The Dutch are at it again. As the dust begins to settle after the European Court of Justice ("ECJ") significantly restricted the Dutch “cross-border patent injunction” practice in its Primus v. Roche (C-539/03) and GAT v. LuK (C-4/03) decisions, it is becoming clear that a Dutch cross- border injunction may nevertheless be available. In two separate cases, decided after GAT v. LuK, the District Court of The Hague demonstrated that it is still willing to grant such injunctions.
Death of the “spider in the web”: Primus v. Roche
Part of the Dutch cross-border practice was based on a liberal application of the co-defendant rule in Article 6(1) of Council Regulation (EC) No 44/2001 of 22 December 2000 (the “Regulation”). This rule provides that if a person is one of a number of defendants, he can be sued in the courts of the place where any one of the defendants is domiciled, provided the claims are so closely connected that it is expedient to hear and determine them together to avoid the risk of irreconcilable judgments resulting from separate proceedings.
Under the Dutch “spider in the web” doctrine, which already restricted the co-defendant rule, that rule could only be applied if the “primary” defendant (i.e. the “ring leader” of the patent infringement) was domiciled in the Netherlands. On the basis of this doctrine, a plaintiff could obtain a European-wide injunction against patent infringement. This Dutch doctrine was, however, rejected by the ECJ in Primus v. Roche. The ECJ held that since European patents are in reality a bundle of national rights, there is no risk of irreconcilable judgments and therefore the co-defendant rule cannot be applied to a pan-European patent infringement.
Cross-border and validity issues: GAT v. LuK
The Dutch courts traditionally considered themselves competent to grant pan-European injunctions, even where the validity of one or more of the relevant national patents was at issue. Although recognising that they would not have the final say in the matter (since Article 22(4) of the Regulation provides that the validity of patent is to be decided exclusively by the courts of the Member State in which the patent is registered), Dutch courts were willing to make an assumption as to how these courts would rule on the validity question. They then based their infringement decision partly on this assumption. If there were serious doubts relating to the patent’s validity, the injunction would be denied. If not, it could be granted.
Again the ECJ has put an end to this liberal approach to pan-European injunctions. In GAT v. LuK, it decided that as soon as the defendant raises the issue of the patent’s validity, whether as a defence or in counterclaim proceedings, this part of the dispute should be heard exclusively by the court in the territory where the relevant patent is registered.
Dutch cross-border injunctions: it ain’t over ‘til it’s over…
Where some concluded that Primus v. Roche and GAT v. LuK heralded the end of Dutch cross-border patent infringement injunctions, it is already clear that in cases where the validity of a patent is not raised, a pan-European injunction is still a possibility (this follows from the ECJ’s own decision in Duijnstee v. Goderbauer (C-288/82)).
Secondly, the District Court of The Hague has already demonstrated twice that it is willing to grant cross-border injunctions in summary proceedings (The District Court of The Hague, 19 October 2006; Van Kempen v. Kuipers; and The District Court of The Hague, 21 September 2006; H3 v. Bettacare), stating that the relevant restrictions expressed in GAT v. LuK do not apply in such proceedings since the judgment rendered is provisional and a final determination of the patent’s validity is not made. In Bettacare v. H3 (2006), the District Court actually granted an injunction against patent infringement in the Netherlands and in Germany. Although not made explicit, the Court may have based its jurisdiction on Article 31 of the Regulation. The Court did, however, add that it could not award a cross-border injunction if summary or regular proceedings were already pending in the relevant other jurisdiction.
Proceedings on the merits: can a patentee still GAT LuKKy?
In several cases the District Court of The Hague has held that in the event the validity argument is raised, be it in defence to a claim or in a counterclaim, the Court no longer has jurisdiction over the relevant foreign part of the infringement case (see e.g. Steur v. Zilka, 2006). However, the issue of validity must be raised as a substantive issue and not in a motion to dismiss for lack of jurisdiction. Merely announcing that a validity argument will be raised is also not enough (Sisvel v. Sandisk, 2006). Additionally, it is assumed that such an argument requires substantiation. The Court is likely to disregard a mere reference to the existence of a validity issue.
Nevertheless, when dismissing the entire foreign patent infringement dispute in Steur v. Zilka, the District Court of The Hague may have taken things too far. Even though the two are highly interrelated, the infringement and the validity of a patent are separate issues (see also paragraph 25 of the Duijnstee case mentioned above). Even though this may complicate the proceedings, rather than dismissing the entire suit (i.e. in respect of both infringement and validity), the more correct interpretation of GAT v. LuK appears to be that the infringement dispute should be stayed until such time as the foreign validity suit has been decided.
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