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Cross-border injunctions in patent proceedings again?

Since the early 90s many discussions have focused on the possibility of a national judge issuing injunctions for infringement in another country, the so-called cross-border injunctions.

This practice, starting off in The Netherlands, was effectively halted with the decisions GAT v. LUK (C-4/03) and Primus v. Roche (C-539/03) of the European Court of Justice. However, in cases where validity of the patent is not the issue, the ECJ recognized that cross-border injunctions were still possible (Duijnstee v. Goderbauer (C-288/82)).

Further, the Dutch courts have continued to provide cross-border injunctions in preliminary proceedings, stating that the ruling of GAT v. LUK did not apply in these proceedings (e.g. District Court of The Hague, 21 September 2006; H3 v. Bettacare). In a recent decision (District Court of The Hague, 22 December 2010; Solvay v. Honeywell) three different Honeywell companies from both The Netherlands and Belgium were all accused of infringing a European patent in several European countries, by trading one and the same product.

The court declared that it was competent to decide the matter (also cross-border) for the Dutch Honeywell company on the basis of Art. 2 of the Council Regulation EC 44/2001 (locus defendi). The court also concluded that if the court was not competent in relation to the Belgian Honeywell defendants, the case should be brought to a competent Belgian court, risking a different decision. The question was if such a situation could lead to irreconcilable decisions as defined in the Council Regulation (e.g. Art. 27(3)).

In order to solve this question, the Dutch court has now asked the European Court of Justice for further explanation: 1) In a situation like the present, where two or more defendants from different states are accused of infringing the same national part of a European patent as in force in yet another member state with respect to the same product, is there a danger of irreconcilable decisions as meant in Art. 6(1) of the Council Regulation?

Further, the court also addressed the problems of cross-border injunctions in preliminary proceedings by referring the question: 2) Does Art. 22(4) Council Regulation  which states that in cases of validity of IP rights only the national judge is competent – apply in preliminary infringement proceedings if the defendant questions the validity of the patent, considering that in preliminary proceedings no definitive decision on validity is taken?

The chapter on cross-border injunctions appears not yet to be closed. We will keep you updated on the opinion of the European Court of Justice.