Cross-border injunctions
In short, GAT v LuK rules that the national court has no jurisdiction for crossborder claims if the validity of the invoked patent, consisting of national patents stemming from a European patent, is contested. This means that as long as no validity arguments are raised, a cross-border procedure can continue. It follows from Roche v Primus that cross-border jurisdiction based on Article 6 of Brussels-I, which grants foreign jurisdiction over connected cases, is not easily accepted.
The EJC stated that the separate cases concerned different defendants that related to different infringing activities and therefore would not concern one and the same case. Also the legal findings would be different since the national patents would be governed by national laws. The argument that this would lead to separate actions in separate jurisdictions and therefore to ‘irreconcilable judgments’ was rejected.
Both decisions were thought to have signalled the end of cross-border injunctions, until the Dutch court did grant a cross-border injunction in summary proceedings shortly after these EJC decisions. The Netherlands was, and is, unique in its judgments in interlocutory proceedings and repeatedly gave similar decisions; for example, in Bettacare v H3 and Fort Vale Engineering ltd v Pelican Worldwide B.V.
The idea behind these judgments is that in such proceedings, no definitive decisions are made about the validity of a patent. Nevertheless, these judgments led to discussions about their correctness within the light of the previous ECJ judgments. The debate is still raging but might become clarified within the foreseeable future.
“The court of The Hague...states that a situation in which two or more companies from different member states are accused in a national procedure would lead to irreconcilable decisions if it were not possible to summon them in front of a single competent court.”
Recently the court of The Hague decided to refer questions to the ECJ to gain a further explanation of provisions regarding cross-border litigation. The case, in which a cross-border problem occurred, regards the parties Solvay and Honeywell. Solvay is the owner of a European patent for a patented process for the preparation of HFC, a propellant for polyurethane foam. The patent is registered in several European countries. Honeywell also distributes the product HFC in Europe. According to Solvay, the HFC marketed by Honeywell is produced in conformity with its patented process.
During proceedings on the merits, Solvay provisionally ordered that Honeywell cease and desist infringing its patents in several European countries. Honeywell invoked the patents’ invalidity.
Honeywell points to the Gat v LuK and Roche v Primus decisions and states that the court cannot hand down a provisional cross-border injunction. This statement is contested by Solvay, which states that Gat/LuK does not prevent a court from rendering a provisional cross-border judgment, even if the validity of the patent is contested.
Honeywell is of the opinion that, pursuant to the Roche-Primus decision of the Dutch Supreme Court of December 30, 2007, the court cannot decide on the infringement claim until after the respective national courts have decided about validity of the respective national parts of the European patent.
According to Solvay, the current case differs from Roche v Primus in that Solvay states that each separate Honeywell defendant individually infringes the different national parts of EP 440 in every country were the patent is registered. In Roche v Primus, the Dutch defendant was accused of infringing the Dutch patent, while each foreign defendant was accused in relation to the separate foreign patents.
The court of The Hague shares this view with Solvay and states that a situation in which two or more companies from different member states are accused in a national procedure would lead to irreconcilable decisions if it were not possible to summon them in front of a single competent court. How the term ‘irreconcilable decisions’ needs to be explained has not been answered by the EJC in Roche v Primus.
According to the Dutch court, this term must be explained broadly in such a fashion that it means ‘conflicting decisions’, which would make the court of the Hague competent in the proceedings on the merits and the provisional claim. If the term was explained in a narrow sense of ‘incompatible decisions’, the court would probably not be competent.
To gain clarity on this subject, the Court of The Hague has therefore posed questions to the ECJ with regard to Articles 6.1 and 22.4 Brussel-I. Until the ECJ gives an answer, patent owners cannot be given security or clarity in cross-border infringement cases. Hopefully, the famous Dutch preliminary cross-border injunction is there to stay.
Michiel Rijsdijk is a partner at Arnold + Siedsma. He can be contacted at: mrijsdijk@arnold-siedsma.com
