The Dutch Court considers crossing its borders

The Dutch Court considers crossing its borders - Is there still scope for cross-border injunctions in European patent infringement cases?

This article was included in the spring 2011 issue of Innovate - the patents newsletter.

Is there still scope for cross-border injunctions in European patent infringement cases?

The District Court of The Hague ("the Dutch Court") recently revisited the issue of cross-border injunctions in European patent infringement cases, four years after many patent holders may have concluded that pan-European injunctions were at an end. 

On 22 December 2010 the Dutch Court referred several questions to the Court of Justice of the European Union (the "CJEU") relating to its jurisdiction under Articles 6(1) and 22(4) of Regulation (EC) No. 44/2001 (the "Regulation").  

The referral arose out of Solvay v Honeywell, a case concerning a European patent held by Solvay for the preparation of 1, 1, 1, 3, 3 - pentafluoropropane. The European patent resulted from a single application to the European Patent Office, although it is effectively a collection of national patent rights. Solvay alleged that three Honeywell companies were infringing its patent in more than one country and sought an injunction against those companies, one of which is Dutch, the other two of which are Belgian.

 

Issue

The key issue for the Dutch Court was whether it could grant an injunction against all the defendants - the Dutch company and the two Belgian companies - obliging them to cease infringement of the patent in Member States other than the Netherlands.

 

Background

The decisions of the CJEU in 2006 in GAT v LuK and Roche v Primus severely limited the potential for cross-border injunctions in European patent infringement cases. Historically, however, courts in the Netherlands have shown a willingness to embrace cross-border enforcement. It is therefore not surprising that the Dutch Court has sought clarification from the CJEU as to the remaining scope (if any) for granting a cross-border injunction.

In this case the Dutch Court decided that it had jurisdiction over the Dutch defendant based on Article 2 of the Regulation (i.e. the general rule that a defendant should be sued in its place of domicile). On the basis that the validity of the patent was not being disputed, the Dutch Court also decided that the exclusive jurisdiction rule under Article 22(4) of the Regulation had not been triggered and that it therefore had jurisdiction to deal with the infringement of the foreign parts of the European patent. Article 22(4) of the Regulation provides that, in proceedings concerned with the registration or validity of patents, the courts of the Member State in which the patent takes effect will have exclusive jurisdiction, irrespective of the domicile of the defendant

Therefore, the question was whether the Belgian companies could be sued in the Netherlands for their infringement of a non-Dutch patent under Article 6(1) of the Regulation as co-defendants, on the basis that the claims against the Dutch and Belgian companies are so closely connected that they must be heard together to avoid the risk of irreconcilable judgments.  

The Dutch Court appears to have distinguished the facts in Solvay v Honeywell from Roche v Primus (another case concerning the interpretation of Article 6(1)). In Roche v Primus the defendants were each infringing a European patent only in the country in which they were based, which led the CJEU to hold that Article 6(1) was not triggered and that the infringements must be litigated separately in the defendants' respective jurisdictions. In Solvay v Honeywell the Dutch company was infringing the patent in the Netherlands and also in Belgium, thereby increasing the problems from any irreconcilable judgments if the Belgian companies were to be sued before the Belgian courts based on the same facts. 

 

What is the CJEU being asked to do?

In the circumstances, the Dutch Court has sought clarification from the CJEU as to whether it has jurisdiction over the Belgian defendants in respect of their infringement in Belgium pursuant to Article 6(1).

In addition, the Dutch Court has sought clarification regarding the interpretation of Article 22(4) of the Regulation. In summary, it has asked the CJEU for guidance on when the exclusive jurisdiction rule under Article 22(4) takes effect and a national court should therefore decline jurisdiction over a foreign patent. For example, where a defendant argues that a foreign patent is invalid, the Dutch Court has queried to what extent this allegation must be substantiated before the exclusive jurisdiction rule is triggered.

Finally, the Dutch Court has asked whether there is scope for its making a provisional injunction ordering a defendant to cease the infringement of a foreign patent pursuant to Article 31 of the Regulation, particularly given that Article 31 suggests that one national court may have jurisdiction in respect of provisional measures even where another national court would have jurisdiction as to the substance of a matter (e.g. adjudication on patent validity).

 

Key points: The CJEU's decisions in GAT v LuK and Roche v Primus appeared to signal a death knell for the cross-border injunction in patent infringement cases. However, the Dutch Court's recent referral to the CJEU has raised the possibility of cross-border injunctions in cases where defendants are infringing a European patent in more than one Member State. If the CJEU agrees that cross-border injunctions may be granted by national courts in these circumstances, this could simplify European patent litigation. However, forum shopping and torpedo litigation (which involves the specific targeting of a jurisdiction known for its slow judicial processes) may also come back into fashion.

This article was written by Emma Kingstone.