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Friday, 13 July 2012

Coming to a court near you: pan-European provisional injunctions

A selection of European countries
where you might expect to be able
to get pan-European relief ...
It's Olympic year and the Court of Justice of the European Union (CJEU) appears to be in training for one of the sprint events.  Case C‑616/10 Solvay SA v Honeywell Fluorine Products Europe BV, Honeywell Belgium NV and Honeywell Europe NV, a reference for a preliminary ruling from the Rechtbank ‘s-Gravenhage (Netherlands), shows an impressive turn of pace for the Court of Justice.  This case was referred to Luxembourg for a preliminary ruling in December 2010 and yesterday we received a ruling, just 19 months later.  Non-Europeans might find this slow, but the CJEU in the past has generally produced rulings between 22 and 27 months after they were sought.  On the other hand, the underlying Dutch litigation which led to this reference being made was an application for interim injunctive relief for infringement of a patent -- an intellectual property right with a fairly low life expectancy.

So what was this all about? In March 2009, Solvay sued three Honeywell companies based in the Netherlands and Belgium before the Rechtbank ‘s-Gravenhage for infringing European patent EP 0 858 440 in the Netherlands.  The same European patent was also in force in Denmark, Ireland, Greece, Luxembourg, Austria, Portugal, Finland, Sweden, Liechtenstein and Switzerland. Since Solvay said Honeywell was also infringing its patent right across Europe, in December 2009 it also sought provisional relief in the form of a cross-border prohibition against infringement until a decision had been made in the main proceedings.  The Honeywells said Solvay's patent was invalid, but neither sought annulment of the Dutch bit of the European patent nor contested the competence of the Dutch court to hear both the main proceedings and the interim proceedings.

What with all these patents, parties, procedures and provisional applications floating round and making lots of noise in the process, the Rechtbank still had to give some serious thought to the law.  Regulation 44/2001 [on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters], looked vaguely relevant.  For example there was Article 6(1):
‘A person domiciled in a Member State may also be sued:

(1) where he is one of a number of defendants, in the courts for the place where any one of them is domiciled, provided the claims are so closely connected that it is expedient to hear and determine them together to avoid the risk of irreconcilable judgments resulting from separate proceedings’.
There was also Article 22(4):
‘The following courts shall have exclusive jurisdiction, regardless of domicile: … 
(4) in proceedings concerned with the registration or validity of patents, trade marks, designs, or other similar rights required to be deposited or registered, the courts of the Member State in which the deposit or registration has been applied for, has taken place or is under the terms of a Community instrument or an international convention deemed to have taken place.

Without prejudice to the jurisdiction of the European Patent Office under the [Munich Convention], the courts of each Member State shall have exclusive jurisdiction, regardless of domicile, in proceedings concerned with the registration or validity of any European patent granted for that State’.
But what did all of this mean to a Dutch court which had been asked to provide pan-European relief against both Dutch and non-Dutch defendants in respect of the same allegedly infringing bits of independent national patents that originated from a common grant? A bit perplexed as to what it could or should do, the Rechtbank ‘s-Gravenhage decided to stay the proceedings and asked the CJEU for a preliminary ruling on the following questions:
‘Regarding Article 6(1) of [Regulation 44/2001]:

1. In a situation where two or more companies from different Member States, in proceedings pending before a court of one of those Member States, are each separately accused of committing an infringement of the same national part of a European patent which is in force in yet another Member State by virtue of their performance of reserved actions with regard to the same product, does the possibility arise of “irreconcilable judgments” resulting from separate proceedings as referred to in Article 6(1) of [Regulation No 44/2001]?

Regarding Article 22(4) of [Regulation No 44/2001]:

2. Is Article 22(4) of [Regulation No 44/2001] applicable in proceedings seeking provisional relief on the basis of a foreign patent (such as a provisional cross-border prohibition against infringement), if the defendant argues by way of defence that the patent invoked is invalid, taking into account that the court in that case does not make a final decision on the validity of the patent invoked but makes an assessment as to how the court having jurisdiction under Article 22(4) of [that] Regulation would rule in that regard, and that the application for interim relief in the form of a prohibition against infringement shall be refused if, in the opinion of the court, a reasonable, non-negligible possibility exists that the patent invoked would be declared invalid by the competent court?

3. In order for Article 22(4) of [Regulation No 44/2001] to be applicable in proceedings such as those referred to in the preceding question, must the defence of invalidity be subject to procedural requirements in the sense that Article 22(4) of the regulation is only applicable if invalidity proceedings before the court having jurisdiction under Article 22(4) of [that] Regulation are already pending or are to be commenced within a period to be laid down by the court or at least that a summons in that regard has been or is being issued to the patent holder, or does it suffice if a defence of invalidity is merely raised and, if so, are requirements then laid down in respect of the content of the defence put forward, in the sense that it must be sufficiently substantiated and/or that the conduct of the defence must not be deemed to be an abuse of procedural law?

4. If question [2] is answered in the affirmative, does the court, after a defence of invalidity has been raised in proceedings such as those referred to in question 1, retain jurisdiction in respect of the infringement action with the result that (if the claimant so desires) the infringement proceedings must be stayed until the court having jurisdiction under Article 22(4) of [Regulation No 44/2001] has given a decision on the validity of the national part of the patent invoked, or that the claim must be refused because a defence that is essential to the decision may not be adjudicated, or does the court also lose its jurisdiction in respect of the infringement claim once a defence of invalidity has been raised?

5. If question [2] is answered in the affirmative, can Article 31 of [Regulation No 44/2001: '‘Application may be made to the courts of a Member State for such provisional, including protective, measures as may be available under the law of that State, even if, under this Regulation, the courts of another Member State have jurisdiction as to the substance of the matter’'] confer on the national court jurisdiction to adjudicate on a claim seeking provisional relief on the basis of a foreign patent (such as a cross-border prohibition against infringement), and against which it is argued by way of defence that the patent invoked is invalid, or (should it be decided that the applicability of Article 22(4) of [that] Regulation does not affect the jurisdiction of the Rechtbank [ s’-Gravenhage] to adjudicate on the infringement question) jurisdiction to adjudicate on a defence claiming that the foreign patent invoked is invalid?

6. If question [5] is answered in the affirmative, what facts or circumstances are then required in order to be able to accept that there is a real connecting link, as referred to in paragraph 40 of the judgment [in Case C-391/95 Van Uden [1998] ECR I‑7091], between the subject matter of the measures sought and the territorial jurisdiction of the Contracting State of the court before which those measures are sought?’
On the questions referred, the CJEU yesterday ruled as follows:
1. Article 6(1) of  ... Regulation ...  44/2001 ... must be interpreted as meaning that a situation where two or more companies established in different Member States, in proceedings pending before a court of one of those Member States, are each separately accused of committing an infringement of the same national part of a European patent which is in force in yet another Member State by virtue of their performance of reserved actions with regard to the same product, is capable of leading to ‘irreconcilable judgments’ resulting from separate proceedings as referred to in that provision. It is for the referring court to assess whether such a risk exists, taking into account all the relevant information in the file.[This answers the first question]

2. Article 22(4) of Regulation ... 44/2001 must be interpreted as not precluding, in circumstances such as those at issue in the main proceedings, the application of Article 31 of that regulation [This addresses question two].
Having regard to the answer provided to the second question, said the CJEU at paragraph 52,there was no need to answer the third to sixth questions.

Following the Advocate General's call (here) for a more nuanced approach than the binary yes/no (generally "no") heritage of earlier CJEU case law (on which Willem Hoyng's comments here are most instructive), it appears to this Kat that the court is now saying "it all depends, but basically yes" to pan-European jurisdiction to grant provisional relief in IP infringement actions.

Merpel seems to have picked up this curious notion that if Article 31 means what it says and is taken seriously, who needs a unified patents court and its various divisions anyway ...

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