Going to court over the Spider's Web: no Hoffmanns are left behind ...

The IPKat used to think that the Spaniards were very fond of long names. But after being prompted by his splendidly-named friend Aurelio Lopez-Tarruella Martínez to blog something on the Advocate General's Opinion in what we English call "the Roche Case", he discovers that long Spanish names are nothing as long as long Luxembourg names for references to the European Court of Justice. "The Roche Case" turns out to be (in full) Case C-539/03 Roche Nederland BV, Roche Diagnostic Systems Inc., NV Roche SA, Hoffmann-La Roche AG, Produits Roche SA, Roche Products Ltd, F. Hoffmann-La Roche AG, Hoffmann-La Roche Wien GmbH and Roche AB v Frederick Primus and Milton Goldenberg.

This case asks whether Article 6.1 of the Brussels Convention on Jurisdiction etc allows a patent owner to sue all defendants in a multi-jurisdictional patent infringement dispute in the home court of just one of them, if that one is the 'spider in the web' who controls all the other infringements. Article 6.1 provides: "A person domiciled in a Contracting 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".

Regular readers of this blog will know that the Kat complains whenever a decision or Opinion isn't given in English, and this is no exception: you can have it in French, German, Greek, Italian, Dutch, Portuguese, Finnish or Swedish only. However, the IPKat has accessed the French version of the AG's recommendation to the court and then ran it through Babelfish. The result is that this

L’article 6, point 1, de la convention du 27 septembre 1968 concernant la compétence judiciaire et l’exécution des décisions en matière civile et commerciale ... doit être interprété en ce sens qu’il n’a pas vocation à s’appliquer dans le cadre d’un litige en contrefaçon de brevet européen mettant en cause plusieurs sociétés, établies dans différents États contractants, pour des faits qui auraient été commis sur le territoire de chacun de ces États, même dans l’hypothèse où lesdites sociétés, appartenant à un même groupe, auraient agi de manière identique ou similaire, conformément à une politique commune qui aurait été élaborée par une seule d’entre elles.
has become this

Article 6, point 1, of the convention of September 27, 1968 concerning the jurisdiction and the execution of the decisions in civil and commercial matters ... should be interpreted in the sense that it does not have vocation to apply within the framework of a litigation in counterfeit of European patent blaming several companies, established in various contracting States, for facts which would have been made on the territory of each one of these States, even on the assumption that the aforementioned companies, pertaining to the same group, would have acted in an identical or similar way, in accordance with a common policy which would have been worked out by only one of them.
Er, whatever ...

Tibor Gold's succinct summary is that "Article 6.1 does not apply in cross-border patent infringement cases, even when the defendants belong to one group or when there is one central policy of one of the defendants that applies to all defendants".

Hoffmann-La Roche here
Tales of Hoffmann here and here
Another Tale of Hoffmann here

Congratulations, World Leaders!

The IPKat notes the names of several of his friends among those listed in Informa's 2005 WorldLeaders European IP Awards. It would be invidious to name names, but the Kat is absolutely delighted to see that Ruth Soetendorp (left), Martin Kretschmer and fellow blogger Edgar Forbes (alias the Media Beak) have been honoured for "Best Achievement in IP Education and Training". They've worked so hard to put Bournemouth University on the map and it's wonderful to see their endeavours recognised.
SPIDER'S WEB IN LUX; CONGRATULATIONS SPIDER'S WEB IN LUX; CONGRATULATIONS Reviewed by Jeremy on Friday, December 09, 2005 Rating: 5

1 comment:

  1. The problem is that Art. 16.4 of the Convention grants exclusive jurisdiction on the question of validity of a patent to the country where the patent is granted. This means that one runs into a problem with patent infringement claims, as a court determining such a claim brought in the country in which the defendant is domiciled rather than the country of the patent cannot consider one of the main defences to infringement: invalidity. The position is made very much worse by the fact that both infringement and validity issues frequently affect the construction put on a patent, and so even if the issues of infringement and validity were separated, one could very well run into problems with judgments based on inconsistent constructions of the patent.


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