Fordham session on indirect and contributory patent infringement

This year's Fordham IP Conference devoted a session to indirect and contributory patent infringement, moderated by Bristows' Myles Jelf.  First to speak was Wendy Miller (Cooper & Dunham), who explained the historical and legislative background to the current provisions of US law as stated in 35 USC s.271. Wendy discussed the Akamai ruling (noted on PatLit here), BMC Resources (ditto) and McKesson. asking whether -- in holding the 'mastermind' responsible for infringing acts committed by others -- the courts have actually changed the law or merely stated what it was.

Next to speak was Trevor Cook (Bird & Bird), who said that Europe lives in a post-Akamai world in which one does not need to identify a single specific infringer. The relevant law on inducing patent infringements by others can be found in section 60(2) of the Patents Act 1977.  This provision, based on Article 26 of the Community Patent Convention, has its counterpart in the legislation of countries elsewhere in Europe too but is clawed back somewhat by section 60(3) where the secondary infringement is no more than the supply of staple products that enable infringement to take place. Trevor discussed the knowledge and intention of such a supplier in the Grimme and KCI Licensing rulings, liability for skinny labelling and contributory infringement via supplying replacement parts in the recent UK Supreme Court decision of Schutz v Werit.

There then followed an enjoyable and stimulating discussion, mainly embracing a wide range of technical issues under US patent law.

Contributory Infringement and Territoriality

Simple question: a Belgian shopkeeper B sells a product infringing a German patent to his client C in his shop in Belgium. Infringement or not? Most of us would say the answer is plainly no – territoriality principle.

The BGH has now wondered whether this might change if the shopkeeper knows that the client wants to sell the product in Germany. Then, the act of selling could amount to contributory infringement.

The question became relevant not for patent infringement but because a copyright and trademark owner had sued a Belgian defendant before the German Courts by arguing that the contributor to a main infringement may be sued – according to the German Civil Procedure law - before the courts having jurisdiction for the main infringement action. In the above case, these would be the German Courts.

The BGH has therefore referred the following  question on the interpretation of Art. 5 Nr. 3 EUGVVO (Council Regulation (EC) No 44/2001) to the ECJ:

Must Article 5 Nr. 3 of the Council Regulation (EC) No 44/2001 be interpreted such that the harmful event occurred in one member state (member state A), when the tort, delict or quasi-delict, being subject of the procedure or from which claims are derived has been committed in a different member state (member state B) and consists in the participation in the tort, delict or quasi-delict, having occurred in the first-mentioned member state (member state A)? (freely translated by the author of this note)

If the answer would be positive, this would clearly open new and interesting options for cross-border litigation on the basis of Article 5 Nr. 3 of the Council Regulation (EC) No 44/2001 not only for copyright and trademark cases but also in patent cases where the application of Art. 6 Nr. 1 of the Council Regulation (EC) No 44/2001 is foreclosed after the ECJ-decision Roche/Primus, as long as Art. 22 Nr. 4 of the regulation does not enter the game.

On the same day, the BGH referred the same question on the interpretation of Art. 93 par. 5 of the Commnity Trademark Regulation (Council Regulation (EG) 40/94) to the ECJ. PatLit will keep you updated.