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Cross-border injunctions in patent proceedings – again?

Recently, a new chapter was added to the ongoing attempts of the Dutch courts to provide cross-border injunctions in intellectual property cases

When a European patent is granted, the patent can be validated in each of the contracting states of the European Patent Convention and then becomes a so-called ‘bundle of national patents’, providing the same rights as a normal national patent in those countries. With the increase of pan-European patent holders and competitors, it is logical that infringement conflicts often stretch over more than one European country. However, there is no harmonizing system that provides for a single court in which a pan-European injunction can be asked for and issued.

Since the early ’90s many discussions have focused on the possibility of a national judge to issue injunctions for infringement in another country, the so-called cross-border injunctions. This practice had originated in the Netherlands and was based on the assumption that according to the Brussels and Lugano Convention -now more or less replaced by Council Regulation EC 44/2001, regulating the jurisdiction and enforcement of judgments in civil matters in Europe -, similar cases may be joined if there is a danger of irreconcilable decisions. However, a drawback here was that the same Council Regulation EC 44/2001 stipulates that questions about the validity of an intellectual property right can only be addressed before the competent national court. This gave rise to many lawsuits on the validity of a patent, so-called torpedos, in countries with a slow judicial system to frustrate a possible infringement suit.

This whole system of cross-border injunctions (and the inherent forum shopping activities) and filing of torpedo lawsuits 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 at issue, the ECJ recognized that crossborder 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 to those proceedings (e.g. the District Court of The Hague, 21 September 2006; H3 v. Bettacare).

In a recent decision (the District Court of The Hague, 22 December 2010; Solvay v. Honeywell), three separate Honeywell companies from the Netherlands and Belgium were 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 were not competent in relation to the Belgian Honeywell defendants, the case must be brought before a competent Belgian court, risking a different decision. It was the question 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 by referring the following question:
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 addressed the problems of cross-border injunctions in preliminary proceedings by referring a second 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?

It seems that the chapter on crossborder injunctions is not yet closed. In the mean time, without further awaiting the decision of the ECJ in the above-mentioned case, and following the Appeal Court in The Hague (15 July 2011, Yellow Pages v Yell), the Dutch court also issued a cross-border injunction on the basis of Samsung’s infringement of Apple’s European patent (District Court of The Hague, 24 August 2011, Apple v Samsung).