The Revival of Cross- Border Injunctions
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The revival of cross-border injunctions The revival of cross- border injunctions The European Court of Justice recently Europe, the jurisdiction issue is governed by breathed new life into the phenomenon of EU Regulation 44/ 2001 on jurisdiction and cross-border injunctions – a cost-effective the recognition and enforcement of judgments tool originally developed by the Dutch in civil and commercial matters. courts to stop infringement According to the general rule stated in Article 2 of Regulation 44/2001, a party whose By Mari Korsten, Marion Bruin and Jaap domicile is in a EU member state may be sued Bremer, NLO (Nederlandsch Octrooibureau) in the courts of that member state, irrespective and BarentsKrans of its nationality. However, Article 5(3) of the regulation states that with respect to claims A cross-border injunction, which enables a relating to an unlawful act, a defendant may patent holder to start proceedings in a single also be sued before the courts of the member country instead of all countries in which state where the unlawful event occurred or its patents are infringed, is a great time and may occur. In addition, according to Article money saver. The Dutch courts used to issue 6(1), if the case involves multiple defendants such injunctions routinely, both in cases on domiciled in various countries, they may all the merits and in preliminary proceedings, be sued in a country where any one of them but over the years this practice had been is domiciled, provided that the claims against considerably limited by the European Court of them are so closely connected that it is Justice (ECJ). However, a recent ECJ decision expedient to hear and determine them together (Solvay v Honeywell, C-616/10, July 12 2012) to avoid the risk of irreconcilable judgments appears to have reversed the trend, at least as resulting from separate proceedings. far as cross-border measures in preliminary proceedings are concerned. The ECJ stated Past Dutch practice that if one or more companies infringe the The practice of granting cross-border same European patent with the same product injunctions in patent cases started in the in multiple EU member states, the patent Netherlands in the 1990s. The Dutch courts holder may be entitled to claim and obtain a considered that they had jurisdiction in many of cross-border injunction before the court of the international patent disputes that were filed. one of those countries that is applicable in all Not only did the courts assume jurisdiction those states. This is a significant development to rule on infringement in the Netherlands, for patent holders, such as pharmaceutical they also ruled on infringement outside the companies, since conducting infringement Netherlands in relation to parallel IP rights proceedings in multiple EU countries is very in other European countries (eg, Interlas v costly in terms of both time and money. Lincoln, Supreme Court, November 24 1989, BIE 1991, 23, p86; NJ 1992, 404). If necessary, EU Regulation 44/2001 the Dutch courts would apply foreign law to The question of where a party that has non-Dutch patents in order to assess validity committed patent infringement can be sued and infringement outside the Netherlands. The is a matter of private international law. In Dutch courts issued cross-border injunctions 26 Patents in Europe 2013/2014 www.iam-magazine.com The revival of cross-border injunctions in cases on the merits and in preliminary addressed in the case at issue was whether this proceedings. For this, the courts relied on provision was applicable only to proceedings a broad interpretation of Article 6(1) of the that were started with the goal of declaring Brussels Convention (now Article 6(1) of a patent invalid, or also to proceedings in Regulation 44/2001). which a defendant in a patent infringement However, the Dutch practice was not case pleaded the invalidity of the patent by followed in other European countries, and way of defence against the infringement claim. courts in several EU countries – in particular, The ECJ ruled that the exclusive jurisdiction the United Kingdom – strongly opposed it. provided for by Article 16(4) applied to the In view of this growing criticism, in 1998 the proceedings in which the issue of a patent’s Court of Appeal of The Hague held in two validity was raised (eg, a nullity action or decisions (EGP/Boston Scientific, April 23 1998, a nullity defence) at the time the case was BIE 2002, 8, p25 and Boston Scientific/Cordis, brought or at a later stage in the proceedings. November 26 1998, BIE 2002, 10, p46) that the This means, in essence, that a national court Dutch courts could assume jurisdiction for co- that is asked to grant a cross-border injunction defendants domiciled outside the Netherlands in proceedings regarding the infringement in relation to infringements committed in their of a European patent has no jurisdiction to own country only if there was also a Dutch assess the infringement of the ‘foreign’ parts defendant – the so-called ‘spider in the web’, of the patent if the validity of such parts has that was coordinating the infringing acts of the been challenged. This effectively barred cross- co-defendants. This considerably narrowed the border decisions in cases on the merits, as the interpretation of Article 6(1) of the Brussels invalidity of the patent in question was nearly Convention and thus limited the possibilities always argued by way of defence against the to obtain a cross-border injunction from the infringement claims. Dutch courts. However, after GAT v LuK the Dutch courts relied on Article 31 of Regulation 44/2001 to Past ECJ practice adopt the position that it was still possible to In 2006 the cross-border injunction practice issue cross-border injunctions in preliminary was further restricted by two ECJ decisions. injunction proceedings (eg, Bettacare v H3 In Roche v Primus (C-539, July 13 2006) the Products, Preliminary Relief Judge of The ECJ held that Article 6(1) of the Brussels Hague, September 21 2006; PTC v APE Holland, Convention did not apply in European patent Preliminary Relief Judge of The Hague, infringement proceedings involving a number October 4 2011, www.iept.nl (IEPT20111004); of companies domiciled in various contracting and YPM v Yell, The Hague Court of Appeal, states in respect of acts committed in one July 12 2011, www.iept.nl (IEPT20110712)). or more of those states, even where those According to Article 31, proceedings may be companies belonged to the same group and may started before the court of a member state have acted in an identical or similar manner in for provisional measures, even if under the accordance with a common policy elaborated regulation the court of another member by one of them. This effectively meant that, state has jurisdiction as to the substance of according to the ECJ, Article 6(1) did not allow the matter (ie, the validity of the patent). for the ‘spider in the web’ doctrine developed According to the Dutch courts, this meant by the Dutch Court of Appeal. that the court still had jurisdiction to grant a In Gesellschaft für Antriebstechnik mbH & preliminary cross-border injunction, even if Co KG v Lamellen und Kupplungsbau Beteiligungs the validity of the patent was challenged. KG (GAT v LuK, C-4/03, July 13 2006) the ECJ was asked to interpret Article 16(4) of Solvay v Honeywell the Brussels Convention (now Article 22(4) In the eagerly awaited decision in Solvay v of Regulation 44/2001), which states that the Honeywell, the ECJ was asked to provide its court of the member state in which an IP right views on cross-border injunctions and, in has been registered has exclusive jurisdiction particular, on the Dutch practice of granting to assess the right’s validity. The question such injunctions as an interim measure, even www.iam-magazine.com Patents in Europe 2013/2014 27 The revival of cross-border injunctions after GAT v LuK and Roche v Primus. In Solvay did not apply in the case at hand. The Hague v Honeywell a number of companies from the District Court had made it clear that in the Honeywell group domiciled in different EU ongoing proceedings in which a provisional jurisdictions, including the Netherlands, had cross-border injunction had been requested, marketed the same product in several EU it would not make a final decision on the jurisdictions covered by a European patent validity of the foreign parts of the European owned by Solvay. The product was said to patent, but rather would make a (preliminary) infringe the relevant national parts of the assessment of how the court with jurisdiction European patent, excluding the Netherlands. under Article 22(4) would rule on the validity Solvay had commenced infringement of the patent. In addition, the Hague District proceedings on the merits against the Court had indicated that if it came to the Honeywell companies before the Hague conclusion that there was a reasonable, non- District Court. In these proceedings, Solvay negligible chance that the foreign court with requested, among other things, a provisional jurisdiction under Article 22(4) ruled that cross-border injunction for the relevant the foreign part of the patent was invalid, the countries in which Honeywell was claimed to request for a cross-border injunction would be have infringed Solvay’s patent. In its defence, rejected. Under these circumstances, the ECJ Honeywell argued that the patent was invalid. held, there was no risk of conflicting decisions The Hague District Court, which had until and the Hague District Court could assume then assumed that it had jurisdiction to grant jurisdiction to grant a cross-border injunction, preliminary cross-border injunctions, referred even though the invalidity of the patent had some preliminary questions to the ECJ.