. The claims are for negative declarations relating to European Patent No. 2 032 426 entitled ``System and method for discharge of bulk material from a ship'' (``the Patent'') owned by the First Defendant (``KGJS''), a company registered in Norway. The Second Defendant (``KGJSC'') and the Third Defendant (``KGJC'') are companies in the same group which are also registered in Norway. The First Claimant (``PPS'') is a company registered in the Marshall Islands which owns a ship now known as the M/V Nordanvik (``the Vessel''), while the Second Claimant (``SMT'') and the Third Claimant (``Eureka'') are companies registered in Cyprus which are respectively the technical and commercial managers of the Vessel. It is common ground that the Court's jurisdiction over the Defendants is governed by the Lugano Convention. There is no dispute that the Court would have jurisdiction in respect of the Claimants' claim for a declaration of non-infringement (``DNI'') of the UK designation of the Patent pursuant to Article 5(3) of the Lugano Convention. The claims asserted by the Claimants extend to 11 other designations of the Patent, however. The Defendants contend that this Court has no jurisdiction in respect of such claims.

    Factual background

  2. The following account of the factual background is taken from the Claimants' Particulars of Claim. For present purposes, the Claimants' factual allegations must be assumed to be correct.

  3. The Defendants are members of a group of companies dealing in (amongst other things) cement and/or the shipping and delivery of cement.

  4. The Patent claims priority from Norwegian Patent Application NO 20062650 filed on 9 June 2006. The Patent was designated in 32 countries on grant, but has only been validated post-grant in the following 12 countries: Denmark, Finland, France, Germany, Ireland, Iceland, Netherlands, Poland, Portugal, Spain, Sweden and the UK. The Claimants do not challenge the validity of the Patent in these proceedings.

  5. The Vessel was built in about 2002 and was acquired by KGJC in about 2005. At the behest and with the consent of KGJS, KGJC installed a pneumatic cargo/cement system on the Vessel. This took place in or about 2006 in Batam, Indonesia. The Defendants brought the Vessel back into the European Economic Area, and then operated the Vessel. The Defendants engaged in some inter-company sales of the Vessel in the EEA in about 2008, from at least KGJC to KGJSC, with KGJS's knowledge and consent.

  6. In late 2008, while KGJSC owned the Vessel, it was grounded and severely damaged in Norway. The Vessel was re-floated and moved to berthing. KGJSC then offered the Vessel for sale and sold it on the open market on an ``as is, where is basis''. The sale took place in Norway, and the contract of sale was governed by English law. The buyer (``CSCSA''), gave an undertaking not to use or re-commission the pneumatic cement system on the Vessel, with a right of first refusal to the sellers if the Vessel was to be re-sold before conversion to a bulk carrier and a right to inspect the Vessel. It is the Claimants' case that the undertaking was not passed on so as to bind any subsequent buyer of the Vessel, and that the Defendants had and took opportunities to inspect the Vessel at various times.

  7. The Vessel was sold twice more, coming ultimately to be owned by PPS. At least the first sale (from KGJSC to CSCSA) had its place of closing in the EEA (Oslo or Horten), as did the third sale (from Esmenet Shipping Co SA to PPS) (Oslo). The Claimants allege that each of those sales were with the knowledge and/or consent of the Defendants.

  8. The Vessel services clients of the Claimants in Finland and Sweden and elsewhere in the EEA, and the Claimants propose to bring the Vessel to the UK in order to develop a client base in the UK.

  9. The Vessel is alleged by the Defendants to contain a system on board...

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