Feeds

English court cannot hear SanDisk MP3 patent case

Action needs to be taken where harm was done

Boost IT visibility and business value

An attempt by Flash memory card maker SanDisk to take on a group of MP3-related patent holders has failed in an English court. The High Court said all of SanDisk's claims fell outside the court's jurisdiction of England and Wales.

SanDisk claimed that Philips, France Telecom, TDF, and Institut Für Rundfunktechnik, all of which own European patents relating to MP3 sound encoding technology, were using the courts to bully and harass it and were abusing their dominant position in the licensing terms they offered for their patents.

Justice Pumfrey saidt the High Court did not have jurisdiction on any of the issues involved, and that action needed to be taken where the harm was actually done, which was in a number of other European countries.

SanDisk makes a number of MP3 players outside Europe which are sold in the European Economic Area, where it has a number of subsidiary companies, two of which are based in the UK. In February 2006 it refused to buy a licence offered to it by Sisvel, a fifth defendant which is an Italian licensing company representing the other four's patent interests.

The dispute between the companies came to a head at a German trade show where the Berlin Public Prosecutor raided SanDisk's exhibition stand and seized 37 MP3 players. Sisvel has also obtained seizures in Italy and Border Detention Orders across Europe, which stop the transfer of the machines for sale at the border into the EU.

SanDisk took a case in the UK in which it said the patent owners had refused to deal individually with it; had tied the licensing of essential MP3 patents to deals for non-essential patents; had demanded excessive royalties; had abused the patents system to acquire a collective dominant market position; had "brought sham, vexatious legal and administrative actions" in order to harass SanDisk into buying licences to patents it did not need; and had sought to prolong the life of their patents.

"[The patent holders' lawyer] submits that in order for the English court to possess the exceptional jurisdiction pursuant to Article 5(3) of the Brussels Regulation to adjudicate upon the alleged abuses of a dominant position in the present case, I must be satisfied that either the event setting the tort in motion was in England and Wales or, alternatively, that the claimant must show that it is the immediate victim of that abuse suffering direct harm in England and Wales," said Pumfrey. "In my judgment this submission is entirely justified.

"On the assumption that it is legitimate to consider the damage arising in these unusual circumstances to arise from any general inhibition on trade within England and Wales caused by the fact that SanDisk does not enjoy a lawful licence, I cannot see where the damage accrues other than to SanDisk in Delaware."

SanDisk is headquartered in Delaware in the US.

Pumfrey ruled for each of SanDisk's claims in turn that the court had no jurisdiction because any damage suffered was said to have been suffered elsewhere.

SanDisk had claimed that it was being harassed by the patent holders by a number of law suits, but Pumfrey found that that was simply in the nature of patent law.

"Generally, in relation to all the legal proceedings, I was attracted at one time by the thought that such proceedings were merely duplicative and so potentially oppressive, but on reflection, it seems to me that that cannot be the case. While all the patents in question derive from the same European patent applications, it is a consequence of the way in which European patent applications mature into domestic patents in the designated contracting states that enforcement has regrettably to be undertaken state by state.

"Nor is it possible to litigate infringement for all designated states in one only of them: if validity is or will come into issue, it is now settled that the only available manner of enforcement is on a country-by-country basis," he said.

Copyright © 2007, OUT-LAW.com

OUT-LAW.COM is part of international law firm Pinsent Masons.

Build a business case: developing custom apps

More from The Register

next story
The police are WRONG: Watching YouTube videos is NOT illegal
And our man Corfield is pretty bloody cross about it
China hopes home-grown OS will oust Microsoft
Doesn't much like Apple or Google, either
UK government accused of hiding TRUTH about Universal Credit fiasco
'Reset rating keeps secrets on one-dole-to-rule-them-all plan', say MPs
Fast And Furious 6 cammer thrown in slammer for nearly three years
Man jailed for dodgy cinema recording of Hollywood movie
Caught red-handed: UK cops, PCSOs, specials behaving badly… on social media
No Mr Fuzz, don't ask a crime victim to be your pal on Facebook
e-Borders fiasco: Brits stung for £224m after US IT giant sues UK govt
Defeat to Raytheon branded 'catastrophic result'
Don't even THINK about copyright violation, says Indian state
Pre-emptive arrest for pirates in Karnataka
Yes, but what are your plans if a DRAGON attacks?
Local UK gov outs most ridiculous FoI requests...
prev story

Whitepapers

Implementing global e-invoicing with guaranteed legal certainty
Explaining the role local tax compliance plays in successful supply chain management and e-business and how leading global brands are addressing this.
5 things you didn’t know about cloud backup
IT departments are embracing cloud backup, but there’s a lot you need to know before choosing a service provider. Learn all the critical things you need to know.
Why and how to choose the right cloud vendor
The benefits of cloud-based storage in your processes. Eliminate onsite, disk-based backup and archiving in favor of cloud-based data protection.
Top 8 considerations to enable and simplify mobility
In this whitepaper learn how to successfully add mobile capabilities simply and cost effectively.
High Performance for All
While HPC is not new, it has traditionally been seen as a specialist area – is it now geared up to meet more mainstream requirements?