BIG DAY AT THE ECJ

GAT v LuK

First case for today is the ruling of the European Court of Justice (ECJ) in Case C-4/03, Gesellschaft für Antriebstechnik mbH & Co. KG v Lamellen und Kupplungsbau Beteiligungs KG (a.k.a. GAT v LuK). This was an application for a preliminary ruling from the Oberlandesgericht Düsseldorf (Germany), back in 2002.

GAT and LuK were German motor vehicle technology companies. GAT put in a bid to supply mechanical damper springs to a German car-maker. LuK alleged that the springs infringed two of Luk's French patents. GAT sought a declaration of non-infringement before the Landgericht Düsseldorf and also maintaining that the patents were either void or invalid. The Landgericht considered that it had international jurisdiction to adjudicate upon the (non)infringement and validity of French patents, dismissing GAT's action on the merits. The Oberlandesgericht (Higher Regional Court) Düsseldorf stayed GAT's appeal and referred the following question to the Court of Justice for a preliminary ruling on the effect of the Brussels Convention:

"Should Article 16(4) of the Convention … be interpreted as meaning that the exclusive jurisdiction conferred by that provision on the courts of the Contracting State in which the deposit or registration of a patent has been applied for, has taken place or is deemed to have taken place under the terms of an international convention only applies if proceedings (with erga omnes effect) are brought to declare the patent invalid or are proceedings concerned with the validity of patents within the meaning of the aforementioned provision where the defendant in a patent infringement action or the claimant in a declaratory action to establish that a patent is not infringed pleads that the patent is invalid or void and that there is also no patent infringement for that reason, irrespective of whether the court seised of the proceedings considers the plea in objection to be substantiated or unsubstantiated and of when the plea in objection is raised in the course of proceedings?".

The ECJ, in a short, sweet judgment, has ruled as follows:

"Article 16(4) ... is to be interpreted as meaning that the rule of exclusive jurisdiction laid down therein concerns all proceedings relating to the registration or validity of a patent, irrespective of whether the issue is raised by way of an action or a plea in objection".

This ruling comes down firmly in favour of exclusive national jurisdiction, which means that only a French court tribunal can rule on the validity of a French patent. The ruling does not mention jurisdiction in respect of infringement, however, since Article 16(4) is not applicable to them. It also confirms that the exclusivity of jurisdiction is the same, whether the party challenging the validity brings proceedings to invalidate the patent or merely raises the patent's invalidity as a defence to an infringement action.

The IPKat says, this ruling is the best way of preserving consistency. If, say, a German court ruled that the French patent was valid while an English court in parallel proceeding took the opposite view, the consequences—both in terms of commerce and in terms of maintaining the credibility of patent law—could be catastrophic. Yes, says Merpel, but some countries have little experience of patent litigation and it’s a shame their courts can’t be bypassed.


Roche Nederland

Next is Case C-539/03, Roche Nederland BV and Others v Frederick Primus and Milton Goldenberg. This was a reference for a preliminary ruling from the Hoge Raad (Netherlands) dating back to 2003.

By Article 6 of the Brussels Convention,

"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; ..."

In 1997 Primus and Goldenberg sued Dutch company Roche Nederland BV and eight other Roches from the US and Europe for patent infringement by mrketing immuno-assay kits in the countries where the various Roches were established. The other Roches, who denied infringement and maintained that the patent was invalid, contested the jurisdiction of the Dutch courts.

The Hoge Raad, the Dutch Supreme Court

The trial court declared that it had jurisdiction, but dismissed the infringement action. The Gerechtshof te s’-Gravenhage (Regional Court of Appeal) allowed Primus and Goldenberg's appeal and ordered all the Roches to cease infringement in all the countries from which they hailed. The Hoge Raad (Supreme Court) stayed the Roches' appeal and referred the following questions to the Court for a preliminary ruling:

"(1) ‘Is there a connection, as required for the application of Article 6(1) of the Brussels Convention, between a patent infringement action brought by a holder of a European patent against a defendant having its registered office in the State of the court in which the proceedings are brought, on the one hand, and against various defendants having their registered offices in Contracting States other than that of the State of the court in which the proceedings are brought, on the other hand, who, according to the patent holder, are infringing that patent in one or more other Contracting States?

(2) If the answer to Question 1 is not or not unreservedly in the affirmative, in what circumstances is such a connection deemed to exist, and is it relevant in this context whether, for example,

– the defendants form part of one and the same group of companies?

– the defendants are acting together on the basis of a common policy, and if so is the place from which that policy originates relevant?

– the alleged infringing acts of the various defendants are the same or virtually the same?".

In response to these questions the ECJ has ruled as follows:

"Article 6(1) of the Convention ... on Jurisdiction and the Enforcement of Judgments in Civil and Commercial Matters ... must be interpreted as meaning that it does not apply in European patent infringement proceedings involving a number of companies established in various Contracting States in respect of acts committed in one or more of those States even where those companies, which belong to the same group, may have acted in an identical or similar manner in accordance with a common policy elaborated by one of them".

It is not easy to grasp the subtlety of the ECJ's reasoning, which appears to turn on a close analyis of whether there is a danger of judgments of courts in different countries, relating to the same dispute, being irreconcilable or merely contradictory. What the court does appear to say is that (i) forum shopping is a bad thing, which the Convention seeks to discourage and that (ii) even if the same court is able to assume jurisdiction in this case, the effect of cases such as GAT (above) is that fragmentation of the proceedings as between different countries will still occur where, as is usually the case, defendants in patent infringement proceedings put the validity of separate national patents in issue.

Although the IPKat cannot refute the reasoning of the ECJ, he is saddened by the outcome. The result is the inevitable multiplication of patent actions, or of patent owners simply enforcing their patents in countries they can afford to litigate in. He also feels sorry for Primus and Goldenberg who, whatever the merits of their patent infringement action, are now almost back to square one in litigation they started nearly 10 years ago. Merpel adds, if the European Commission is so keen to establish markets for everything, on the basis that price competition enhances efficiency, what's wrong with forum-shopping anyway?


Commission v Portugal

Third big case of the day is Case C-61/05 Commission v Portugal. This is the second case brought against Portugal for failing to implement the inelegantly-named Directive 92/100 on rental right and lending right and on certain rights related to copyright in the field of intellectual property.

The first problem detected by the Commission is that Article 2(1) of the Directive does not permit the extension to videogram producers of the exclusive right to authorise or prohibit rental enjoyed by the producer of the first fixation of a film. Since the list of beneficiaries in Article 2(1) is exhaustive, only the producer of the first fixation - and not the producer of videograms - may authorise or prohibit the rental of the original and copies of a film. The Portuguese law, however, deprives the producer of the first fixation of a film of the exercise of his exclusive right by no longer allowing him to authorise or prohibit the rental of copies of his film.

The second problem is that, as regards the transfer of the rental right from the performer to the film producer, the Portuguese law appears to refer to two different producers, the producer of videograms and the producer of the first fixation of a film. This means that performers don't know who to collect their remuneration from. The Directive however states clearly that only the producer of the first fixation of a film can be required to pay the remuneration to which they performers are entitled.

The ECJ ruled:

"By creating in national law a rental right also in favour of producers of videograms, the Portuguese Republic has failed to fulfil its obligations under Article 2(1) of Council Directive 92/100 ...

– by creating in national legislation some doubt as to who is responsible for paying the remuneration owed to perfomers on assignment of the rental right, the Portuguese Republic has failed to comply with Article 4 of Directive 92/100 ...".

IPKat post on earlier action brought by the Commission against Portugal for non-implementation of the same Directive here.