Wednesday, 24 November 2010

Solvay cross-border injunction dispute heads for Court of Justice ruling

Via Paul England (Simmons & Simmons) comes news of a reference to the Court of Justice of the European Union (CJEU) for a preliminary ruling on the controversial question of cross-border injunctions in cases of patent infringement.  As Paul explains:
"An important reference has been made ... by the District Court of The Hague in the Netherlands. It essentially asks whether the District Court can issue cross-border injunctions for patent infringement under the provisions of Regulation 44/2001 on the Jurisdiction and the Recognition and Enforcement of Judgments in Civil and Commercial Matters.

Details of the judgment are yet to emerge in English, and the exact questions to be referred to the EUCJ have not been decided. However, if the CJEU agrees with the District Court, certain consequences may follow:
• Forum shopping could again become a feature of European patent litigation, in particular:
-- The Dutch ‘spider-in-the-web doctrine’, seeking cross-border injunctions in the Dutch courts, may be alive and well as a strategy;
-- So-called ‘Torpedo’ actions, where suits are strategically filed in countries with slow proceedings, may again become popular and
-- The complexity of European patent litigation may actually be reduced in some circumstances, because of the ability to obtain an injunction covering a number of European countries in one court. 
Whatever the exact scope of the referred questions, the Opinion of the Advocate General and then the implications of the decision of the CJEU on this issue is likely to be deliberated upon for many years to come.
The Background
The referral arises from Solvay v Honeywell Fluorine Products Europe (Case No. 09-2275). It concerns Solvay's patent for a method of preparing 1,1,1,3,3-pentafluoropropane, in force in a number of countries. Solvay alleges that its patents to this method are infringed in several countries by three Honeywell companies. Two of these companies are Dutch and one is Belgian.
In respect of the Belgian defendant, Solway argues that, because the Defendant infringes in more than one country, all infringements should be dealt with by the District Court to avoid irreconcilable decisions between the courts of various jurisdictions (further to Article 6(1) of the Regulation). 
The District Court agrees. It has decided that a further Article of the Regulation, Article 2, gives it the jurisdiction to rule on a defendant that is based in the Netherlands (the Dutch Honeywell company) and also to rule on the infringement of foreign patents by that defendant. Therefore, in order to avoid irreconcilable decisions under Article 6(1), the District Court says it follows that it must also be able to rule on the infringement of the same foreign patents by a foreign defendant (in this case the Belgian Honeywell company).
Hadn’t Roche v Primus settled this issue already?
Not according to the judgment of the District Court. In outline, in Roche v Primus (Case C-539/03, noted here by the IPKat) the Defendants were infringing patents in their respective jurisdictions only. Therefore, the ECJ (so named at the time) held that, further to Article 6(1) of the Regulation, the infringements must be litigated separately, in those respective jurisidictions. Whilst decisions on infringement of parallel patents in respective countries might be different, they would not be ruling on the same infringement with exactly the same facts, as would be the case here. In Roche v Primus there was therefore not the same risk of irreconcilable decisions".
Many thanks, Paul, for this information.  We look forward to further news as it arrives.

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